ip essentials
TRANSCRIPT
IPR Workshop
January 12th, 2010
Outline
09:30 Welcome & Coffee
10:00 IP essentials
12:00 Sandwich lunch
12:45 Testimonial JPEG2000, 1T3XT
13:15 IP search: technical & legal data available
15:15 Coffee break
15:30 Testimonial Siruna, SUMO, Geosparc
16:30 Closing networking reception
Intellectual Property
essentials
IBBTs valorisation toolbox for business
People
People
Knowledge
Knowledge
Business
Intellectual Property: what?
Invention
Name, logo, symbol
Design, model
Literary work
To be or not to be protected
Intellectual Property Rights
The entrepreneurial process
Source: UK Intellectual Property Office
Evaluating the potential of the idea
or new technology
Potential innovation value
Source: www.isopatent.com
The 4 key factors to valuing innovation
Inherent value of the innovation Technology feasible?
Potential profits e.g. estimated market size, product assessment (must
have or nice to have, cost etc...)
Anticipated scope of patent protection The broader, the larger the market, the more valuable the patent and
innovation
No infringement of another‟s patent Freedom to operate? If not, what‟s the alternative?
Sound, analytical business plan Develop and market innovation
Roadmap with timeline/goals to attract investment or business partners
or realize full economic potential
In other words...
1/3 is re-inventing the wheel
Know market & competition
Freedom to operate
Ownership R&D results
Protect creativity
ROI² (return on innovation investment)
Source: „Seven deadly sins of the inventor‟ - EPO
Added value
Technological advance - improvement
Conceptual change
Business asset
Licensing
Cross-licensing
Scientific reputation
Integrate IP in your business model
Start asap, i.e.during idea
generation
IP landscape
state-of-the-art
freedom to operate
market & competition
red sea versus blue ocean strategy
Prior-art search
Number 1: Google !!!
Free patent databases
Non-patent literature
Other...
Freedom to operate
Why? Minimizing risks
Not to be blocked by others
Ensuring that the commercial production, marketing and use of a new
product, process or service does not infringe the IP rights of others
How? Patent search (practical limit: time/money)
Expert services strongly recommended (private/national offices)
Note patent limitations: territorial, limited duration, limits of scope
But „assessment‟, no full proof
Strategies for obtaining freedom to operate
Abandon innovation
Design around, inventing around
Acquire or license in rights on pre-existing patent
Sell or license out innovation
Cross-licensing
Patent pool (essential patents, standardization)
Oppose pre-existing patent application or revoke pre-existing patent
Red sea versus blue ocean strategy
Red sea Blue ocean
Compete in existing market space Create uncontested market space
Beat the competition Make the competition irrelevant
Exploit existing demand Create and capture new demand
Make the value-cost trade-off Break the value-cost trade-off
Align the whole system of activities
with strategic choice of differentiation
or low cost
Align the whole system of activities in
pursuit of differentiation and low cost
Intellectual Property protection
Cost Protection Enforceable Content
Patent high strong yes idea
Copyright © low low yes expression of idea
Trade secret - low - strong ~no / ~yes any
Trademark ® moderate moderate yes name, logo
Design moderate moderate yes drawing
i-Depot low no ~no any
Patent
Protect all instances of a technical invention
Technical solution to a technical problem
Right to exclude others
Exclusive rights against all commercial uses in exchange of mandatory publication
Application – prosecution – litigation
Max. 20 years, grant after ~5 years
First to file, first to invent
Strict criteria:
Novelty, inventive step, industrial applicability
Clarity, sufficiency of disclosure
Patent: inventive step?
Patent process
REPORT THE
INVENTION
TO PATENT
ATTORNEY
PRIOR ART
SEARCH &
PATENTABILITY
STUDY
DRAFTING
PATENT
APPLICATION
CLAIMS
PRIOR ART
EMBODIMENTS
DRAWINGS
FIRST
FILING
PRIORITY
DATE
FURTHER
FILING
PRIORITY
YEAR
© 2008 BiiP
Patent: from filing to grant...
18 MONTHS
20 YEARS
GRANT EXPIRY
PATENT APPLICATION
UNDER EXAMINATIONGRANTED PATENT
PUBLICATION
with SRP
27-JUL-2010
1-5 YRS
PRIORITY
DATE
(first filing)
27-JAN-2009
30 MONTHS
12 MONTHS
PCT REGIONAL PHASE
27-JUL-2011
PRIORITY
YEAR
27-JAN-2010
PCT FILING
SEARCH
REPORT
© 2008 BiiP
EPO patent procedure
Patents for software
CIIs are in principle patentable
Referral to Enlarged Board of Appeal
No patents on trivial inventions
No source code necessary
Patent applications create transparency
Patents secure competitiveness
More information on EPO website:
http://www.epo.org/topics/issues/computer-implemented-
inventions/software.html
F/OSS: freedom to copy, modify, distribute
Free Software Foundation
GPL, (LGPL), AGPL
Most famous example:
GNU OS with Linux Kernel: aka Linux
Typical for FSF licenses:
Strong copyleft, “viral” effect
University OS licenses:
MIT (Massachusetts)
BSD (Berkeley)
Very liberal, no copyleft
Apache Software Foundation
ASL
Most famous example:
Apache webserver
Typical for ASL licenses:
Milder copyleft, no “viral” effect
Other well-known OS licences:
MPL (Mozilla)
EPL (Eclipse)
Both weak copyleft
Learn more about open source?
Open Source Initiative: www.opensource.org
F/OSS: difficulties?
White zoneCode of which IP is 100% clear
Gray zoneCode contributed by others
Black zoneCode for which
no license or authorization
F/OSS: incompatible licenses
Distributing your product
Patents & standards
Monopoly versus free collective use Rights of patent owner to enjoy benefits
Third parties want to make and sell interoperable products corresponding to the
standard
Public (user, consumer…) wants freedom to choose between different products
even after a standardisation
Standardisation authority cannot define a standard that will be blocked
Commonalities Potential conflicts
Encourage investment in
innovation - R&D
Implementing standards using patented technology
-Interoperability (essential patents)
-Multiple patents and patent owners
Disclosure of technical
information
International standards different national patent
regimes (geopolitics)
Dissemination of technology
Copyright
Protects the expression of idea, not idea itself
No registration required
Fixation
Originality
Duration (+70 or 50yrs)
Trade secret
Source code !
Copies of object code can be sold
Reverse engineering using decompilers
No protection against piracy of object code
Respect IP when creating your website
Be aware of the types of IP, especially trademarks and copyrights regarding website development
Guidelines when having someone develop your website
Be cautious about content
Original content, privacy policy
Be smart about promotion
Careful with using competitor‟s name
Be proactive in protecting assets
Use appropriate designations (™, ®, or ©)
Towards the business
IP strategy
Due diligence
Business model - types of business
Business plan
Venture capital
Agreements
Employment
Confidentiality
Licensing
Partnership / co-operation / consortium
Employment Agreement
Ownership of the invention
In general: inventions assigned to employer by contract
≠ inventorship
Non-competition clause, confidentiality clause
In Dutch: concurrentiebeding, confidentialiteitsbeding
Participants in IBBT projects
IBBT payroll „arbeidsovereenkomst‟ Art. 5
University research group „valorisatiereglement‟
Industry partner, company
Seperate assignment for patents or other IP rights
Confidentiality
Careful with disclosures!
Fatal for grant of patent in most countries, before application is filed
Public = could be consulted or known
Use Non-Disclosure Agreement
Careful with opinions on patentability of inventions!
Carefully date, document and save inventions!
Keep strictly confidential and mark „Confidential‟!
Non-Disclosure Agreement
Types
One-way
Two-way
Specific
Use
Whenever technical information has to be disclosed in
closed (controllable) environment
Including when patent application has been filed,
during 18 months temporal secrecy period
Licensing Agreement
Trade secret, know-how, patent
Scope of the license
Exclusive, non-exclusive
Confidentiality
Compensation: royalty rate, royalty payment, lump-sum
Third-party rights, infringement
Results
Liability
Term and termination
Co-operation Agreement
Parties, preambule/recitals, definitions, subject of the
agreement, party‟s obligations, IPR, confidentiality,
(sub)licensing, term and end, force majeure, liability, court,
party‟s signatures
IPR definitions: background, sideground, foreground,
access rights, confidential information, co-ownership
Some examples from the field
Blackberry casehttp://www.wipo.int/export/sites/www/academy/en/ipacademies/educational_materials/cs2_blackberry.pdf
FTO analysis in the field of medical devices
Level3 and IBM cross-licensing agreement
Final notes
Go for it but look before you leap
Careful with inventions Confidential
Do publish but consider trade-off in terms of added value
Appropriate form of protection
Open source integration includes timely documentation
Questions?
Eefje Vandamme
Manager Intellectual Property IBBT
T: +32 9 331 48 25
F: +32 9 331 48 05
M: +32 476 89 62 61
Thank you
References
„Marketing your Invention‟ 3rd Edition, ABA Section of Intellectual Property Law
„Intellectual property rights and entrepreneurship‟, UK Intellectual Property Office
„Why All Small Businesses Need Software Patents‟ by Gene Quinn, IPWatchdog.com
„201 Thoughts to Ignite Innovation‟ by David E. Rogers and Amy L. Hartzer, Isopatent
„New Product Launch: Evaluating Your Freedom to Operate‟ by Esteban Burrone, WIPO
„Freedom to Operate and Risk Management‟ by Concept Foundation, MIHR and PIPRA, ipHandbook of Best Practices: Executive Guide
„Engineering a High-Tech Business – Entrepreneurial Experiences and Insights‟ by José Miguel López-Higuera and Brian Culshaw
„Jeopardizing Patent Rights‟ by Todd A. Taylor and Kara K. Fairburn, ipFrontline
„IP Due Diligence – A necessity, Not a Luxury‟ by Ian Cockburn, WIPO