Intellectual Property: A Bridge not a Barrier Corporate slide master LCNI Conference October, Aberdeen
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1 Intellectual Property: A Bridge not a Barrier Corporate slide master LCNI Conference October, Aberdeen With guidelines for corporate presentations Nia Roberts BSc(Hons) CPA CPhys MInstP Intellectual Property Manager, Welsh Government Rheolydd Eiddo Deallusol, Llywodraeth Cymru nia.roberts@wales.gsi.gov.uk
2 About Me BSc(Hons) Physics (Manchester University); Chartered Physicist Worked in IP since Patent Examiner at European Patent Office IP Manager at SME / International Corporation Freelance patent consultant Qualified Europe & current Chartered UK Patent Attorney today IP Manager, Welsh Government
3 Welsh Government Open Innovation project Award-winning Innovation project run by my colleague Mark Lewis 8 Anchor companies (including Wales & West Utilities) competitively selected Funding to develop & implement Open Innovation projects Selected companies mentor & nurture SME partners Share resources, minimise risk, enable diversification Outputs so far: Industry engagements 102 Academic engagements 45 Enterprises assisted 29 Collaborative R&D Projects 28
4 Is IP relevant to Energy Networks? US Patents related to Gas Pipelines Data from WIPO Patentscope database; class F17D, 11/9/
5 Outline How can IP be a Bridge not a Barrier? Understanding Ownership Strategy
6 Understanding IP PATENTS Inventions - usually technical products or processes. Must be new & not obvious Formal application & examination process over several years TRADE MARKS Badge of origin distinguishing goods & services of different sources Formal application process over several months DESIGN RIGHTS The outward appearance or look of a product Exists as both an automatic right and as a registered right COPYRIGHT Original literary, dramatic musical works and artistic works including software, film and sound recordings and broadcasts. Arises automatically
7 Understanding IP suggested actions Nominate one member of staff as IP Champion Carry out initial audit of IP Assets & search for competitor IP as appropriate Many free resources available e.g.: UK IPO CPD-Accredited course IP Equip European Patent Office Espacenet patent database Free Trade Mark search engines - UK IPO & TMView (international) and many more
8 Ownership issues Staff inventions & other IP: employed to invent? created in the course of employment? Record ownership changes & licenses at the appropriate IPO Employee (& other) contracts ensure appropriate ownership & confidentiality terms Externally commissioned work - Copyright (and now Design Right) may belong to the author unless there is a written agreement Keep an audit trail (with evidence) of important work
9 Collaboration Agreements some terms used Common terms Background IP IP belonging to participants beforehand Foreground IP created by the participants within the framework of the collaboration also (less common) Sideground IP created by the parties during the period of the collaboration, but outwith its framework Postground IP generated during a specified timeframe after the collaboration ends Images by Mike Langman from
10 Collaboration Agreements - comments Identify (and agree on) each participant s Background IP before the collaboration - register if appropriate Take care with jointly owned IP Laws are territorial exploitation rights may vary from country to country Complex to administer Is it better for one party to own the IP & other parties to be licensed? Understand termination arrangements Use Non-Disclosure Agreements (e.g. to safeguard patentability & protect knowhow / trade secrets) IPO booklet on Non-Disclosure Agreements at
11 Use your IP strategically An unnecessarily rigid approach to IP can discourage collaboration the Medusa Effect Used (and understood) properly, IP can be the currency of attracting collaborative projects / investment Some tools are available e.g. Lambert Toolkit - includes Decision Guide
12 Different strategies for different environments Technological Environment develops predictably (Calm) Calm Puddles Identify specific IP; buy or license it in Calm Oceans Spread the Problem, Secure the Solution Knowledge confined to pockets of expertise (Puddles) Turbulent Puddles Collaborate upstream; compete downstream Turbulent Oceans If you give it away, they will come Knowledge distributed widely (Oceans) Technological Environment is fastmoving & unpredictable (Turbulent) Model from Does IP Strategy Have to Cripple Open Innovation?, Alexy, Criscuolo & Salter, MIT Sloan Management Review 2009
13 Summary Understand your Intellectual Property (and your competitors!) Resolve ownership issues Use your IP strategically
14 Thank you for your attention
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