An Overview of National and International Intellectual Property

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					   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)
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,
                          Milestones : 1883 to 2006
                                                                   1970          Madrid Protocol

                                                            1970          PCT

                                                                   WIPO established
                                                            WIPO Convention

                                  1925           BIRPI moves to Geneva

                                          Hague Agreement

              1891           BIRPI
       1886            Madrid Agreement

1883           Berne Convention

       Paris Convention
           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
          Public Sector & Policy-Makers

    Building awareness                 Property

General Public, Private Sector & Civil Society
           WIPO’s Activities

Services                          Norm-
 to                               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

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.
       Implementation of WCT/WPPT
       (major step forward in updating CR at international
        Build consensus on topical issues
          NORM SETTING

       rademarks, Designs, Geographical
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
  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
• Promotion of Creativity and Innovation
• 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

• 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.
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
160000                                         PCT

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
      - WIPO Trademark Database Portal

                        Member States
                        PCT System
                        Madrid Sytem
                        Hague System

Total: 531 M CHF
      From Invention to
While invention depends
upon creativity,
successful technological
innovation requires
integrating new knowledge
with multiple business
  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
     •   Competitive position

     •   Market judgement

     •   Technical performance

     •   Manufacturing expertise

     •   Financial resources
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 Product New Product
   Old        Market        Product
  Market    Penetration   Development

  New        Market          Product
 Market    Development    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

                                                 IM ITATION

                                Supply side

            Invention   Innovation   Diffusion

                              Demand side
      Innovation Process

Invention    • The adoption of an
               innovation by similar
             • Usually leads to
               product or process
             • Products based on
 Imitation     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
          The Innovation Process
        Translation of a Creative Idea into
               Useful Application

 Analytical       Organizing     Implementation       Commercial
 Planning         Resources                           Application
                              To             To Provide:
               To Obtain:
To Identify:                  Accomplish: Value to Customers
Product                       Organization Rewards to Employee
Design                        Product Design Revenue to Investors
Market         Human Resources
               Capital        Manufacturing Satisfaction of
Strategy                      Services       Founders
        The Profitability of Innovation

                Value of an     • Legal protection
  Profits                       • Complementary
   from                           resources
                 Innovator’s    • Ease of imitation
                   ability to         of technology
                value from an   • Lead time
       Appropriating Value from Innovation
Barriers to Integration
   Different Time                          Time to
      Orientation             Cross-
   Different Goal                                          Value
     Orientation            Functional                  Appropriation
    Formality of           Integration/    Product          from
      Structure           Design Teams     Quality       Innovation

    Facilitators of
     Integration                          Creation of
   Shared Values                          Customer
   Leaders’ Vision                          Value
   Budget Allocation
        Product Life Cycle



Sales                   Growth


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

   Take up Rate

                    Adopters         Early      Late
                                    Majority   Majority         Laggards

                  Innovators:       venturesome; greatest need
                  Early adopters:   opinion leaders; needs driven
                  Early majority:   deliberate
                  Late majority:    skeptics
                  Laggards:         traditionalists; suspicious
New Business Models Emerge
     Then…                     Now…

                       CRO’s                  CRM’s

       Product                  Development

                      Tool                    Testing
                    Companies                 Services

   One Integrated       Many Distributed
     Company              Companies
New Regional Model Emerge
           Then…                                       Now…
                                                                         Region D
                                            Region A
                                                       Region B
                                                                  Region C
                                                                             Region G

                                            Region E        Region F

      Self-contained                           Specialized,
     regional clusters                      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                           Service
       Marketing                     technologies

                   Other    Other

Bargaining power of owners of complementary
resources depends upon whether complementary
resources are generic or specialized.
            Alternative Strategies for Exploiting Innovation

                                Outsourcing          Strategic         Joint           Internal
             Licensing            certain            Alliance         Venture       Commercialization

                              Limits                 Benefits of    Shares          Biggest risks &
            Small risk, but
                              investment, but        flexibility;   investment &    benefits.
  Risk &    limited returns
                              dependence on          risks of       risk. Risk of   Allows complete
  Return    also (unless
                              suppliers &            informal       partner         control
            patent position
            very strong       partners               structure      conflict &
                                                                    culture clash

            Few               Allows outside     Permits pooling of the
                              resources &        resources/capabilities of          Substantial
                              capabilities       more than one firm                 resource
                              To be accessed                                        requirements

            Konica            Pixar’s movies (e.g.    Apple and      Microsoft      TI’s
Examples    licensing its     “Toy Story”)            Sharp build    and NBC        development of
            digital           marketed &              the            formed         Digital Signal
            camera to         distributed by          “Newton”       MSNBC          Processing
            HP                Disney.                 PDA                           Chips
          Uncertainty & Risk Management in Tech-based Industries

                                           Selection process for standards and
                       Technological       dominant designs emerge is complex
                        uncertainty        and difficult to predict, e.g. future of 3G
 Sources of
 uncertainty              Market           Customer acceptance and adoption rates
                        uncertainty        of innovations notoriously difficult to
                                           predict, e.g. PC, Xerox copier, Walkman

                       Cooperating with lead users
                       early identification of customer requirements
                             –assistance in new product development

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

    RISKS                      COSTS

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

 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
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
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.
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.
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 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”
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 drives innovation,
competitiveness, job creation and economic
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, 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
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
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
2. Opportunity (Marriage of Market and
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
   • Lower price for comparable
   • More attractive design (look)
   • Reputation of brand
   • Easy access: Available in the main
     retail shops
   • Consistent product quality
   • Excellent after-sales services
Competitive Advantage

     Low cost producer

    Product differentiation

       Niche market
Need two                       An opportunity
processes:      Breakthrough   driven path to
NPD and                           market-
                 Innovation      a different
                               business design

  New Product
                        New Business

 Innovative                New
New Products             Businesses
      Protection of IP
Value adding               Confidentiality or Nondisclosure
                  Ideas    Agreements (Trade Secrets)

                                 Collaborative Research
                Research         Agreement

                                       Utility models, Patents
                                              Technology Licensing
               Products                       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
  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
   •The advice of an IP lawyer is
   desirable if not essential.
• 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
•   1.   Demystification
•   2.   New audience
•   3.   New Areas
•   4.   Proactive
•   5.   E-Services
•   6.   Partnership
(1) Demystification
    • Studies
    • Guides
    • Events and expert
    • Website and
    • 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,
• 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
• 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
• Looking Good
• Inventing the
  Future (Patents)
• Creative
  (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,
• 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
 • 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
• 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
• 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
• 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
• 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
• 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
         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
• Trade secret protection for the semiconductor
  processing techniques used to create the
               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
• 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 /                                                           Trademarks/ GIs
Utility Models/Trade secrets                                          Ind. Designs/Patents/Copyright
                                                                                                       All IP Rights
                                  Patents /     Industrial Designs/
                               Utility models    Trademarks/GIs
                               Financing          Product Design                                        Exporting

  Literary / artistic                                                          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
– 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

          Deliver Revenue

                                     Potential Return
   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
   • benefits statements, product descriptions, marketing

 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
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
     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 –             because IP is generated by people and
                                                         used by people
                     •   Knowledge Management –          because a lot of knowledge is informal
                                                         and may or may not crystallise as
                                                         recognisable category of IP
                     •   IT Strategic Planning –         because a lot of IP is IT-related; some
                                                         of the more complex IP issues arise in
                                                         IT context
                     •   Contract Management –           because IP is often created (or improved)
                         in context of a contract (eg,   supply contract or joint venture
                     •   Asset Management –              because IP is an asset, albeit intangible;
                                                         it has a value
                     •   Risk Management –               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

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