The Management of Intellectual Property Rights
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The Management of Intellectual Property Rights

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The Management of Intellectual Property Rights




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Presentation on theme: "The Management of Intellectual Property Rights"— Presentation transcript:

Slide1

The Management of Intellectual Property Rights

Prof. Giuseppe Scellato

Slide2

Contents

Intangible assets: the link between protection approaches and technology strategies.

Taxonomy of intellectual property rights

Patents: the fundamental concepts

The functioning of international patent systems and patent filing options

The use of patent data for and technology assessment

Slide3

Intangible assets and company market value

Slide4

Different

ways to

protect

the

value

of

innovation

?

Slide5

Industrial secrecyEconomies of rapidity / knowledge learning curves Keeping ahead from competitors by delivering continuous innovation. Complementary assetsLarge-scale production capabilities, distribution channels, after sale and complementary services.Lock-in of customersCustomers have to bear costs to switch to competitor’s products.Intellectual Property Rights Patents, Trademarks, Copyright, Industrial design

Different ways to protect the value of innovation ?

Slide6

LINK BETWEEN PROTECTION APPROACH AND CORPORATE STRATEGY

Slide7

IPR EXPLOITATION strategy

Novo Nordisk: market monopolist in Europe during for decades thanks to a set of patents on methods for the extraction of insulin.

Development of innovative bio-plastics in the 90s. Large market success based on a patent-protected innovation.

Italian start-up active in the development of bio pesticides. Holds exclusive licenses on international patents owned by an Italian University.

Slide8

IPR EXPLOITATION strategy

Nestlè

has

invested

heavily

in the

Nespresso

Brand.

Strong

patenting

approach

on

both

:

the Capsule

The

Ejection

system

Several

hundreds

of

patent

applications

worldwide

Which

is

the

underlying

IPR-marketing

strategy

?

Slide9

IPR EXPLOITATION strategy

Long

lasting R&D project on the cinematic properties (first patented models in 1989).Licensing of the technology to different specialised producers of coffee machines with a strong reputation in the market.No vertical integration. Why?

Slide10

IPR EXPLOITATION strategy

A

key

second-generation patent: EP1646305October 2013: The European Patent Office's appeals board said Nestle's patent for the device that handles coffee capsules as they sit in the Nespresso machine was invalid.But the standard is already fixed in the market

Slide11

IPR EXPLOITATION strategy

Electric Vehicle technology developer and manufacturer founded in 2003 in Palo Alto

Tesla Model S

Superchargers

Slide12

IPR EXPLOITATION strategy

R&D and patenting activity mostly focussed on batteries and re-charging systems (as of 2014).

Slide13

IPR EXPLOITATION strategy

12 June 2014: Tesla’s Patent Pledge

“Yesterday, there was a wall of Tesla patents in the lobby of our Palo Alto headquarters. That is no longer the case. They have been removed, in the spirit of the open source movement, for the advancement of electric vehicle technology.[…]Tesla will not initiate patent lawsuits against anyone who, in good faith, wants to use our technology.”Elon Musk [CEO]

WHY?

Slide14

IPR EXPLOITATION strategy

Marketing Operation aimed at increased market sales

Lack of production capacity & standard setting setting issues (end of 2014)

Superchargers: best technology on the market but extremely expensive

Superchargers Network: not yet sufficient given the little autonomy

BUT

Nissan, Toyota and Mitsubishi have just signed on

CHAdeMo

Association aiming at increasing quick-charger installations worldwide and at standardizing charging

Slide15

IPR EXPLOITATION strategy

finance.yahoo.com

(04/03/2105)

Share price peaks at 291$ when the supercharger cost-to-coast network has been completed.By 2017: lithium ion batteries new production facility in Nevada with a capacity of 500k batteries/year in 2020. (Estimate of sales volumes for Tesla)

Tesla market

cap

at

Nasdaq

25,4 B

Eur

Slide16

IPR EXPLOITATION strategy

finance.yahoo.com

(04/03/2105)

Slide17

Vecter

is an innovative thermally insulative material manufactured by a new production process using:

Incinerator bottom ashes (30-60%)Recycled glass (30-60%)Bonding agent (Kaolin 10%).Result: thermally insulative boards (50x50x5 cm) to be used for civil or industrial applications.

IPR EXPLOITATION

strategy

Slide18

Product

and process related innovation

IPR EXPLOITATION

strategy

Slide19

A) Producing and marketing Vecter1. At a price undercutting FOAMGLAS (-20%);2. Reusing bottom-ashes from players operating downstream incinerators;3. Using already established distributors (gradually changing their product mix).

B) Licensing the patent1. Considering the first option implemented by an incumbent;2. with 5% royalties on revenues + upfront lump sum (to be negotiated).

IPR EXPLOITATION

strategy

Slide20

Summing up …

Only in extremely rare cases we observe a linear simplistic relationship: 1 innovation

 1 patent  monopolistic market power

The exploitation of IP requires an alignment with technology and marketing strategy

The use of patents is very different across industries.

Firms investing in R&D needs to carefully assess the patent landscape: freedom to operate, availability of resources for the enforcement, risk of in adverted infringement.

Different options are available to exploit the competitive advantage generated by IPR assets, in house exploitation is just one.

Slide21

OVERVIEW OF IPR

Slide22

Legal right

What for?

How?

Copyright

Original creative or artistic forms

Trade marks

Distinctive identification of products or services

Use and/orregistration

Registered designs

Registration*

Patents

New inventions

Application and examination

Exists automatically

Trade secrets

External appearance

Valuable information not known to the public

Reasonable efforts to keep secret

OVERVIEW OF IPR

Slide23

Some IP found in a mobile phone

Trade marks: Made by "Nokia" Product "N95" Software "Symbian", "Java"Patents: Data-processing methods Semiconductor circuits Chemical compounds …Copyrights: Software code Instruction manual Ringtone …

Trade secrets: ?Designs (some of them registered): Form of overall phone Arrangement of buttons in oval shape Three-dimensional wave form of buttons …

© Nokia

Slide24

What is a Patent?

A contract between an inventor and a state

Inventor

Protection for about 20 years;

Right to exclude others from making, using, selling and importing the inventionto recoup investment in R&Dto strengthen market position and competitiveness

StatePublication of the inventionto spread new technical knowledgeto avoid R&D duplicationto foster innovation

Slide25

Rights conferred by a patent

Exclusion Right

Nobody can produce, use, sell, or import your invention. A granted patent does not necessarily gives the right to exploit the invention (depends on the rights of others and on general law)

Territorial Right

A patent in one state does not affect patent in other states

Timed Right

Protection from a certain date to another date

One-Time Right

When a patented product is put on the market the patent right is exhausted

Transferable Right

You can assign or sell (licence) your patent to others

Slide26

What can and can’t be patented

For an invention to be patentable, it must usually be

new to the world (i.e. not available to the public anywhere in the world) Inventive (i.e. not an "obvious" solution), andsusceptible of industrial application

In most countries, patents are not granted for: business methods or rules of gamesmethods of treatment, diagnostics and surgery of the human or animal bodyplant and animal varieties

Patents protect technical inventions which solve technical problems:

11

Products, devices, systems

Processes, methods

Chemical substances,pharmaceuticals

Slide27

When is an invention "new"?

When it is not part of the state of the art

State of the art =

everything made available to the public before the date of filing

12

State of the art

Patent

application

Year

2012

2013

2014

2011

2010

2009

2008

Date of filing

Slide28

The first patent application is secret for the first 18 months, then it becomes public.  Your patent might be infringing a previous one that is still in the “shadow” window of 18 months.

When is an invention "new"?

Slide29

PRIOR ART AND THE GRACE PERIOD

In the European system

any disclosure

made by the inventor generate prior art also for the inventor.

In other systems (e.g. the US and in Japan) there is a “grace period”. After disclosure the inventor still has 12 months (US) to file a patent application.

Protection against

unadverted

disclosures

Incentive for academic institution that have a pressure for disclosing research results

Increase in the uncertainty in the system (I observe a non patented innovation BUT I am not sure about future freedom to operate).

Slide30

THE FUNCTIONING OF Patent SYSTEMS

Complex set of agreements among countries (or groups of countries) for the international extension of patent rights.

National patent offices (e.g. Italy UIBM, France, USA…)

European Patent Office

World Intellectual Property

Organisation

(WIPO) and the patent cooperation treaty (PCT).

The agreements allow inventors to extend their patent rights within a given time frame, maintaining their priority.

Slide31

EP

IT

NO

FI

TR

RO

DE

How to obtain patent protection in Europe (options 1 and 2)

Separate procedures for each state

Procedures differ according to national law

One application filed at one office for up

to 40 states

One procedure

Applicant selects the desired states

One European patent for up to

40 states

Results in a bundle of national patents

IT

UK

DE

DE

IT

UK

The regional route:

European Patent Convention

The national route

31

Slide32

the unitary patent

A European patent with unitary effectFurther option in addition to European patent and national patents Protection in a single step for 25 participating EU member statesUnitary effect can be registered by the patentee after the grant of the European patentUnitary character for said 25 states:limitation, transfer, revocation, lapse (only in respect of all states)No translation after grant, machine translation sufficient

32

Slide33

How to obtain patent protection in Europe (option 3)

The international route: Patent Cooperation Treaty (PCT)

One single application for up to 148 countries

After 30 months, decision by applicant

on which countries to proceed in.Option value: wait before paying patent fees while collecting information on the market potential of the innovation

PCT

IN

US

AU

GB

CN

33

Slide34

The grant procedure before the EPO

Withdraw?

18 months

Approx. 4-5 years

9 months

Application

filed

Search

report

Publication

Grant

Opposition

period expires

Examination

CH

TR

RO

y

GB

DE

CZ

FR

Validation at

national offices

Invention becomes

visible to the public!

34

Slide35

What does a patent look like?

Bibliographic information

Inventor, proprietor, date of filing, technology class, etc.

Abstract

Around 150 words as a search aid for other patent applications

Technological classification (IPC codes)

Description

Summary of prior art (i.e. the technology known to exist)

The problem that the invention is supposed to solve

An explanation and at least one way of carrying out the invention

Claims

Define the extent of patent protection

Drawings

Illustrate the claims and description

Slide36

Inventor: who had the inventive ideaThis right cannot be transferred and the lack of one inventor causes the nullity of the patent. Applicant: who is entitled to ask for protection and files the patent. After patent is granted, becomes the assignee. The assignee is in charge to defend the validity of the patent, even in the case of licensing to third parties.Patent Application: patent filed, but not yet granted (pending patent)Patent (Granted): final patent assignedPriority: the right to claim for being the first to invent Priority date: EPO/WIPO: date of filing (USA: date of invention. To be proved!)

Vocabulary

Slide37

Patent Family: a single invention can be associated to more than one patent document if the applicant seek protection in different jurisdictions. A patent family is the group of patent that are linked to the same invention. All patent document share at least one common priority.Search report: Document provided by the patent office (in the case of EPO 6 months after the application) containing a patentability evaluation and potentially blocking prior art.

Vocabulary

Slide38

Anatomy of a patent application

application

date & ID

Slide39

Anatomy of a patent application

publication

date & ID

Slide40

Anatomy of a patent application

t

echnical

classifications

Slide41

Anatomy of a granted patent

grant

date & ID

Slide42

Anatomy of a patent application

designated

states

Slide43

Anatomy of a patent application

applicants

Slide44

Anatomy of a patent application

inventors

Slide45

Anatomy of a patent application

title

Slide46

Anatomy of a search report

backward citations

Slide47

Suppose YOU WANT TO SEEK PATENT PROTECTION….

Slide48

No publication prior to filing

e.g. no article, press release, conference presentation/poster/proceedings or blog entry

No sale of products incorporating the invention prior to filing

No lecture or presentation prior to filing except under a non-disclosure agreement (NDA)Seek professional advice soon!File before others do!

NDA

What not to do when considering filing a patent application

Slide49

THE USE OF PATENT DATA FOR TECHNOLOGY ASSESSMENT

Perform an analysis using patent data-bases:

Search patent document for

freedom to operate

(should be done before launching an R&D project!

)

Understanding the technological frontier.

Which are the main competitors? In which subfield are they investing?

Which are the mostly relevant markets for my innovation?

Are there alternative uses?

Sorting out potential licensee/licensors

Which are the key patents? Is my invention sufficiently different?

Slide50

THE USE OF PATENT DATA FOR TECHNOLOGY ASSESSMENT

80% of the technical information contained in the patent documents is not published elsewherePatents anticipate technical literature:

Invention

Patent

Elsewhere

Delay years

Television

1923

1928

5

Jet engine

1936

1946

10

Cast iron

1939

1947

8

Slide51

Free search engines:Espacenet (EPO)USPTO patent searchGoogle patentsPrivate database:Thomson innovationOrbitApp based on google patent with data visualisation:Patent inspiration

THE USE OF PATENT DATA FOR TECHNOLOGY ASSESSMENT

Slide52

Technology map for “photovoltaic modules” in the IPC class H01L 31/042

THE USE OF PATENT DATA FOR TECHNOLOGY ASSESSMENT

Slide53

Example: Analysis of the RAiL industry

53

Slide54

Example: Analysis of the RAiL industry

54

Slide55

Start with keyword and relevant company namesIdentify relevant IPC classes and enter again the databasesIdentify relevant competitors and enter again the databasesGenerate statistics and report that highlight tech-trends and firms’ innovation strategies

TRY IT IN YOUR PROJECT…..

Slide56

THE VALUE OF A COMPANY WITH AND WITHOUT IPR…

Founders of Skype protected the IP and allocated them to the company

Joltid

(only in some cases with licensing to Skype) 2003

The acquisition (2005) for 2.6 B$ is based on market potential consideration, BUT limited analysis of the impact of IP

INITIAL PUBLIC OFFER

2010 ??

Investors understand the presence of blocking IP owned by

Joltid

Inc.

New acquisition by the original management ad a group of private equity investors (2.4 B$)

2011 Microsoft acquires

skype

for 8.5 B$

Slide57

Mastering

patent technical issues

EPO – Patent Teaching KitSpecifically design for engineersDownloadable at: http://www.epo.org/learning-events/materials/kit/about.html