INTELLECTUAL PROPERTY SERVICE INDUSTRY · 2019-12-16 · INTELLECTUAL PROPERTY SERVICE INDUSTRY IN THE EUROPEAN UNION Benoit Misonne, Team Leader ... then the deriving interests from

INTELLECTUAL PROPERTY

SERVICE INDUSTRY

IN THE EUROPEAN UNION

Benoit Misonne, Team Leader | IP Key

Beijing, 5 September 2014 | Qingdao

A project funded by the European Union

Background to IP Key

• EU-China Cooperation Projects on the Protection of Intellectual Property Rights• IPR1 (1999 – 2004): Focus on legislation

• IPR2 (2007 – 2011): Focus on enforcement

• Evolving relationship, beyond technical assistance, enhance cooperation in the sphere of economic and competitive development

• New EU-China Activity-Based Cooperation on IP• EUs financial contribution through “Intellectual

Property: A Key to Sustainable Competitiveness”, or IP Key (2013 – 2016)

Before we start …

• IP as a business tool to protect investments (ref.: Venice, Statute of Queen Anne, etc.)

• Not about IP but about innovation and doing business!

• It is not, and it shouldn’t be any company’s objective to quantify the number of IP they want to register as a set objective. Rather, any business’ objective is to create added value and generate profits, then the deriving interests from all other stakeholders: government, workers, consumers, society, etc.

Contents

• IP Service Industry in the EU• Traditional IP intermediaries

• IP Information Systems

• IP Valuation

• EU led initiatives to boost the knowledge economy:• Intellectual Property for Innovation (IP4INNO)

• Enterprise Europe Network (EEN)

• IPR Helpdesk(s)

Traditional IP intermediaries

In-house counsels, IP strategists and law firms will support companies develop an IP strategy, IP filing, enforcement strategies, etc.

Aligning your business & IP strategies

• Align your IP strategy with your overall business strategy - it starts at the top CEO / COO / CFO

• What is your company’s business strategy?• Establish a new market?• Become a significant player in an existing market?• Develop your market share vis-à-vis your competitors?• Maintain your market share in a mature market?• Build your company by organic growth?• Build your company by acquiring others?• Protect your company from acquisition by others?

• IP strategy must reflect and help to drive overall company strategy – different at different stages of the company’s development

advice to right holders

• Make use of professional experts!• Esp. in setting up IP strategy

• Contracts, in particular technology related: R&D, licensing, etc.

• In IP dispute cases (active and passive)

• For patent/design/trademark applications in Europe, you need external patent/IP attorneys in the respective member states …

Elements of an IP Strategy

• Defend towards third parties

• Protect your own achievements

• Employ to enhance your business

• Exploit to generate money

IP strategy

defend

employ

exploit

protect

Source: Dr. Bertram Huber, Rechtsanwalt - IP*SEVA, Backnang (Stuttgart)

Geographical considerations‘European Union ≠ European Patent Convention ≠ Europe

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Geographical considerations

Term of protection Registration Examination

Patent 20 years Registration Substantial

Utility models National National National

Design 10 years Registration Only formal examination

Trademark Unlimited Registration Substantia

Copyright National No registration -

Know-how unlimited No registration -

Source: Dr. Thomas Pattloch, Taylor Wessing

• Cost of a "sample" European patent

• Reduce post-grant translation costs for the European patent

National renewal fees

29%

Translation in the contracting states

39%

ProfessionalRepresentationbefore the EPO

18%

EPO fees

14%

EUR 4,300EUR 8,500

EUR 11,500

EUR 5,500

1)

20 pages, 10 claims, 8 states, 10-year term

London Agreement

Geographical considerations

Source: Dr. Thomas Pattloch, Taylor Wessing

Geographical considerations

• Countries where European companies usually file applications:

Home country & European Patent

USA

Japan

Countries in which competitors produce

Countries, future

markets

IP Information Systems

Benefits of patents | Inventors

• For inventors, patents can:• help safeguard financial returns from the commercial

exploitation of the invention

• give holders time to recoup their development costs

• encourage further investment in R&D

Benefits of patents | Economy

• For the economy, patents are a prime source of new technical knowledge:• Search and analysis of IP drives research strategy and

supports innovation management

• Integrating activities for IP search and analysis in technology strategy formulation leads to higher probability of success in new technology ventures

Patents foster technical innovation, which is crucial to competitiveness and overall economic growth

Patent Search | Why?

• Avoids unnecessary research which is already done• prevent the duplication of R&D in industry and

universities

• Identify new technological trends + Identify alternative technologies = inspire further inventions

• Find ready solutions for technical problems

• Identify & locate business partners

• Monitor activities of potential competitors

• Find interesting personal for your company

• Oppose grant of patents of possible conflict

• Precondition for any valuating

Patent data search

Patent data search

Patent data search

Patent data search

Patent data search

Someone has a great idea New ? Inventive ? Industrial Application ?

Found a commercial partner, investment, realism, Trademarks ? Distribution

Developed / Perfected

Marketing

Sales contracts

Enforcement of rights in relevant territories

Searches | Useful at many stages

Patent Search | Where?

• From free – entry level patent info on esp@cenet (EPO)

• To professional databases and landscaping software e.g.：• EPO | Global Patent Index (GPI)

• Questel | ORBIT

• Thomson Reuters | DerwentWorld Patents Index

• Etc.

Filling the gap between invention and application

TTOs/KTOs: Fill the gap

• Inventions rather than innovations

• Patent is an academic merit

• No support to tech entrepreneurs

• Researchers motivated by further research

• Pricing as part of research contract

• Reactiveness in commercialization

• Avoid risks

• Domestic focus

• Innovations based on research and science

• No patenting unless there is money to be made

• Venture capital

• Entrepreneur-in-residence

• Motivation to get rich or see use of results

• Market pricing

• Plan for commercialization

• Fail fast, try again

• No time to waste in becoming global

Source: VTT

NowBefore

Shifting paradigm

Challenge | Increasing income stream

• High cost of prosecuting patent families

• Cost analysis• Licenses / patents ratio?

• Mony cow licenses / patents?

• The goal is to find a balance between :• Leaving enough space so that you avoid to pass on a

great and high value invention

• Be selective enough to maintain a manageable portfolio and keep cost under control

Basic research

Development

TTO/KTOsApplied research

TTO/KTOs in R&D work

Source: VTT

Support to industry (esp. SMEs) focusing at awareness raising, capacity building & networking to max. use of IP as a business tool.

European initiatives

In brief:

Enterprise Europe Network (EEN), IP4INNO, European IPR SME Helpdek(s),

etc.

IP as a business

tool abroad

IP capacity building in

EU

Business, IP &

Techxfer in EU

EEN

• Aim: “one-stop shop” to meet all the information needs of SMEs and companies to make the most of business opportunities in EU's single market

• 600 different organisations encompassing over 4,000 staff in over 40 countries• Chambers of Commerce, RDAs or DAs or University technology

centres

• Designed for SMEs but available to all businesses, research centres and universities across Europe

• Aspires to be a two-way network bringing the European Commission closer to businesses and vice versa

• Services are free of charge

Source: EEN

IP4INNO

• Based on a Europe-wide training needs and methodologies analysis

• Intermediaries: High level of IP knowledge. Focus on training others

• TTOs and Researchers:• Need to publish and an unstable / unavailable IP budget• Integration of IP tools into curricula is an important step to improving

the use of IP tools by future researchers. • SMEs: specific areas where training is necessary for SMEs:

• instruments / mechanisms of basic IP protection and enforcement,• instruments / mechanisms to avoid IP violation, such as the

importance of technology watch or surveillance and examples of good practice,

• strategic use of IP and commercialisation techniques.Time and money issues, focus on how IP can be a profit-making

exercise / Also, need to be shown that other, less costly and less complex IP instruments exist whose procedures are not so complicated.

IP4INNO | Output IPR2

Access to modules: HTTP://WWW.IP4INNO.EU (originals)

HTTP://IPR2.IPR.GOV.CN (Chinese)

Going-out: IPR SME Helpdesk(s)

• information and services free of charge• case study catalogue and

solutions centre, e-learnings, direct enquiries to the desk

• raising awareness and preparing SMEs for IPR issues on external markets: "know before you go"

• business-focused and practical first-line advise

• delivering IPR business tools and self-help solutions (guides, e-learning, etc.)

In China: www.china-iprhelpdesk.eu

Thank You!

The EUs financial contribution for the new intellectual property cooperation is provided through ICI+ project"Intellectual Property: a Key to Sustainable Competiti-

veness (IP Key)” whereas China's financial contributions will be provided through its own means. IP Key is implemented (and co-financed) by the Office of Harmonization for the Internal Market (OHIM) in partnership with the European Patent Office (EPO) and builds on the achievements of past EU-China cooperation projects, most recently the EU-China IPR2 project.

Room 2480, Sunflower TowerNo. 37 Maizidian West Street

Beijing, China 100125

[t] +86 10 8527 5705[f] +86 10 8527 5708

[e] [email protected] [w] www.ipkey.org