Transcript PROACTIVE ACTIONS TOWARDS PROTECTING R & D RESULTS
Topic 5 – IP as a Business Tool:
- Proactive way to protect IP in an organization - How successful enterprises look at IP
Prepared by LEE, Yuke Chin E-mail: [email protected]
1. Technology – The Way Forward
Technology is the result of new ideas
Innovation & commercialization convert technology into valuable assets
Enterprises are created through innovation process, many of which become successful business models
WHY R & D ?
R & D are carried out in almost all industries, ranging from biotechnology, software engineering, telecommunications, agriculture, to pharmaceuticals, media, etc
Through R & D: innovative solutions to problems faced by businesses may be found; new, safe & effective products, technology and services are introduced; companies are able to produce the best products to stay ahead of competition; inventors could generate great profits through exploitation of their inventions, thus contributing to the countries’ development; the public benefits from the new inventions/improvements
RESULTS OF R & D
R & D may produce: - new product, services or technology, be it in the field of agriculture, science, electrical, technology, or telecommunications, etc - new formula or recipe for food or beverages - new improvement to an existing product or process - new design to a particular product - a new brand name could be assigned/given for each new product, improvement or design Each of these divisions (i.e. innovation leading to a new product or new design or new brand) generate their own intellectual property (“IP”)
WHAT IS IP?
IP includes: patents for inventions, technology and improvement; copyrights in works and other rights such as computer program; designs for the shape, pattern or ornamentation of goods or articles; trade marks, business names and goodwill arising from names or other IP or products; layout design circuit (i.e. microprocessor chips); and trade secret/confidential information
NEED FOR PROTECTION OF R & D RESULTS
Ideas and inventions developed through R & D have commercial potential and should be protected
To prevent infringement
To enable it to be commercialized/exploited
To prevent IP rights from being lost through scientific or publications
To maintain product quality and combat counterfeits
How to Protect your R & D Results
The following measures can be taken: (1) Manage disclosure of confidential information (2) Resolve inventor-ship issues (3) Develop a suitable IP plan (4) Work with outside IP counsels or organization (5) Secure and manage IP rights (6) Set-up internal technology commercialization team within organization (7) Raise level of awareness (8) A stronger IP protection system
Manage Disclosure Of Confidential Information (1)
Why is confidentiality so important?
IP rights to an invention may be lost through disclosure (i.e. for an invention which may be patentable, patent rights may be lost if invention is disclosed. Or the example of industrial design where the owner may lose the right to register the design if disclosed) Value to the IP may be lost if disclosed to the competitor while still in the process of scientific research or invention (i.e. one may find a similar product or process in the market after time and money has been spent to create the new product/process. The R & D costs may not be recouped)
Manage Disclosure Of Confidential Information (2)
Disclosure of confidential information may be managed through non disclosure agreement; confidentiality agreement; or technical know-how agreement to be signed by employee or those involved in the R&D. Employee may utilize the trade secrets of a company if not properly managed.
Resolve Inventor-ship Issue (1)
Inventor-ship issues may arise after an invention or innovation is created in the course of R & D
Resolve inventor-ship issues to prevent dispute of ownership of IP at a later stage, which may hinder a particular patent or trade mark from being registered or the IP not being able to be exploited in business
Inventor-ship issue may arise in: employer employee situation work contracted out to 3 rd party partnership
Resolve Inventor-ship Issue (2)
Distinguish between “commissioned work” as opposed to “work carried out in the course of employment”
Specify from the outset (prior to R & D) the ownership of IP arising from the R & D
Specify who owns what of the invention or innovation
Develop a suitable IP Plan (1)
A suitable IP plan should be developed and maintained in the course of invention. An IP plan can encompass various aspects ranging from a plan for patent alone or a combination of IP rights or simply a plan to handle R & D results.
Exp: 1. Patent Plan Decide what will be achieved by obtaining a patent and what kind of technical information required.
Consider how broadly the invention can be claimed.
Decide whether the required disclosure is worth the potential claim.
Consider whether to patent the invention or to keep it a trade secret.
Identify countries of protection.
Develop a suitable IP Plan (2)
IP Plan could also be: A combination of patent protection and trade mark or industrial design protection; or Establishment of an in-house procedures for handling trade secrets, preparation of appropriate confidentiality or employment agreement and managing IP compliance strategies.
IP Plan enables invention to be protected, thus enable the invention to be commercialized.
Secure and Manage IP Rights
Secure IP Rights
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Do not sleep on your rights; secure your IP rights; - Many who make a new invention are unable to enjoy their deserved profit simply because they failed to obtain patent protection or IP registration;
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In some cases, patent was taken by another party causing the inventor to lose access to his/her invention;
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To secure protection, IP rights such as patent, trade mark and industrial design need to be registered. Take note of the time frame to register these rights and duration of protection.
Contd….
Manage the IP Rights In addition to securing the IP rights, IP also needs to be managed (i.e. keep track of how rights are used, monitor marketplace for competitors or infringers, documenting invention, filing and updating reports, and keep records of advertisements, invoices, write-ups about the product or services, which serve as supporting documents in litigation, such as trade mark dispute matter) Conduct Internal IP Audit (to identify intellectual assets through an IP audit)
Set-up Internal Technology Commercialization Team (ITC)
Set up a ITC team responsible for managing public disclosures of confidential information; ensure technologies, new invention or design developed through R & D are protected ensure IP right ownership determined (take care of employees’ interests)
Raise Level of Awareness
Conduct / participate in workshops, seminars and the like to raise level of awareness (in particular among SME industries) on the need to protect their IP rights.
A Stronger IP Protection System
One of the most important ways that existing government policy influences the creation and valuation of intangible asset such as IP is through legal protection.
Have a set of IP laws to govern the scope of protection accorded to researchers, inventors, etc with regards to their R & D results.
THE FUTURE IS YOURS!
An idea or device, no matter how excellent, cannot be said to be truly useful unless officially recognized and protected.
It is your duty to ensure that your R & D results are protected.
Ref: Amy Thye, KL
How ASEAN enterprises manage IP
The following are the results of a Survey conducted in 2005 on 20 success stories/companies in ASEAN region
Full survey results available on WIPO web-site
Part 2 : ASEAN Success Stories in Using IP
20 companies identified – 2 from each country Some interesting data & results General profiles of company in the management of IP related issues, etc.
Note: In view of the small sample for the survey, special care should be taken when interpreting the data collected.
Figure 1 : Ownership Structure of Company
Ownership Structure No. of Company Sole Proprietorship Partnership Companies
All Local Partners
Involving Foreign Partner(s) 7 9 4
Figure 2 : Sales in Local and Foreign Markets
No. of Co.
12 10 8 6 4 2 0 10 Local market only 1 Export market only 9 Local & Export market
Figure 3 : Employment by Size for Companies
15% 20% 10% 25% B elo w 50 emplo yees Emplo yment size o f 200-499 Emplo yment size o f >1,000 30% Emplo yment size o f 50-199 Emplo yment size o f 500-999
Figure 4 : Distribution of IPR's Registration by Company
1 6 18 8 TM 9 Pat ent Copyright ID Franchising
20 15 10 5 0
Figure 5: Statistics of Local & Foreign IPR's by Company
18 TM 5 9 Patent 3 6 0 Industrial Design Local applicat ions Foreign applicat ions
Figure 6 : Table Showing the Rating of IPR a. Owing a patent or other IPR makes it easier to attract a financier Very Important 9 b. Improved products and new designs rate higher than price competition c. IPR has the function to shut out potential competitors as well as preventing imitation d. Company can capitalize on investment by selling or licensing IPR to others e. Strategic patenting can prevent company from prosecutions for patent infringement f. Patent, new design and technology enhance corporate image of company 11 12 8 9 12 Important 8 9 7 9 8 6 Not Important 1 Not Relevant 2 3 1 3 2
Figure 7 : IP Management in Company
9 11 Designated IP department/perso nnel Engage external service
Figure 8 : Provision of IP Training to Employees
3 17 P ro visio n o f Training No Training
Figure 9 : Modes of Commercialization
4 3 2 1 0 8 7 6 5 7 5 7 1 Ow n manufacturing Licensing from others Joint venture Other franchising
Figure 10 : Main Sources of Funding for Commercialization
7 16 6 P erso nal Investments B ank lo ans Venture capitals
Figure 11 : Types of Government Financial Support and Grants
Grant for patent application 5 Tax exemption Grant for developing prototype or pilot plant 8 3 Grant for commercialization 4 0 1 2 3 4 5 6 7 8 9
Figure 12 : Collaboration with R&D Partners
12 10 8 6 4 2 0 8 10 9 8 Universities or higher education institutions Government research institutes Private consultants Collaboration w ith other companies
12 10 8 6 4 2 0
Figure 13 : No. of Patent Information Users for R&D
11 5 4 Use patent information in R&D No use patent information Not relevant
Figure 14 : Value and Usefulness of Patent Information
1 3 7 High Medium Low
Figure 15 : Costs of IPR Application Too High
7 14 Co sts o f patent applicatio n etc. are to o high Length o f applicatio n pro cedures is to o lo ng
Figure 16 : Distribution of Companies with Incentive System
3 Rew ard system 17 No rew ard system
Figure 17 : Types of Incentive and Reward
Others, e.g. study tour Aw ards/recognition Job promotion Cash rew ard 1 0 5 6 14 10 13 15