2009 04 21 Ip Portfolio Management Solar Energy Sector

IP Portfolio Management in the Solar Energy Sector

Wouter PorsHead of IP

Bird & Bird The Hague

2

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

3

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

4

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

5

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.

6

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?

7

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

8

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

9

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!

10

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

11

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

12

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!

13

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

14

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

15

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)

16

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

17

Bird & Bird Services

Strategic advice

Portfolio management

Regulatory

Export control/dual use

Lobbying

Corporate

Employment

Tax

Licensing/contracts

Litigation

18

Full services for portfolio management

www.twobirds.com