IP Management and Strategy in Business WIPO-KIPO National workshop on IP in Business for SMEs Lagos 18 June 2010 Marina Sauzet Consultant WIPO SMEs Divsion.

IP Management and Strategy in Business

WIPO-KIPO National workshop on IP in Business for SMEs

Lagos18 June2010

Marina Sauzet

Consultant WIPO SMEs Divsion

OUTLINES

Using IP to start business activities Strategy on IP acquisition Strategy on IP exploitation Strategy on IP monitoring Strategy on IP enforcement

Using IP to start business activities

1. Need to find an idea?

Patent system

Protection function- Inform the public about the scope

of protection limited in time and to a particular territory

Disclosure (Information) function- Teach the world wide public

domain how to use the invention- 80% of information found in

patents is unique

Use existing patents in the public domain or not registered in your country

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Using IP to start business activities

Example: PhilippinesAdded value products for and from the coconut industry

Using Patent Information to sustain innovation. Developing from public domain ideas for new product to prevent the soil erosion.

Philippines exported US$176m worth of Geotextile made from coconut husks to China, one of its largest markets for coconut products.

Strategy on IP acquisition

2. How important are intangibles assets to the success of your business?

IP audit: What is the current value and /or future potential of the IP assets?- Do you use a trade name? Do you have confidential business information?

Have you invented something new in the market? Do you have a creative design for your product?

How essential are IP assets for the commercial success of the business?- Can you sell your product without its trade name?

What competitive advantage do the IP assets provide? - How the use of your intangible assets will affect your business?

Strategy on IP acquisition3. What to apply for :

Innovation - improvement of functional aspects or fabrication process of the product: Patents, Utility Models

Industrial Designs: Ornamental or aesthetic aspects of a product. SHAPES : form of the article in three dimensions

Trademarks, collective marks, certification marks

Several IPRs in one Product: some features of a product may be protected with one or more IP rights. E.g. shape of bottle, textile design, software, etc.


3. What to apply for :

Patent for stud and tube coupling system (the way bricks hold together)

But: Today the patents have long expired and the company tries hard to keep out competitors by using designs, trademarks and copyright


Trade secrets

- Information must be secret

- Must have commercial value because it is a secret.

- Must have been subject to reasonable steps by the rightful holder of the information to keep it secret (e.g., through confidentiality agreements)

Measures to check:

- Confidentiality agreement with employees?

- Restrict the access to only persons having a need to know of the information?

- Are the confidential documents marked?

- How do you physically isolate and protect your TS?

- Is public access restrict to business facilities?

- Non-disclosure agreements with partners?

3. What to apply for :


4. To apply or not to apply:

Costs-benefit analysis, patents vs. trade secrets, registered or unregistered works and designs

Ex: Decades ago, Coca-Cola decided to keep its soft drink formula a secret

- Kept The formula is only know to a few people within the company- in the vault of a bank in Atlanta

- Those who know the secret formula have signed non-disclosure agreements

- It is rumored that they are not allowed to travel together

- If it had patented its formula, the whole world would be making Coca-Cola


5. Where to apply: IP rights are territorial rights National level:

IP offices of the respective countries and Copyrights Offices.

Regional: - European Patent Office

- Office for Harmonization in the Internal Market (for European Community trademarks and, in the future, industrial designs):

- African Regional Industrial Property Office (ARIPO)

- African Intellectual Property Office (OAPI)

- Eurasian Patent Office (for patent protection in countries of the Community of Independent States

- Benelux Trademark Office & Benelux Designs Office (for trademark and industrial design protection in Belgium, the Netherlands and Luxembourg)

- Patent Office of the Cooperation Council for the Arab States of the Gulf (for patents)

International: WIPO (PCT system , Madrid system, Hague Agreement )

Strategy on IP acquisition 6. When to apply: Timing of application for registration

Patents for inventions: 12-months priority period from the date of filing of the first application for applying for patents in other countries.

Trademarks and industrial designs: 6-months priority period from the date of filing of the first application for applying for trademarks and industrial designs in other countries.

Copyright: national or resident of a country party to the Berne Convention for the Protection of Literary and Artistic Works or member of the World Trade Organization (WTO) /TRIPS Agreement, if work published for the first time or at least simultaneously in one of the above countries, copyright will be automatically protected in all other countries that are party to the Berne Convention or are members of the WTO.

Strategies on IP exploitation

IP and Business strategy Integrating IP in overall business strategy means including

IP considerations in the following:

- R&D strategy- Funding strategy- Marketing strategy- Accounting- Technology acquisition- Export/foreign investment strategy

Strategies on IP exploitation IP and R&D strategyIP and R&D strategy

Use of patent information

- Identify and evaluate technology for licensing and technology transfer

- Identify alternative technologies

- Keep abreast with the latest technologies in your field of expertise

- Find ready solutions to technical problems

- Get ideas for further innovation

Consider best means of protecting R&D results


IP and funding strategyIP and funding strategy

Inclusion of IP within business plans presented to investors (particularly venture capitalists)

Licensing IP: may provide a constant revenue stream from royalties


GPS Shoes by Isaac Daniel « Quantum Satellite Technologie » Has signed a $75 million contract with Victory Grand Development, that has offices in Moscow to have its shoes distributed in the former Soviet Republics.

IP and funding strategyIP and funding strategy

IP and marketing strategyIP and marketing strategy

Trademarks, Industrial Designs, Geographical Indications: 3 IP Rights crucial to successful branding. IP rights, combined with other marketing tools (such as advertisements and other sales promotion activities) are crucial for:

Differentiating products and services and making them easily recognizable: creation/selection and protection of mark important for brand image and decisive tool for success in the market place. A visually attractive design alone may enable you to captivate a demanding and extremely diversified clientele.

Promoting products or services and creating a loyal clientele: use of IPRs to position the product

Diversifying market strategy to various target groups: Marks and designs: useful for segmenting markets and targeting specific groups of customers (e.g. children, young women)

Use of collective and certification marks as a quality guarantee for marketing a product (e.g. “Woolmark”)



Valuation of IP assets important for mergers and acquisitions: Transfer to the transferee of property and liabilities.

Inclusion of IP assets in balance sheet? (How should it be measured)?

IP may enhance the market value of the firm in the eyes of investors, shareholders, etc.

IP and accountingIP and accounting


Use of patent information to find suppliers of patented technologies. From the point of view of the commercial strategy, patent information allow to:

- Locate business partners

- Locate suppliers and materials

- Monitor activities of real and potential competitors

- Identify niche markets

Acquisition of new technologies via licensing of patented technology, know-how, trade secrets, etc.

Registration of technology transfer agreements (if appropriate) to obtain tax benefits

IP and technology acquisitionIP and technology acquisition


Avoid common pitfalls and take decision on the exploitation of IP Rights:

Believing that IP protection is universal: IP rights are territorial Not checking whether a trademark is already registered or is being

used by competitors in the export market. Applying too late for IP protection abroad: timing of applications for IP

rights abroad is crucial (Priority period: Patents: 12 months, Designs: 6 months, Trademarks: 6 months)

Disclosing information too early or without a confidentiality or non-disclosure agreement

Infringing the IP rights of others

IP and Export/ Foreign investment strategy (1)IP and Export/ Foreign investment strategy (1)


Avoid common pitfalls and take decision on the exploitation of IP Rights:

Decision on whether to export a product, license to foreign manufacturers/distributors, franchise or invest in a local company without registering IP rights

Negotiations on ownership of IP rights abroad with foreign partners Be aware of new export opportunities that may open up through IP

rights, especially patents Advantageous market position in export markets with the use of IP

rights, especially trademarks and industrial designs IP rights enhance the opportunity of winning loyal clientele for your

products and services in export markets

IP and Export/ Foreign investment strategy (2)IP and Export/ Foreign investment strategy (2)

Strategy on IP Exploitation

IP and Licensing:IP and Licensing:

May provide a constant revenue stream from royalties cross-licensing agreement is a contract between two or more parties where each party grants rights to their intellectual property to the other parties. Technology licensing agreement : licensor authorizes licensee to use technology under certain agreed terms and conditions.


TRAX public seating system

- OMK Design Ltd marketed and sold the product

- TRAX has become a successful product , partly due to its practical design

- Installed in over 60 airports worldwide

- OMK Design Ltd has licensed to foreign companies on payment of royalties

Industrial Designs licensing

IP and LicensingIP and Licensing


Ethiopia produces some of the finest coffee in the world but gained very little. There was also a problem of mis-appropriation Filed trade mark applications in 36 countries and secured protection in 30 Countries. Negotiated license agreements with 96 foreign coffee companies and 50 local coffee exporting companies and coffee producers unions.

License agreements are royalty free Licensees have duty to:

use the brands when selling the fine coffees as a single origin coffee

Promote the brands and the fine coffees Developed umbrella and individual brands, issued brand guidelines

IP and Licensing:IP and Licensing: Experience of Ethiopia


A specialized license where the franchisee is allowed by the franchisor in return for a fee to use a particular business model and is licensed a bundle of IP rights (TM, service marks, patents, trade secrets, copyrighted works…) and supported by training, technical support and mentoring.

Advantage of FranchisingBuying a name/reputation, enter in established markets, technical/management assistance, standardized procedures, quality standards, selection of location, facility design…

IP and Franchising

Food Sector

Mr. Biggs (UAC Plc ) – Tantalizers -Tasty Chicken - Chum Chum- Sweet Sensation - Chicken Licken - Big Bite

Courier Service Sector

UPS Nig. Ltd.

Petroleum Products

Texaco Nig. Plc - AGIP Nig. Ltd.- Total Nig. Ltd.- Mobil Oil - Conoil (formerly National Oil and Chemical)

Hotels

Sheraton – Hilton - Le Meridien - Protea

Some major franchises companies in Nigeria

Strategy on IP Exploitation IP and Franchising


It’s all about the football!!!

Mission statement

To provide Arsenal with increased income, profitability, cash generation and financial strength which would allow the Club to compete at the very highest level of domestic and European football.

Source: Ronald Crawford – IP and Brand Portfolio manager -WIPO Presentation 2009

Example: Arsenal

Media Sponsorship Licensing-Retail

Partnerships Naming Rights

Corporate PartnersRetail PartnersSoccer School Partners

Corporate PartnersRetail PartnersSoccer School Partners

TelevisionRadioNew mediaMobileInternet

KitShirt

Trademark LicensingRetail Stores

Stadium


Intellectual Property Revenue

Example: Arsenal

Strategy on IP Exploitation 19

Arsenal TV

Arsenal Mobile

Arsenal.com

Arsenal Magazine


Media

Example: Arsenal


Official Kit Sponsor

Official Sponsor


Example: Arsenal

Sponsorship

Branded Merchandise

On Site Retail


Overseas Retail

Online Shop


Licensing-Retail

Example: Arsenal

Partnerships Naming Rights


Partnerships

Example: Arsenal


Technical partnershipsArsenal develops local on-field talent through local Clubs such as BEC Tero

Sasana in Thailand and Ho anh Gia Lia in Vietnam. Project also includes commercial and marketing initiatives to aid these Clubs

Club partnershipshave included investment in Academies in Vietnam, and Thailand to help develop local talent

Local media platformslocal websites mobile services and publishing partners - provide channels to leverage value and target millions of Arsenal fans.


Example: Arsenal


Naming RightsNaming Rights


Example: Arsenal


Strategy on IP monitoring 34

Objectives:

Understand competitive dynamics especially IP strategies adopted by competitors and suppliers in the market Monitor IP Rights infringements Technical innovation: Patent information Branding: Trademark information, Design information, Domain names

Strategy on IP monitoring

Trademark monitoring:

Trademark infringement Information about competition New marketing trends Trademark filings usually predate product launches or web mentions Trademarks offer a great way to gauge new trends industry Measure commercial activity of a company


How do your competitors customize their products to target a particular customer group?

How do their target a niche market?

How do their strengthen their brand?

WIPO: Hague express search / National and Regional IP Offices

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Design monitoring


Domain names have become an important part of a company’s brand :Use of multiple domain names to represent various products and to serve assorted marketsDomain give access to product and branding strategiesPreserve brand integrity and access to information about competitor bad faith, cyber squatting or other offensesTrack industry actors and determine their market strategy by conducting inventory of domain name assets and compare it to trademark databases

Search domain names. Ex: www.uwhois.com

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Domain names monitoring

Strategy on IP enforcement

COUNTERFEITING

infringements of a mark

Nike

Louis Vuitton

Rolex

Johnnie

Walker

PIRACY

infringements of copyright or related rights

Counterfeiting and Piracy

Strategy on IP enforcement

Why is the enforcement of IP rights essential for SME :

Preserve the legal validity of its IP rights before the relevant public authority

Prevent infringement from occurring or continuing in the marketplace in order to avoid damage including loss of goodwill or reputation

Seek compensation for actual damage, e.g. loss of profit, resulting from any instance of infringement in the marketplace

Strategy on IP Enforcement

IP insurance: cost-benefit analysis

Arbitration and/or mediation clauses in licensing contracts (e.g. WIPO model clauses)

“Cease or desist” letters

When and how to contact enforcement authorities

Conclusion

Protecting IP assets is not enough, managing IP assets is key for the

commercial success and to enhance the competitiveness of SME

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THANK YOU FOR YOUR ATTENTION !

Marina Sauzet WIPO SMEs Division

[email protected]

IP Management and Strategy in Business WIPO-KIPO National workshop on IP in Business for SMEs Lagos 18 June 2010 Marina Sauzet Consultant WIPO SMEs Divsion.

Documents

ip enforcementusing

ip assets

ip acquisition strategy

ip management

ip acquisitionwhat

ip audit

ip rights

ip monitoring strategy