Technology Policy and Management Course 38E00100 ... · Technology Policy and Management Course 38E00100 "Immaterial Property Rights", Spring ... combining the KONE ... potential

© Marketing & Business ServicesOlli Ilmarinen

IP System

1

Helsinki School of EconomicsTechnology Policy and Management Course 38E00100"Immaterial Property Rights", Spring 2008, 1st Period

IMMATERIAL PROPERTY SYSTEM 23 January 2008

WELCOME !Olli Ilmarinen, Product Manager, M.Sc. (Business Administration)National Board of Patents and Registration (NBPR)


IP System

2

CONTENTS:1. National Board of Patents and Registration in brief2. Intellectual Property Rights

- Forms of protection: formal and informal- Patents as source of information

3. Business implications- IPR Strategy- Case Examples- Exercise

4. Summary


IP System

3

1. National Board of Patents and Registration (NBPR) in Brief


IP System

4

www.prh.fi


IP System

5

NBPR’s mission is:

to advance technological and economic progress

by supporting creativity, entrepreneurshipand cooperation within industrial networks

resulting in improved competitiveness of Finnish industries


IP System

6

NBPR maintains a wide network of international contacts. Our main co-operation partners comprise:

• the World Intellectual Property Organization(WIPO)

• the European Patent Organization (EPO) • the Office for Harmonization in the Internal Market

(trademarks and designs) (OHIM )• the Industrial Property Offices in Denmark,

Estonia, Iceland, Norway and Sweden

More information can be found in English at http://www.prh.fi/en.html


IP System

7

REGIONALISED NBPRREGIONALISED NBPR

Local Register Office

Innovation Agents (15)

Enterprise AgencyEnterprise Agency Service PointChamber of CommerceInnovation Agentsat University (12)

InnoFinland regions

Employment and EconomicDevelopment Centre


IP System

8

2. Intellectual Property Rights• Forms of protection - formal and

informal protection• Patents as source of information


IP System

9

Intellectual Property RightsCopyright Industrial Property Rights

Written works

Audiovisual works

Pieces of art

Trade names

Patents

Utility models

Trademarks

Protection of designs

IPR: Intellectual Property RightsImmaterial Property Rights(Industrial Property Rights)

Software

”IPRs” consist of


IP System

10

Industrial Property Rights:Protects Valid for

Patent Product, equipment or method 20 years (in same cases 25 years)

Utility Model Product or equipment 10 years (4+4+2)

Trademark Means to differentiate in a market Permanent, to be renewedevery 10 years

Protection of Designs Shape of product 25 years (5+5+5+5+5)

Trade Name Business (company) name Permanent (for operational business)

Tool


IP System

11Turning an idea into a product

in the market

Trade Name

Patent

Utility Model

Trademark

Protection of Design

Industrial Property Rights aretools to create competitive edge!

InventionsEstablishment of a company

R & DProduct Development

Marketing Market research

• IPRs protect innovations• IPRs support product development• IPRs empower marketing


IP System

12

• Gives a company an effective competitive tool by giving an EXCLUSIVE RIGHT to utilise the protected solution commercially

• Every operating business owns Industrial PropertyRights – its trade (company) name if nothing else

• Industrial Property Rights should be used to:• protect the results of product development• protect unique competence and know-how

Industrial Property Rights


IP System

13

Other Intellectual Rights:Protects Valid forRight

Copyright

Trade secret

Work (written, audiovisual, piece of art)

Lifetime + 70 years

Information, which hascommercial significance

Until becomes public


IP System

14

1. FormalFormal ProtectionProtection (regulated by authorities)PatentsUtility modelsTrademarksProtection of DesignsTrade names

2.2. InformalInformal ProtectionProtectionContracts (partners, customers, employees)

NDAs (non-disclosure agreements: companies, individuals)

Copyright - NOTE: copyright applies to software (code) in EU

Trade secrets (confidentiality)

Formal vs. Informal Protection?


IP System

15

Methods of Protection:Patents

TrademarksDesigns

NDAsContracts

Protection of Databasesand Networks

Protection of TechnologyShort Innovation Cycles Work Deployment

Partner ManagementSharing of Information

Engagement of PersonnelCommitment by PartnersCustomer Relationships

INFORMAL

FORMAL


IP System

16

What is required in order to patent?1. Inventiveness (must involve an inventive step)2. Novelty (it has to be a unpublished invention)3. Industrial applicability (Industrial applicability is

understood in a broad sense - besides conventionalindustry, it includes the methods and devices needed in commerce, building industry, farming, forestry, gardening, fishing, handicrafts etc.)

= You can patent a device, a product, a process for making a product, or a new use for a previouslyexisting product (= only the ”embodiments” of ideas, notsolely an idea as such).


IP System

17

Benefits of formal protection: - why a ”patent” was developed?

1. To maintain and develop technical data ”Development build on development”

2. To publish inventions and new technology to wider audience (globally)

3. To define the invention and specifythe ownership of the property right

4. To stimulate product development


IP System

18

Patent is public document• Patent is periodical and territorial exclusive right

to utilise an invention commercially= patent has to be renewed (and is valid max. 20 (25) years)= effective only in those countries it has been validated

• Inventor is granted this exclusive right by makingpublic the invention (i.e. the technical solution)

• Once the invention becomes public it cannot bepatented again (since there is no ”novelty” anymore)


IP System

19

• Patents are public source of information - also for companies who themselves are not involved in patenting

• Each year, over a million new patent documents arepublished in several languages in over 100 countries

• In total, there are over 50 million patent documents, devided into 70 000 patent classes.

• Patent documents are the largest single source of technical infomation in the world

• 4 million of the patents are valid (=exclusive right of the patent holder), i.e. the rest 46 million are free for use

• 80-90 % of the innovations described in patents will notbe published anywhere else

Patent documents


IP System

20

Patent information

Industrially viable solutionsExtensive global coverage


IP System

21

Example: number of patentpublications related to hand-held & machine tools by the end of 1990’s

Patentti FI871687

• Worldwide 252 430 • Japan 90 032 • USA 30 754 • Germany 32 727• UK 3 255 • Sweden 1 592 • Finland 477


IP System

22

Patent databasesesp@cenet at http://www.espacenet.comGolbal patent information (incl. specifications)on Internet, user interface in multiple languages

PatInfo register (in Finnish) Basic information on Finnish patent applications,patents and utility models

FI-EP registerBasic information on European patents in force in Finland

HYMAnetti (Utility model register)Basic information on claim and picture pertainingto each utility model registered in Finland


IP System

23

fi.espacenet.comfi.espacenet.com


IP System

24

fi.espacenet.comfi.espacenet.com


IP System

25

Sources for preliminary search of information on other formal IPRs:

•• NBPRNBPR’’ss databasedatabase of of trademarkstrademarks www.www.prhprh..fifi•• EU EU trademarkstrademarks www.www.oamioami..eueu..intint•• DomainDomain namesnames www.www.ficoraficora..fifi,, www.www.whoiswhois..comcom•• TradeTrade namesnames www.www.ytjytj..fifi•• FamilyFamily namesnames www.www.vaestorekisterikeskusvaestorekisterikeskus..fifi

•• US US PatentsPatents www.www.googlegoogle..comcom//patentspatents


IP System

26

From an ideainto a product in the market

Trade Name

Patent

Utility Model

Trademark

Protection of Design

Industrial Property Rights are toolsto create competitive edge!

Sources of Competitor Information

Sources of Technical Information

• IPRs protect innovations• IPRs support product development• IPRs empower marketing


IP System

27

R&D inputs (in EU 15):30 30 -- 50 % is 50 % is redundantredundant!!

In Finland this means 1.5 – 2.5 billion euros annually- allocated wrong, spent ineffectively, or totally wasted(overlapping efforts, inventing something that hasalready been invented AND protected by others, ...)

= Allocation of R&D investments can beimproved by the use of patent information !


IP System

28

IP System:

1.1. ProtectionProtection of knowof know--how and how and competencecompetence

2.2. SourceSource of of informationinformation


IP System

29

3. Business implications- IPR Strategy- Case examples- Exercise


IP System

30

Combined Use of IPRs:

Bottle, registered 3D trademark

Cap, patented

Coca Cola,registered trademark ®

Label text,copyright ©

The Coca Cola Company,trade name

IP System

Brand value - Top Ten Brands 2006

0

10

20

30

40

50

60

70

80

Coca C

ola

Micros

oft IBM GE

Intel

Nokia

Toyota

Disney

McDon

alds

Merced

es-B

enz

Value in Billion US$


IP System

32

Business cooperation under license:Decoration of elevator car interiors, combining the KONE Deco™ elevator solutionand Marimekko designs


IP System

33

1. OCCASIONAL• 80-90% of SMEs in Finland !

2. PLANNED• Patent intensive industries

(machine tools, instruments, gadgets etc.)3. STRATEGIC

• Global companies such as Nokia, Kone, Metso, Wärtsilä, Kemira, Outokumpu, Orion, ….

• Biotech and pharmaceutical industries

IPR Strategy Status (2004):


IP System

34Source: NBPR 2006

18 (26)7. Wärtsilä

Numberof appl.

Company

11 (9)10. Beneq12 (6)9. Abloy13 (3)8. Rautaruukki

25 (12)6. Outokumpu Technology26 (30)5. ABB55 (48)4. VTT61 (57)3. Kone Corporation

74 (109)2. Nokia155 (125)1. Metso Corporation

Patent applications in Finland in 2006 (2005)


IP System

35


IP System

36

Can we manage our IPRs?1. Can we monitor potential infringements (violations)

and defend our IPRs? How and by whom?2. How can we find out if there are any obstacles for

our operations and product development - due to others’ IPRs affecting our production, or marketing?

3. How much should we invest into our own IPRs?4. WHO SHOULD TAKE CARE OF THESE?

IPR Strategy at Company Level:


IP System

37

Workbook for Management”Immaterial issues in business”

2st edition, 2006Available as a printed copy, downloadversion (pdf) and html.


IP System

3821.1

Avoidingredundant

R&D?

Monitoringtechnical

development?

Competitors?

Trends?

Markets, surveys

IPRStrategy

EvaluatingR&D project?

ProductdevelopmentPossibilities

to protecttechnology?

Production

Productionmethods?

Technicalsolutions?

Management

Responsibilities?

Implementing?

Protectingpolicy?

FinancingHow to convince

financier?

Risk analysis?

Marketing

Disclosingbusiness critical

information?

Standing outin the market?

Freedomto

operate?

Make or Buy?Licencing?

Partnerships?

How to protectspearhead-technology?

Key technology?

How to defend

infringements?

Intellectualproperty?

Fosteringcompany know-how?

Employers’inventions?

Personnel, resources


IP System

39

CASES


IP System

40

• Company A had invented a new product. After 0-series (”testproduction series”) they found out that their competitor hadalready patents and/or patent applications for the exactlysame product in couple of countries - but not in Finland.

• Because business opportunities were analysed to be good and the product was forecasted to become profitable globally, the company decided to investigate in which countries theircompetitor actually had the patents. They found out that therewas no patents/patent applications in several large markets(i.e.countries) at all. Also, the invention had already becomepublic (no novelty aspect that is required to obtain new patents).

• Therefore Company A was free to market the product in thosecountries where their competitor had no patents in force, being able to make significant profit out of the investment.

CASE 1:


IP System

41

• Company C was accused by another company because of a potential IPR infringement right after the launch of their new papermill production line machinery product.

• Only at this point Company C found out that their new productincluded some components - supplied by their ownsubcontractor - which had been manufactured without properrights, which were owned by Company B, their competitor.

• This infringement would have been fully avoided if the subcontractor had been aware of the patents of theircompetitor and e.g. aqcuired a licence for the technology.

• Even if the Company C did not offend any IPRs on purpose, Company C was held responsible for the infringement, which they know nothing about before it was too late.

CASE 2:


IP System

42

CASE 3:


IP System

43

EXERCISE (in groups of 3-5 persons):

1. Discuss in groups what are:a) Benefits of IPRs and IP systemb) Handicaps / downsides of IPRs

and IP system (if any)2. List your findings and be ready to

present your results


IP System

44

• Speeding up the product development process(time-to-market)

• Avoiding ”re-inventing the wheel” • Protecting one’s unique competence and know-how

(e.g. deciding how to share information in networks)• Finding potential partners and subcontractors

(make-or-buy, licencing)• Finding companies interested in licencing

(partners, marketing channels)• Differentiating the products• Technical (technology) and competitor surveillance• Avoiding infringements (i.e. violating others’ rights)

Benefits 1: Managing business risks and increasing competitiveness by:


IP System

45

• Clarifying how the outputs of the R&D projectwill be protected

• Analysing the environment, technology and knowing of existing IPRs – in advance

• Protecting the technology, desing, brandand/or other IPRs (to be developed)

• Supporting technology transfer, technology & knowledge sharing and innovation networks

Benefits 2: Increasing investors’ interest by:


IP System

46

1.1. ItIt takestakes tootoo muchmuch money to money to getget a a patentpatent??• Compare short-term ”losses” to long-term profits• A patent is an investment into the future!

2.2. ItIt takestakes tootoo muchmuch timetime to to getget a a patentpatent??• Compare short-term wins to long-term profits

(e.g. being able to licence the patented technology)• Start early enough (e.g. to keep the market-window)

3.3. ItIt takestakes tootoo muchmuch efforteffort to to getget a a patentpatent??• Consider using expert services

(NBPR, patent offices, patent agents, etc.)

Some potential downsides of patents:


IP System

47

4. YouYou dodo notnot wantwant to to publishpublish the the inventioninvention• OK, if you can really keep it secret• In this case, you should still use other forms of

protection - contracts, NDAs,…

5.5. OurOur inventioninvention is is notnot ””inventionalinventional”” enoughenough??• You have to find this out - as a fact• You may consider utility model option instead

Some potential downsides:


IP System

48

5. Summary


IP System

49

• Over 80 % of the value creation of the companies is based on human capital !

• This capital should be turned into IPRs, which must be managed and protected- like any other assets of a company.

Why IPRs are important?


IP System

50

Intellectual Property System:

1.1. ProtectionProtection of knowof know--howhow

2.2. SourceSource of of informationinformation

3.3. BackboneBackbone for IPR for IPR StrategyStrategy-- to to developdevelop and and defenddefend IRPsIRPs!!


IP System

51

INNOVATIONINNOVATION--FRIENDLYFRIENDLY

ENVIRONMENTENVIRONMENT

IDEAS, IDEAS, ENTREPRENEURSHIPENTREPRENEURSHIP

EMPLOYMENTEMPLOYMENT

EFFECTIVENESS, EFFECTIVENESS, COMPETITIVENESSCOMPETITIVENESS, ,

GROWTHGROWTH

FinnishInnovation

SystemFosteringCreativity

5

IP System at National Level


IP System

52

NBPR’s Business Serviceshttp://palveluverkko.prh.fi/

Esp@cenet (International patent database)

Immateriaaliasioiden huomioiminen liiketoiminnassa• Johdon työkirja

Tehoa tuotekehitykseen • Patenttitiedon hyödyntäminen teknisen ja kilpailijatiedon lähteenä

Tavaramerkkiopas

PRH-ostoskoripalvelut


IP System

53

THANK YOU !For more information, visit our website at http://www.prh.fior contact:

Olli IlmarinenTel. +358 9 6939 5236Email: [email protected]

Documents

Technology Policy and Management Course 38E00100 ... · Technology Policy and Management Course 38E00100 "Immaterial Property Rights", Spring ... combining the KONE ... potential