An Overview of National and International Intellectual Property Systems and the Role of WIPO

Guriqbal Singh Jaiya

Director, SMEs Division World Intellectual Property Organization (WIPO) [email protected]

Basic Facts about WIPO

WIPO’s Mission: To promote the protection of IP rights worldwide and extend the benefits of the international IP system to all member States Status: An int’l intergovernmental organization Member States: 183 Staff: 915 from 94 countries Treaties Administered: 24 Decisions by: GA, CC, WIPO Conference Guiding Principles: Transparency, Accountability, Consensus

Milestones : 1883 to 2006

1925 1883 1886 1891 1893 BIRPI Madrid Agreement Berne Convention Paris Convention 1970 1989 2002 Internet Treaties Madrid Protocol PCT 1970 1967 WIPO established 1960 WIPO Convention BIRPI moves to Geneva Hague Agreement

Intellectual Property: A Tool for Development

“In the age of the knowledge economy, the efficient and creative use of knowledge is a key determinant of international competitiveness, wealth creation and improved social welfare.” “An effective intellectual property (IP) system embedded within a national strategy which anchors IP considerations firmly within the policy-making process will help a nation to promote and protect its intellectual assets, thereby driving economic growth and wealth creation.” Kamil Idris WIPO Director General

Types of IP Rights

• Trade Secrets • Copyright and Related Rights • Industrial Designs • Trademarks (Brands) • Geographical Indications • Utility Models and Patents • New Varieties of Plants • Unfair Competition

Strategic Goals

• Promotion of an IP culture – build a foundation for more solid & extensive IP culture – better understanding & use of IP system. – Greater respect for IP rights • IP policies as part of Nat’l Dvpt. Strategies • Development of balanced IP laws responsive to emerging needs • Delivery of quality global IP protection systems • Enhanced Access to IP System – practical solutions to empower all stakeholders to develop, protect, enforce, manage and commercially exploit IPRs for development

Outreach

Public Sector & Policy-Makers

Building awareness

Intellectual Property Offices General Public, Private Sector & Civil Society

Services to Industry

WIPO’s Activities

Norm Setting Economic Development

NORM SETTING

• AIM: Progressive development of international IP law for an IP system that is: – balanced/responsive to emerging needs – effective in encouraging innovation/creativity – sufficiently flexible to accommodate national policy objectives • Address/provide info. on current & emerging issues in IP - (review/discussion of topical issues in standing committees).

NORM SETTING

atents

A Success Story: Functional challenges:

(success has generated operational issues) Political challenges: (greater public scrutiny)

> Clarify current/emerging issues > Discuss improvements in op. principles/practice > Address issues in line with national/international economic development strategies

Aim: Take into account interests of all stakeholders.

A system that is balanced, reliable, swift, user-friendly, accessible, cost-effective

NORM SETTING

opyright & Related Rights: -

encourage broader use of system

-

ensure it is in line with digital environ.

Priorities: Implementation of WCT/WPPT ( major step forward in updating CR at international level) Build consensus on topical issues

NORM SETTING

rademarks, Designs, Geographical Indications

Tools for domestic/international commerce, marketing strategies

• Develop int’l TM law (TLT Revision) • Legal advice • Promote convergence of admin. practices • Soft Law approach • Promote dvpt./use of registration systems

NORM SETTING

Traditional Knowledge, Access to Genetic Resources, Folklore Aim: Generate practical benefits from using IPS/use IP assets to support socio-ec. development, cultural integrity of communities/address concerns of indigenous peoples, etc Genetic Resources & Benefit Sharing Traditional Knowledge & Innovations.

IGC (2000): Int’l Forum for tackling issues at several interlocking levels debating broad policy and legal questions; sharing practical experience; and developing practical tools and mechanisms Current situation: Maturing process - common objectives/ core principles.

WIPO GA: new mandate - international dimension/no outcome excluded

ECONOMIC DEVELOPMENT

To maximize strategic use of IP for development by: - updating IP legislation - upgrading IP infrastructure - demystifying IP - promoting understanding of policy options offered by IPS Approach : tailored to specific national needs (NFAPs, etc. via regional offices) Focus Shift : deliverables, capitalize on assistance rendered.

EMPHASIS ON ….

• Networks - synergistic relationships • Outreach • Training • Collective Copyright Management Organizations • Promotion of Creativity and Innovation

ACADEMIC TRAINING WIPO WORLDWIDE ACADEMY

• Distance Learning Program • Professional Training • Policy Dvpt., Teaching & Research • Approach: Training trainers » Partnerships with Academic Institutions/IGOs/NGOs - synergies for dvpt.

» Joint programs/publications, promo. materials

I

NNOVATORS & SMES

• Dynamic Economic Sector • Aim: improve IP awareness to enable formulation & implementation of: – policies; – programs; – strategies to enhance strategic use of IP assets by R&D, Innovators/SMEs e.g. licensing agreements; finance; IP information to monitor competitors, etc.

GUIDELINES & FILING SERVICES

I. Enhancement of global protection systems to further simplify and reduce costs of obtaining protection in multiple countries for: PATENTS (PCT): - PCT Reform - E-filing TRADEMARKS (MADRID) INDUSTRIAL DESIGNS (HAGUE) GEOGRAPHICAL INDICATIONS (LISBON) MICRO-ORGANISMS (BUDAPEST)

THE PATENT COOPERATION TREATY PCT

160000 140000 120000 100000 80000 60000 40000 20000 0

WIPO LEGAL SERVICES

Alternative dispute resolution (ADR) offered by WIPO Arbitration & Mediation Center - tailor made D R procedures, e.g.: - UDRP criteria: - identical/confusingly similar - legitimate interest - bad faith - cost-effective and expeditious procedure (see http://arbiter.wipo.int) - WIPO Trademark Database Portal (http://ecommerce.wipo.int/databases/trademark/)

WIPO’S INCOME

2006-2007

15% 1%2% 6% 76%

Total: 531 M CHF

Member States PCT System Madrid Sytem Hague System Other

From Invention to Innovation While invention depends upon creativity , successful technological innovation requires integrating new knowledge with multiple business functions .

Innovation – What is it?

The creation of new ideas/processes which will lead to change in an enterprise’s economic or social potential

[P. Drucker,

‘The Discipline of Innovation’

, Harvard Business Review, Nov-Dec, 1998, 149]

What is Innovative Thinking?

–

A means of generating innovation to achieve two objectives that are implicit in any good business strategy:

•

make best use of and/or improve what we have today

•

determine what we will need tomorrow and how we can best achieve it, to avoid the « Dinasaur syndrome »

–

Innovative thinking has, as a prime goal, the object of improving competitiveness through a perceived positive differentiation from others in:

• • • •

Design/Performance Quality Price Uniqueness/Novelty

Obstacles to Successful Innovation

•

Competitive position

• • • •

Market judgement Technical performance Manufacturing expertise Financial resources

Innovation

How to classify newness and degree of innovation and what to focus on

: • • • •

New to the firm? First in the market?

First in the world?

Incremental or radical innovation?

There are several types of new products. Some are new to the market, some are new to the firm, and some are new to both. Some are minor modifications of existing products while some are completely innovative

Product Development Strategies

Old Market New Market Old Product Market Penetration New Product Product Development Market Development Product Diversification

Marketing principles…….

• • • • • •

Identify opportunities and threats Identify customer needs React to a competitive environment Careful planning to make a New or improved product Use the 4 P’s….

   

Product service Price Promotion Place (distribution) Retain flexibility to react to changes

The Development of Technology: From Knowledge Generation to Diffusion Basic Knowledge Invention

Supply side

IM ITATION Innovation Diffusion

Demand side

ADOPTION

Innovation Process

Invention Innovation Imitation

• The adoption of an innovation by similar firms • Usually leads to product or process standardization • Products based on imitation often are offered at lower prices but with fewer features

The Innovation Process

• • •

An innovation starts as an idea/concept that is refined and developed before application.

Innovations may be inspired by reality (known problem). The innovation (new product development) process, which leads to useful technology, requires:

– – – – –

Research Development (up-scaling, testing) Production Marketing Use Experience with a product results in feedback and leads to incrementally or radically improved innovations .

The Innovation Process

Translation of a Creative Idea into Useful Application Analytical Planning To Identify:

Product Design Market Strategy Financial Need

Organizing Resources Implementation Commercial Application To Obtain: To

Materials

Accomplish:

Technology Capital Organization Human Resources Product Design Manufacturing Services

To Provide:

Value to Customers Rewards to Employee Revenue to Investors Satisfaction of Founders

The Profitability of Innovation Profits from Innovation Value of an innovation Innovator ’s ability to appropriate value from an innovation

•

Legal protection

•

Complementary resources

•

Ease of imitation of technology

•

Lead time

Appropriating Value from Innovation

Barriers to Integration Different Time Orientation Interpersonal Orientation Different Goal Orientation Formality of Structure Cross Functional Integration/ Design Teams Facilitators of Integration Shared Values Leaders’ Vision Budget Allocation Effective Communication

Time to Market Product Quality Creation of Customer Value

Value Appropriation from Innovation

Sales

Product Life Cycle

Maturity Decline Growth Introduction Time

New Product Development

Stages in a New Product Development process: • Idea Generation • Idea Screening • Concept Development and Testing • Business Analysis • Beta Testing and Market Testing • Technical Implementation • Commercialization

Technology Adoption – Diffusion of Innovation Time Take up Rate Innovators Early Adopters Early Majority Late Majority Laggards Innovators: venturesome; greatest need Early adopters: opinion leaders; needs driven Early majority: deliberate Late majority: Laggards: skeptics traditionalists; suspicious

New Business Models Emerge

Then… Now…

Product Development Cycle

One Integrated Company

CRO’s CRM’s Product Development Tool Companies Testing Services

Many Distributed Companies

New Regional Model Emerge

Then… Now…

Region D Region A Region B Manufacturing Region C Research Trials/Testing Services Region G Development Region E Region F

Self-contained regional clusters Specialized, networked regions

Commercialization Model

• Strategic Investment is the Foundation of a Successful Commercialization Model

What Investors Look for?

    

Novelty; world-class; evidence of commercial interest; clear path to market Unencumbered, or encumbered by reasonable conditions (Equity, royalties) Protection (Non-disclosure agreements, Patents, Designs, Brands, Copyright) IP protected by one or more Patents is the IP required to implement the business plan “Freedom to Operate”

Innovation, Intellectual Property and Poverty Reduction

Critical Ingredients for Innovation:

•

Intellectual Capital

•

Human Capital

•

Financial Capital

•

Proximity

•

Social Network Capital

Complementary Resources Manufacturing Distribution Finance Marketing Service Core technological know-how Complementary technologies Other Other Bargaining power of owners of complementary resources depends upon whether complementary resources are generic or specialized.

Alternative Strategies for Exploiting Innovation Risk & Return Competing Resources Examples Licensing Outsourcing certain functions Strategic Alliance Joint Venture Internal Commercialization Small risk, but limited returns also (unless patent position very strong Limits investment, but dependence on suppliers & partners Few Allows outside resources & capabilities To be accessed Benefits of flexibility; risks of informal structure Shares investment & risk. Risk of partner conflict & culture clash Biggest risks & benefits. Allows complete control Permits pooling of the resources/capabilities of more than one firm Substantial resource requirements Konica licensing its digital camera to HP Pixar’s movies (e.g. “Toy Story”) marketed & distributed by Disney.

Apple and Sharp build the “Newton” PDA Microsoft and NBC formed MSNBC TI’s development of Digital Signal Processing Chips

Uncertainty & Risk Management in Tech-based Industries Technological uncertainty Selection process for standards and dominant designs emerge is complex and difficult to predict, e.g. future of 3G Sources of uncertainty Market uncertainty Customer acceptance and adoption rates of innovations notoriously difficult to predict, e.g. PC, Xerox copier, Walkman Strategies for managing risk Flexibilility Cooperating with lead users early identification of customer requirements

–

assistance in new product development —keep options open —use speed of response to adapt quickly to new information —learn from mistakes Limiting risk exposure —avoid major capital commitments (e.g. lease don’t buy) —outsource —alliances to access other firms’ resources & capabilities —keep debt low

RISKS

Innovation risk

COSTS

RESEARCH DEVELOPMENT COMMERCIALISATION

Mortality of New Product Ideas

The “ Right” Innovative Product?

 The right product is one that becomes available at the right time (i.e., when the market needs it), and is better and/or less expensive that its competition.

 To have the right product, therefore, one must:  Predict a market need  Envisage a product whose performance and capability will meet that need  Develop the product to the appropriate time scale and produce it.

 Sell the product at the right price

Innovation and Competitive Advantage

Difficult for competitors to imitate Commercially exploitable with present capabilities Provides significant value to customers

Competitive Advantage

Timely

Strategic Entrepreneurship and Innovation

• Entrepreneurship is concerned with: – The discovery of profitable opportunities – The exploitation of profitable opportunities • Firms that encourage entrepreneurship are: – Risk takers – Committed to innovation – Proactive in creating opportunities rather than waiting to respond to opportunities created by others

Entrepreneurship

Creativity

is at the heart of entrepreneurship, enabling entirely new ways of thinking and working. Entrepreneurs

identify opportunities

, large or small, that no one else has noticed. Good entrepreneurs also have

the ability to apply that creativity

—they can effectively marshal resources to a single end. They have

drive

—a fervent belief in their ability to change the way things are done, and the force of will and the passion to achieve success. They

have a focus on creating value

—they want to do things

better, faster, cheaper.

And they

take risks

—breaking rules, cutting across accepted boundaries, and going against the status quo.

Entrepreneurship

Defining entrepreneurship is difficult because there is no universal, clear-cut definition of the term. In its most basic sense, entrepreneurship is manifest in a business venture when an individual is able to turn a novel idea into a profitable reality . In practice, however, entrepreneurship is more multifaceted, ranging from operating a small business in one’s own home, to bringing a national franchise to a small town, to turning a new and unique idea into a high-growth company. Entrepreneurship can involve starting a business that brings a new store to main street, offering a product or service previously unavailable to a community, or acquiring an existing business that has had a long-standing presence in a community and helping it evolve to reflect one’s own vision and personality.

Entrepreneurship

The word entrepreneurship literally means, "to take or carry between" in the sense of an economic transaction; to be a market-maker. It does not literally convey the notion of innovation that we commonly associate with the term. Joseph Schumpeter (1883-1950), one of the more well known theorists on entrepreneurship, defined an entrepreneur as one who reorganizes economic activity in an innovative and valuable way . That is, an entrepreneur is one who engages in a new economic activity that was previously unknown. An entrepreneur is a risk taker because being innovative means there are few rules or history for guidance.

Entrepreneurship

Entrepreneurship

is the process of creating or seizing an opportunity, and pursuing it regardless of the resources currently controlled. The Webster’s Third New International Dictionary defines an entrepreneur to be “one who organizes, owns, manages, and assumes the risks of a business”

Entrepreneurship

The entrepreneur shifts

resources

out of an area of lower and into an area of higher productivity and greater yield.

[J. B. Say, French economist, circa 1800] Entrepreneurship is

creative destruction

. Dynamic disequilibrium brought on by the innovating entrepreneur, rather than equilibrium and optimization, is the norm of a healthy economy and the central reality of economic theory and practice. [Joseph Schumpeter, Austrian economist, 1911] The entrepreneur searches for change, responds to it, and exploits it as an

opportunity

. Innovation is the specific tool of entrepreneurs, the means by which they exploit change as an opportunity for a different business or a different service [Peter Drucker, 1985]

Entrepreneurship

Entrepreneurship

drives innovation , competitiveness, job creation and economic growth . It allows new/innovative ideas to turn into successful ventures in high-tech sectors and/or can unlock the personal potential of disadvantaged people to create jobs for themselves and find a better place in society.

Entrepreneurship

Entrepreneurship

, in small business or large, focuses on "what may be" or "what can be" . One is practicing entrepreneurship by looking for what is needed, what is missing, what is changing, and what consumers will buy during the coming years.

Entrepreneurship

Entrepreneurs have: – A

passion

for what they do – The

creativity

and

ability

to innovate – A sense of

independence

and

self- reliance

– (Usually) a high level of

self confidence

– A

willingness

and

capability

(though not necessarily capacity or preference) for

taking risks

Entrepreneurship

Entrepreneurs do not (usually) have: – A tolerance for organizational bureaucracies – A penchant for following rules – A structured approach to developing and implementing ideas – The foresight to plan a course of action once the idea is implemented and established

Entrepreneurial Success

1. People (Entrepreneur /Entrepreneurial Team) 2. Opportunity (Marriage of Market and Product/Service) 3. Access to Resources (Land. Labor, Capital, Knowledge ) And the fit amongst these three elements

Major factors determining success of a new product in the market

• The product provides

functional advantages

• Lower price for comparable product • More attractive

design (look)

• Reputation of retail shops

brand

• Easy access: Available in the main •

Consistent

product quality • Excellent after-sales services

Competitive Advantage

Criteria…

Low cost producer Product differentiation Niche market

Need two processes: NPD and NB(usiness)D

Breakthrough Innovation

An opportunity driven path to market a different business design

New Product Development

Innovative New Products

New Business Development

New Businesses

Protection of IP

Value adding Ideas Research Confidentiality or Nondisclosure Agreements (Trade Secrets) Collaborative Research Agreement Technologies Utility models, Patents

Products

Technology Licensing Agreement, Branding

Intellectual Property Questions

Intellectual Property (IP) Issues/questions during New Product Development (NPD): Can the innovation be legally protected? For how long? How does one protect an innovation from imitators? How much will it cost? When to protect? Do you need to rely on an IP expert?

The answers are complicated by the fact that one or more types of legal frameworks may be used to protect a particular innovation, product, process, or creative work. These include trade secrets, trademarks, designs, patents, and copyright . It is necessary to know which are applicable and when each is appropriate. This varies somewhat from jurisdiction to jurisdiction. The advice of a lawyer that specializes in these matters is essential

Intellectual Property Questions

•It is necessary to know which types of intellectual property rights (IPRs) are applicable and when is each type of IPR appropriate. This varies somewhat from one country to another. •The advice of an IP lawyer is desirable if not essential.

Background

• In September 2000, the WIPO Assemblies approved the creation of “a substantial new program of activities, focusing on the IP-related needs of SMEs worldwide” • SMEs Division established in October 2000 • Nine professionals and three administrative staff in the SMEs Division of WIPO

Strategy

• • • • • •

1. Demystification 2. New audience 3. New Areas 4. Proactive 5. E-Services 6. Partnership

(1) Demystification

• • •

Studies Guides Events and expert missions

• • •

Website and newsletter CD-ROM Magazine articles

(1) Demystification (Studies)

•

National Studies

(on IP and SMEs) completed or under way in Argentina, Bhutan, Mongolia, Nepal, Philippines, Sri Lanka, Tanzania, Sierra Leone, Romania, Chile, Colombia, Costa Rica, El Salvador, Honduras and Paraguay, Egypt, Morocco, Lebanon • WIPO Survey of IP Services to Tenants of European Technology Incubators • Norwegian SMEs and the IPR system

(1) Demystification (Guides)

• WIPO/ITC Guide on Marketing of Crafts and Visual Arts; Role of Intellectual Property; A practical guide • WIPO/ITC Guide on Secrets of Intellectual Property: Guide for Small and Medium Sized Exporters • WIPO/ITC Guide on Exchanging Value : Negotiating Technology Licensing Agreements - A Training Manual • ITC Guide on Exporting Automotive Components • ITC Guide on Pharmaceutical SMEs (Forthcoming)

IP for Business Series

• Making a Mark (Trademarks) • Looking Good (Designs) • Inventing the Future (Patents) • Creative Expression (Copyright and Related Rights)

(1) Demystification (Guides)

•

Translation and/or customization :

Under way, with funding from several sources, in the following countries:

Algeria, Argentina, Australia, Canada, Czech Republic, Egypt, Estonia, Hungary, Italy, India, Israel, Kenya, Lebanon, Malaysia, Malta, Mongolia, Morocco, New Zealand, Philippines, Poland, Slovakia, Spain, Tanzania, Tunisia, Vietnam

• 16 Countries members of the OAPI

(1) Demystification (Events)

•

Special programs, seminar and workshops organized by the SMEs Division in Geneva in partnership with selected associations and organizations (IASP, INSME, IPI, MOST, WASME)

•

Annual WIPO Forum on IP and SMEs for IP Offices of OECD Countries

(1) Demystification (Events)

• •

WIPO-Italy Forum on Textile and Clothing Industries of the Mediterranean Basin Countries (Prato, Italy December 2003) Participants from Algeria, Cyprus, Egypt, Jordan, Israel, Lebanon, Malta, Morocco, Palestine, Syria, Tunisia, Turkey

(1) Demystification (Website)

• • •

The Website of the SMEs Division is in six UN languages (English, French, Spanish, Arabic, Russian and Chinese) More than 100,000 pages viewed every month in 2006 Contents include sections such as IP for Business, IP and E-Commerce, Activities, Best Practices, Case Studies and Documents

SMEs Website

(1) Demystification (Newsletter)

• • • •

Monthly e-newsletter in the 6 UN languages (Free) Content includes articles, updates with information, links and documents Launched in August 2001 Total number of subscribers: >25,000

(1) Demystification (CD-ROM)

•

50,000 copies of the SMEs Division CD-ROM distributed to SME support institutions, IP Offices and others worldwide

• •

Marketing and customization E-learning CD ROM (in partnership with KIPO: “IP Panorama” )

•

SAARC CD-ROM (in preparation)

(1) Demystification (Articles)

•

Some articles recently published:

–

What to do if you are accused of copyright infringement

– –

Tapping into Patent Information: a buried treasure International trade in technology – licensing of know how and trade secrets

– – –

Intellectual Property and E-commerce: how to take care of your business’ website Offshore outsourcing and IP Savvy marketing: merchandising of IP rights

(2) New Audience

• • • •

Bringing IP issues to SME events Bringing new business perspective to IP events New partnership: Open door policy IGOs, government focal points, SME support, training and financial institutions, chambers of commerce and industry, SME associations, SME research institutions, private sector institutions, universities, etc...

(3) New Areas

• • • • • •

IP for financing (venture capital, securitization) Accounting and valuation of IP assets IP Asset Management, IP Due Diligence and IP Audit Fiscal policies and IP (tax incentives for R&D activities, patenting, licensing etc.) IP services to SMEs by incubators, technology parks, chambers of commerce and SME associations IP needs of SMEs in agriculture, biotechnology, handicrafts, software, textiles, etc

(4) Being Proactive

•

Original Content

•

Links

•

Best Practices

•

Case Studies

(5) E-Services

• • • • •

Web site content SME mail E-mail newsletter Distance learning (proposed) Discussion forum (proposed)

(6) Partnership

• • • • • • • • •

National and Regional IP Offices National SME focal points in government, private sector Chambers of Commerce and Industry SME Associations; Cooperatives Incubators, Science Parks, Technology Parks Universities; R & D Institutes Private Sector Consultants SME Finance Institutions (including venture capitalists) Other UN Agencies (ITC, ILO, UNIDO , AfDB, UN Regional Commissions)

Bringing it All Together Example No. 1

• Decades ago, Coca-Cola decided to keep its soft drink formula a secret • The formula is only know to a few people within the company • Kept 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

Bringing it All Together Example No. 2

•

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

Bringing it All Together Example No. 3

• • • •

Patent

for the fountain pen that could store ink

Utility Model

for the grip and pipette for injection of ink

Industrial Design:

smart design with the grip in the shape of an arrow

Trademark

: provided on the product and the packaging to distinguish it from other pens Source: Japanese Patent Office

Bringing it All Together Example No. 4 ® Registered Trade Mark

‘TM’ Unregistered Registered Design

Copyright: Labels & Artwork Patents: Several dozen!

Bringing it All Together Example No. 5

:

Personal Computer

• Patent protection for the innovative functional features of the computer • Trademark protection for the brand name that goes on the box • Copyright protection for the software that runs inside • Trade secret protection for the semiconductor processing techniques used to create the processor

• • • • • • • • • • • •

IP TRIGGERS

Starting up, investing in, buying or selling a business Selecting a name or logo for a product, service, or company Developing a new product or service (biotechnology, software, devices, and instruments) Improving an existing product or service Applying for a government grant Entering into a government, academic, or corporate collaboration Bringing on a key employee or contractor for design, research, or development work Providing business or technical information to suppliers, customers, partners or investors Launching a major sales effort or marketing initiative Maintaining or expanding a customer list Searching for advantages in a competitive market Setting up a website for your business

Key Message 1

IP adds value at every stage of the value chain from creative/innovative idea to putting a new, better, and cheaper, product/service on the market: Patents / Utility Models/Trade secrets Patents / Utility models Invention Literary / artistic creation Financing Industrial Designs/ Trademarks/GIs Trademarks/ GIs Ind. Designs/Patents/Copyright All IP Rights Commercialization Marketing Product Design Exporting Licensing Copyright/Related Rights All IP Rights

Key Message 2

• IP Strategy should be an integral part of the overall business strategy of an Enterprise • The IP strategy of an Enterprise is influenced by its creative/innovative capacity, financial resources, field of technology, competitive environment, etc.

• BUT:

Ignoring the IP system altogether is in itself an IP strategy, which may eventually prove very costly or even fatal

Key Message 3 (More for Less)

• Own Use • Licensing • Franchising • Merchandising (Mickey Mouse, Hello Kitty)

Key Questions

– – – – –

What are the IP assets of a business?

Status of the company’s IP Portfolio?

How important are IP assets to the business?

How does the company protect its IP assets?

– – –

How does the company protect itself from the IP assets of others?

What is the company’s IP policy and strategy? Is the Company’s business strategy and IP strategy aligned ?

Is the company getting the best value out of its IP assets?

Hierarchy of IP Value

Biz Strategy Driver Deliver Revenue Build Markets and Relationships Design Freedom Manage Competition Protecting Inventions

Stage 1: IP Health Check

 Identification/Documentation/Product review: • patents, trademarks, copyright • technical specifications, manufacturing and design documents • benefits statements, product descriptions, marketing statements  IP Management: • process • capture, registration

Stage 2: IP Consolidation

IP Protection: • IP Gap/Risk Analysis • includes DRM focus IP Management: •IP Register (Build/Refresh) •IP Management Process

“Like financial management, IP management must be disciplined and process rich to be effective”

Stage 3: IP Management

 IP Register  IP Management Process  IP as an Asset – Culture  Resultant IP – IP Capture process/tools  “The interaction between a company’s IP and the IP of others (eg key suppliers of operating software, infrastructure and services) in our increasingly interconnected world is a rich source of resultant, and ultimately valuable, IP”

Stage 4: IP Commercialisation

 ‘To Market’ advantage for your valuable resultant IP  An IP lifecycle management advantage  New or enhanced IP revenue streams  Constantly refresh and extract from your IP repository  IP ROI  “Uncaptured, unidentified and/or ill-managed IP cannot contribute to the overall IP ROI businesses must aspire to realise”

IP Management Tips

• • • • • • Integrated management of all IP

Allocate responsibility

– Inside and outside

Conduct research Create, maintain, and enforce rights Careful timing of decisions

– Timely filings – Budget planning for expensive actions

Avoid liability and ownership disputes

– IP owners – Customers – Collaborators

IP Management

• Legal • Accounting • Technical • Tax • Business • Insurance • Export • Security • Financial • Automation • Relationships • Personnel

An Aspect of Good Management

• People Management – • Knowledge Management – • IT Strategic Planning – • Contract Management – in context of a contract (eg, • Asset Management – • Risk Management – because IP is generated by people and used by people because a lot of knowledge is informal and may or may not crystallise as recognisable category of IP because a lot of IP is IT-related; some of the more complex IP issues arise in IT context because IP is often created (or improved) supply contract or joint venture relationship) because IP is an asset, albeit intangible; it has a value because there are risks to an organisation flowing from its actions, or failure to act, in relation to IP (including risk of lost opportunity) with permission of P Crisp, AGS, 2003

Thank You

Guriqbal Singh Jaiya [email protected]

www.wipo.int/sme/en/index.html

www.wipo.org