Intellectual Property (IP) Management. EU-Büro des BMBF. Dr Sabine Albrecht EU IPR Helpdesk/ Eurice GmbH (Saarbrücken) Bonn, 20 November 2012

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1 Intellectual Property (IP) Management Dr Sabine Albrecht EU IPR Helpdesk/ Eurice GmbH (Saarbrücken) EU-Büro des BMBF Bonn, 20 November 2012

2 Road Map General frame IP policy IP in business From IP strategy to management IP searches & monitoring In a Nutshell Need assistence? The IPR Helpdesk Services 20 Nov 2012 European IPR Helpdesk (2012)

3 STOP General frame 20 Nov 2012 European IPR Helpdesk (2012)

4 Do you know your IP Environment? It is important to understand - Is there IP in your industry? - Do your competitors use IP and how? IP Research - How should the IP be used? - What types of IP fit to your organisation? - Do you have a plan for enforcing your IP? IP Strategy

5 STOP IP Policy 20 Nov 2012 European IPR Helpdesk (2012)

6 IP policy IP policy is like an umbrella, it covers the general rules of an organisation how to deal with Intellectual Property.

7 IP policy (I) Scope & objective of IP policy Disclosure & Protection of IP Incentives policy Revenue sharing General organisation Ownership of IP IP exploitation rules Damages, liability etc.

8 IP policy (III) Let s take a closer look!

9 General Scope Offensive Defensive Clarification: To whom should the IP policy apply? Limits of the IP policy (e.g. only to some kinds of IP)

10 General organisation Means at disposal to organise the IP management Should define the structure/people/organisation in charge of the different tasks defined by the IP policy, as well as a responsible Own exploitation Do we have the competencies/team? If not, do we intend to have it? Exploitation by third parties Co-exploitation What kind of contract will be signed/do we want? Exploitation by a single third party, non exclusive exploitation Because you can not enter all the markets; define the content and develop the related contractual procedures

11 Disclosure & protection Identification of IP: declaration of IP created in the organisation, disclosure of new ideas, IP identification form IP protection rule: protection or non protection Relationships with third parties Respect of IP owned by third parties Provision of IP information to third parties

12 Ownership Clauses in working contracts Rights and obligations of the inventor Rights and obligations of the company Ownership of IP developed by/ in cooperation with contractors, visitors or any other third party

13 Incentives policy Redistribution of royalties/revenue sharing Promotion opportunities Award: Price best «IP» of the year Reward

14 IP exploitation What kind of exploitation is foreseen for which kind of generated IP? Revenue sharing? Further aspects (Damages, Jusrisdiction )

15 Useful resources WIPO developed guidelines on developing IP policy for universities and R&D organizations (http://www.wipo.int/uipc/en/) IP Charta of the European Commission (http://eurlex.europa.eu/lexuriserv/lexuriserv.do?uri=celex:32008h0416:de:not)

16 STOP IP Strategy

17 What about the IP strategy in an organisation?

18 IP strategy (I) IP Strategy The purpose of an intellectual property strategy is to leverage an organisation s IP with its business assets to create value for the organisation. Must be linked to your business/activity!

19 IP strategy (II) Alignment of organisation s goals and IP assets Offensive Protect own IP and acquire external IP Defensive Eliminate or reduce obstacles and associated risks

20 Key elements Key elements to consider: Geographical scope of protection Product branding Freedom to operate Parallel importation Industry standards

21 Key elements to consider Let s take a closer look!

22 Geographical scope Key questions In which countries are your products to be manufactured, marketed or sold? Which countries have the potential to manufacture? Which countries are otherwise strategically important to your organisation?

23 Product branding Will the organisation s existing trademark or branding for their goods conflict with any existing TMs or brands in that country? Are existing trademarks or brands appropriate when used in a foreign language?

24 Freedom to operate Before manufacturing or importing goods into a country, you should first ensure that your organisation has the freedom to operate in that country.

25 Parallel importation Importation and distribution of goods by someone other than the authorised dealer in a grey market. Parallel importers ordinarily purchase products in a first country at a cheap price and import and sell the products in a second country at a price lower than the ordinary price of the product in the second country. Important issue when licensing IP rights to a third party for exploitation in a particular territory, or when manufacturing products in another country.

26 Parallel importation Importation and distribution of goods by someone other than the authorised dealer in a grey market. Parallel importers ordinarily purchase products in a first country at a cheap price and import and sell the products in a second country at a price lower than the ordinary price of the product in the second country. Important issue when licensing IP rights to a third party for exploitation in a particular territory, or when manufacturing products in another country

27 Industry standards Consider any applicable industry standards in those countries your organisation wants to export goods to. On the other hand, if you are manufacturing your products in another country for sale domestically, you need to ensure all products are manufactured in accordance with your specifications and all applicable domestic industry standards and requirements.

28 STOP From IP strategy to IP Management

29 IP management Under the umbrella of IP policy, the IP management translates the IP strategy into practical operational phases and related organisation. Principles governing IP management and practices General principles concerning IP protection and management Guidance for staff

30 How is the management of innovations embedded in an organisation?

31 General Management Monitoring Risk Management Finance Knowledge Management Controlling Project Management Contracts Project Administration Reports Quality Management Subcontracts Managerial Areas IP Management Evaluation/Studies Business Plan Innovation Management Communication Internet Technology Watch Exploitation and Dissemination Plan Technology Marketing Promotional Material Corporate Identity

32 General Management Monitoring Risk Management Finance Knowledge Management Controlling Project Management Contracts Project Administration Reports Quality Management Subcontracts Managerial Areas Evaluation/Studies Business Plan Innovation Management IP Management Technology Watch Technology Marketing Communication Internet Promotional Material Corporate Identity

33 General Frame Define how IP management will be organised: Internal management Outsourced management Shared/partial management

34 Institutional aspects IP management must be founded on the overall organisational IP policy needs adequate organisational structures to implement IP related processes IP Identification IP Protection IP Management IP Enforcement IP Exploitation

35 IP related processes IP Identification IP Review Novelty searches, state of the art searches IP Protection Consulting for IP protection: Trademarks, Patents, designs, and alike IP Management Enforcement of IP Rights Exploitation TM-portfolio management Patent portfolio-management Technology watch for patents and trademarks Legal advice on IP-related contracting issues Infringement search for patents and tm IP valuation Own exploitation Transfer: Licensing (out), Spin off creation

36 How can IP Policy and Strategy be translated into practical management?

37 IP review process A tool-kit for the analysis of IP in early stage of R&D projects Interlocutors/targets R&D project leaders Project stakeholders Corporate management Purposes Concise description of all potential IP resulting from the project Recommendations on protection of the identified IP Recommendations on how the identified IP can be leveraged in a commercial environment

38 Prerequisites To have a good overview of all IP components To have a good overview of the organisation s activities To be able to identify intellectual assets

39 IP searches and monitoring STOP May 20 Nov European IPR Helpdesk (2012)

40 How to get the overview?

41 Patent information = the information found in patent documents and the associated databases. It includes technical, legal and business-related information.

42 IP databases Patent Databases Trademark Databases Design Database Espacenet (EPO) Patentscope (WIPO) National databases (DPMA, USPTO, JAPIO ) Global brand database (WIPO) CTM-Online, TM- View (OHIM) RCD-Online (OHIM)** **Office of the Harmonization of the Internal Market (Alicante/Spain)

43 What are key features of Espacenet?

44 IP Research Therefore use IP databases to - Search around your known competitors - Search in your industry - Search around your own IP (find partners / infringers) 20 Nov 2012 European IPR Helpdesk (2012)

45 Espacenet The database has over 65 million documents!

46 Advanced search Enter your search term here (up to 20, separated by a space or an operator)

47 Results list

48 EP - Patent application Bibliographical data Titel & Abstract

49 What are key features of PATENTSCOPE?

50 PATENTSCOPE Choose where you want to search Enter your search term Choose the geographical coverage of your search

51 Results list

52 How to get information about the status of a European application / patent?

53 Smart search Enter your search term here (up to 20, separated by a space or an operator)

54 Search Results: List

55 Results: Details of file Search term is marked

56 Internal procedure

57 Securing IP Legal clauses in employees working contracts for confidentiality and IP created Use forms for employee s inventions Practices: IP disclosure rules and forms Restrict access to information Non Disclosure Agreements during negotiations 20 Nov 2012 European IPR Helpdesk (2012)

58 Daily Management of IP Document each IP element («identity card»: name, origin, owner, validity, uses ; lab notebook ) Check the effective use of protected IP elements Organise regular review: Ensure a close follow-up/ evaluation of relevancy to keep in force (e.g. implement internal and use external databases) Check that you do not infringe any third parties IP rights 20 Nov 2012 European IPR Helpdesk (2012)

59 IP & the Team Not every member of the organization or the project needs to become an IP expert or manager, but a certain degree of IP awareness should become part of the organizational culture Internal training sessions help to rise awareness of the importance and value of IP among staff and project participants 20 Nov 2012 European IPR Helpdesk (2012)

60 STOP In a Nutshell 20 Nov 2012 European IPR Helpdesk (2012)

61 In a Nutshell The umbrella = IP policy IP in Business = develop an IP strategy Translate the strategy into management IP monitoring and searches Daily management Need assistance? The IPR Helpdesk Services

62 STOP Need Assistance? The European IPR Helpdesk

63 Services Website Awareness Raising Activities Helpline Services Bulletin Training Newsletter Publications All of our services are offered free of charge. 20 Nov 2012 European IPR IPR Helpdesk (2012)

64 Thank you for your attention. For questions on this specific presentation, please contact: For further questions and general IP advice, please contact our Helpline team: Phone (Helpline) Fax (Helpline) For questions related to our training activities, please send us an at: 20 Nov 2012 European IPR Helpdesk (2012)

65 Photo credits istockphoto.com istockphoto.com/maridav istockphoto.com/rzdeb istockphoto.com/rtimages istockphoto.com/hudiemm istockphoto.com/zeffs1 istockphoto.com/yuri_arcurs istockphoto.com/jfelton istockphoto.com/denijela Pavlovic Markovic istockphoto.com/id-work istockphoto.com/david Laflor istockphoto.com/marek Ulias istockphoto.com/dave White istockphoto.com/andrew Johnson Others clker.com/ocal Microsoft Clip Art Disclaimer/Legal Notice The information and advice contained in this presentation is not intended to be comprehensive and attendants are advised to seek independent professional advice before acting upon them. The European IPR Helpdesk is not responsible for the consequences of errors or omissions herein enclosed. Re-use of information contained in this presentation for non-commercial purposes is authorised and free of charge, provided the source is acknowledged. The use of images, other than in the mere reproduction of this presentation, is prohibited. The European IPR Helpdesk is not responsible for any impact or adverse effects on third parties connected with the use or re-use made of the information contained in this presentation. The European IPR Helpdesk is managed by the European Commission s Executive Agency for Competitiveness and Innovation (EACI), with policy guidance provided by the European Commission s Enterprise & Industry Directorate-General. The positions expressed are those of the authors and do not necessarily reflect the views of the European Commission. 20 Nov 2012 European IPR Helpdesk (2012)

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