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

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
OUTLINES
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Using IP to start business activities
Strategy on IP acquisition
Strategy on IP exploitation
Strategy on IP monitoring
Strategy on IP enforcement
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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
Using IP to start business activities
Example: Philippines
Added 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?
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IP audit: What is the current value and /or future potential of the IP
assets?
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How essential are IP assets for the commercial success of the
business?
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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?
Can you sell your product without its trade name?
What competitive advantage do the IP assets provide?
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How the use of your intangible assets will affect your business?
Strategy on IP acquisition
3. 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.
Strategy on IP acquisition
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
Strategy on IP acquisition
3. What to apply for :
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?
Strategy on IP acquisition
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
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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
Strategy on IP acquisition
5. Where to apply: IP rights are territorial rights
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National level:
IP offices of the respective countries and Copyrights Offices.
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Regional:
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European Patent Office
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Office for Harmonization in the Internal Market (for European Community
trademarks and, in the future, industrial designs):
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African Regional Industrial Property Office (ARIPO)
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African Intellectual Property Office (OAPI)
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Eurasian Patent Office (for patent protection in countries of the Community of
Independent States
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Benelux Trademark Office & Benelux Designs Office (for trademark and industrial
design protection in Belgium, the Netherlands and Luxembourg)
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Patent Office of the Cooperation Council for the Arab States of the Gulf (for patents)
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International: WIPO (PCT system , Madrid system, Hague Agreement )
Strategy on IP acquisition
6. When to apply: Timing of application for registration
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Patents for inventions: 12-months priority period from the date of filing
of the first application for applying for patents in other countries.
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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.
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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:
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R&D strategy
Funding strategy
Marketing strategy
Accounting
Technology acquisition
Export/foreign investment strategy
Strategies on IP exploitation
IP 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
Strategies on IP exploitation
IP 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
Strategies on IP exploitation
IP and funding strategy
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.
Strategies on IP exploitation
IP 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”)
Strategies on IP exploitation
IP and accounting
 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.
Strategies on IP exploitation
IP and technology acquisition
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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
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Acquisition of new technologies via licensing of patented technology,
know-how, trade secrets, etc.
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Registration of technology transfer agreements (if appropriate) to obtain
tax benefits
Strategies on IP exploitation
IP and Export/ Foreign investment strategy (1)
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 nondisclosure agreement
 Infringing the IP rights of others
Strategies on IP exploitation
IP and Export/ Foreign investment strategy (2)
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
Strategy on IP Exploitation
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.
Strategies on IP exploitation
IP and Licensing
Industrial Designs licensing
TRAX public seating system
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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
Strategy on IP Exploitation
IP and Licensing: Experience of Ethiopia
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
Strategy on IP Exploitation
IP and Franchising
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 Franchising
Buying a name/reputation, enter in established
markets, technical/management assistance,
standardized procedures, quality standards,
selection of location, facility design…
Strategy on IP Exploitation
IP and Franchising
Some major franchises companies in Nigeria
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
Strategy on IP Exploitation
Example: Arsenal
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.
It’s all about the football!!!
Source: Ronald Crawford – IP and Brand Portfolio manager -WIPO Presentation 2009
Strategy on IP Exploitation
Example: Arsenal
Media
Television
Radio
New media
Mobile
Internet
Sponsorship
Kit
Shirt
Intellectual Property Revenue
LicensingRetail
Trademark Licensing
Retail Stores
Partnerships
Corporate Partners
Retail Partners
Soccer School Partners
Naming Rights
Stadium
Strategy on IP Exploitation 19
Example: Arsenal
 Media
Arsenal
Magazine
Source: Ronald Crawford – IP and Brand Portfolio manager -WIPO Presentation 2009
Strategy on IP Exploitation
Example: Arsenal
 Sponsorship
Official Kit
Sponsor
Official Sponsor
Source: Ronald Crawford – IP and Brand Portfolio manager -WIPO Presentation 2009
Strategy on IP Exploitation
Example: Arsenal
 Licensing-Retail
Branded
Merchandise
Source: Ronald Crawford – IP and Brand Portfolio manager -WIPO Presentation 2009
Strategy on IP Exploitation
Example: Arsenal
 Partnerships
Partnerships
Source: Ronald Crawford – IP and Brand Portfolio manager -WIPO Presentation 2009
Naming Rights
Strategy on IP Exploitation
Example: Arsenal
Technical partnerships
Arsenal 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 partnerships
have included investment in Academies in Vietnam, and Thailand to help
develop local talent
Local media platforms
local websites mobile services and publishing partners - provide
channels to leverage value and target millions of Arsenal fans.
Source: Ronald Crawford – IP and Brand Portfolio manager -WIPO Presentation 2009
Strategy on IP Exploitation
Example: Arsenal
Naming Rights
Source: Ronald Crawford – IP and Brand Portfolio manager -WIPO Presentation 2009
Naming Rights
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Strategy on IP monitoring
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
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Strategy on IP monitoring
Design monitoring
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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Strategy on IP monitoring
Domain names 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 markets
Domain give access to product and branding strategies
Preserve brand integrity and access to information about competitor
bad faith, cyber squatting or other offenses
Track 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
Strategy on IP enforcement
Counterfeiting and Piracy
COUNTERFEITING
PIRACY
infringements of a mark
infringements of copyright or
related rights
Rolex
Nike
Johnnie
Walker
Louis Vuitton
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]