2009 04 21 Ip Portfolio Management Solar Energy Sector
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IP Portfolio Management in the Solar Energy Sector
Wouter PorsHead of IP
Bird & Bird The Hague
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Overview of Intellectual Property Rights
TechnologyPatents (European Patents, National Patents)
CopyrightsTechnology: Supreme Court 24-02-2006 Technip: protection assumed of a “kinetic scheme”, a set of chemical reaction comparisons that formed part of a computer simulation programme for controlling a production process in the chemical industry
This goes beyond protection for software
Design: partly technical, partly shape
Design freeze!
Know how
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Overview of Intellectual Property Rights 2
Corporate identity
Product and service look and feelTrade name
Trademarks
Design rights
Copyrights
Create goodwill
Fallback positionIn case technology is
not protected
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Innovation: who does it
Any industry can innovate
Renewable energy: innovation drivenAll energy sectors:
innovation creates valueinnovation creates market advantage
You need to innovate to be able to play
You need to protect innovations to stay in the ball parkWhat to protectHow to protect
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Example: power lines
Traditional: above ground
Still development neededLimit space occupancy
Limit magnetic fields
New: subterraneous Everything is new
Who sets the standard?
Strategic options available
De nieuwe hoogspanningskabel die uiterlijk in 2011 tussen Wateringen en Zoetermeer moet liggen, wordt gedeeltelijk ondergronds aangelegd. Ten zuiden van Delft gaat de lijn ongeveer 10 kilometer onder de grond.
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Freedom to operate?
Someone may have essential technology
They may have patents on that
What about freedom to operate?
Have they patented in Europe?
Can they upgrade to high voltage?
Does it affect you?
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IP creates value – prior to market entry
IP can be valuated
Even before market entrance
Not the future product, but the IP on the future product determines the value
Financing
Milestone agreements
Strategic IP is worth more
Start-ups should do this
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IP creates value – after market entry
Reduce costs by taxationDutch patent box
Allocate R&D
Improve on acquisitions
Generate income
Solar is international market
Transfer pricingCost in high tax countries
Income in low tax country
Strategic structure
Tax havens may be suspect
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Here come the standards
Where interoperability between providers is neededEssential patents to ensure working
Mobile telephone:GSMGPRSUMTSHSDPAGPSMP3Etc
>> 5000 patents on each phoneNeed a license for all!
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Informal standards
Balb-c mouseEveryone developing genetic therapy for cancer needs it
It’s patented
Need a license
Reach through: royalties based on drug sales?
Alternatives available?Also patented
Similar to VHS / Video 2000 / Sony Betamax issue in the 80’s
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Strategic research and patenting
R&D people are great, but they cannot give directions at willSuch patents may not give you
A head startMarket exclusivityFreedom to operate
Market analysisHow to connect to the gridWhich technology is essentialWhich technology is strategicWho owns thatHow can you build a positionResearch for strategic portfolio
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The energy sector: patent perspective
No formal standards with patent pools
Interoperability is an issue
At least informal standards
Some companies are building strategic patent positions
Everyone needs to be aware
Intellectual property makes a difference
Create your position!
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Community perspective: level playing field
Cooperate and combine forces
Open source?Everybody needs to participate
Valuation is difficult
Community approachSmall players
Large group
IP remains the creed
Valuation possible
Combining forces
Stronger position
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Patent pools: the underdog perspective
Small players can combine forces
Search for partners with strategic IP
Combining forcesCross-licensing
Contribute to mutual pool
Add new partners
Production and interconnectivity
Enter the marketCreate a level playing field
Ensure freedom to operate
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Patent pools: the large players
EU perspective: balance between free competition and protection of intellectual propertyCombining forces may be anti-competitiveDominant market position?
SolutionsIntroduce standardsObjective need requiredIndependent administrationFRAND licensing
(Fair, Reasonable andNon-Discriminatory)
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Conclusion: develop a strategy
Analyse your marketIdentify
Interoperability issuesEssential / strategic IPFreedom to operate needsMarket exclusivity opportunitiesOptions for alliances
Focus your research and IPBuild networksBut: do not act anticompetitive
Generate profit by strategic IP portfolio management
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Bird & Bird Services
Strategic advice
Portfolio management
Regulatory
Export control/dual use
Lobbying
Corporate
Employment
Tax
Licensing/contracts
Litigation
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Full services for portfolio management
www.twobirds.com
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