5. Intellectual Property: what?
Invention
Name, logo, symbol
Design, model
Literary work
To be or not to be protected
Intellectual Property Rights
6. The entrepreneurial process
Source: UK Intellectual Property Office
Evaluating the potential of the idea
or new technology
8. 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
9. In other words...
1/3 is re-inventing the wheel
Know market & competition
Freedom to operate
Ownership R&D results
Source: „Seven deadly sins of the inventor‟ - EPO
Protect creativity
ROI² (return on innovation investment)
11. 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
13. 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
14. 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
15. 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 Align the whole system of activities in
with strategic choice of differentiation pursuit of differentiation and low cost
or low cost
17. 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
22. 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
23. F/OSS: freedom to copy, modify, distribute
Free Software Foundation Apache Software Foundation
GPL, (LGPL), AGPL ASL
Most famous example: Most famous example:
GNU OS with Linux Kernel: aka Linux Apache webserver
Typical for FSF licenses: Typical for ASL licenses:
Strong copyleft, “viral” effect Milder copyleft, no “viral” effect
Other well-known OS licences: University OS licenses:
MPL (Mozilla) MIT (Massachusetts)
EPL (Eclipse) BSD (Berkeley)
Both weak copyleft Very liberal, no copyleft
Learn more about open source?
Open Source Initiative: www.opensource.org
24. F/OSS: difficulties?
White zone
Code of which IP is 100% clear
Gray zone
Code contributed by others
Black zone
Code for which
no license or authorization
26. Patents & standards
Commonalities Potential conflicts
Encourage investment in Implementing standards using patented technology
innovation - R&D -Interoperability (essential patents)
-Multiple patents and patent owners
Disclosure of technical International standards different national patent
information regimes (geopolitics)
Dissemination of technology
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
27. Copyright
Protects the expression of idea, not idea itself
No registration required
Fixation
Originality
Duration (+70 or 50yrs)
28. Trade secret
Source code !
Copies of object code can be sold
Reverse engineering using decompilers
No protection against piracy of object code
32. 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
33. 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‟!
34. 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
35. 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
36. 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
37. Some examples from the field
Blackberry case
http://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
38. 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
40. 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