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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 …
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
