why should you care about intellectual property?
TRANSCRIPT
Why should you care about intellectual property rights?
Azèle Mathieu, PhD
3 February 2015
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Azèle Mathieu
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Business background
• Manager health cluster lifetech.brussels (www.lifetechbrussels.com )
• Financial Advisor @impulse.brussels
• Business Development Manager@Bone Therapeutics
• Business Development Manager@ULB Technology Transfer Office
Academic background
• Professor Technology Transfer (7th year) & Business Planning (3rd year) @ Solvay Brussels School of Economics and Management (SBS-EM), Master & MBA
• PhD in Economics and Management
!!! Protecting your IP does not mean
not sharing your ideas !!!
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Why should you care about IP?
Benefits for you
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• Raise your awareness!
• Spare time
– Think before you act
– Experts, online resources, patent attorneys,…
• Spare money
– “IP is expensive” … but lawsuits are!
– Example
– Public financial incentives
• Consolidate your competitive advantage
– Innovative business model
– Innovative product/service
– …
– IP?
• In some cases, can be a leverage to earn money
Intellectual property & value
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Coca-Cola®
TM: EUR 58.7 Billion
Apple® iPod touch®
> 100 Mio sold over 6 years
Harry Potter Copyright: EUR 681 Mio
Polaroid® instant camera Patents: EUR 692 Mio
DNA copying process Patents: EUR 225 Mio
EPO/OHIM Intellectual Property Teaching Kit - IP Basics
What do you know about Intellectual Property Rights?
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What is Intellectual Property?
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IP is - a collection of - legal and enforceable rights that - provide control of the availability and use of - skills, creativity, resources and technology and - give the owner or his licensee a competitive
advantage. These rights are exclusive to the owner, but also come with some important exceptions.
Agenda
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• Types of IP – Copyright
– Trademark
– Design
– Trade secret
– Patent
• Key resources
Overview of Intellectual Property rights
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Legal rights What for? How?
Patents New inventions Application and
examination
Copyright © Original creative or artistic
forms Exists automatically
upon fixation
Trade marks ™/® Distinctive identification of
the source of a good/service
Use and/or registration
Registered designs
External appearance Registration
Trade secrets Valuable information not
known to the public Reasonable efforts
to keep secret
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Legal rights What for? How?
Patents New inventions Application and
examination
Copyright © Original creative or artistic
forms Exists automatically
upon fixation
Trade marks ™/® Distinctive identification of
the source of a good/service
Use and/or registration
Registered designs
External appearance Registration
Trade secrets Valuable information not
known to the public Reasonable efforts
to keep secret
Overview of Intellectual Property rights
When should you start taking care of your IP?
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Legal rights When
Patents Before any (scientific) publication
Copyright © Ok exists automatically =>
publication
Trade marks ™/® Before marketing your
product/service (e.g. info on the net)
Registered designs Before outsourcing the making of
the object (e.g. Get Well Kit)
Trade secrets Keep it secret… all the time "Information is the lifeblood of the company”
Intellectual Property (1/2)
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• Copyright © – protects creative expression stored in a tangible format
(for example, books, recorded music, paintings, sculptures, films, and software code)
• Trademark ® / TM – Protection of distinguishing assets to help public identify
source of a good/service (for example, brands and logos)
• Design and Industrial Model – Protection of aesthetic visible qualities (for example, the
form and shape of a product)
Intellectual Property (2/2)
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• Patent (patented/patent pending)
– Protection of technical inventions (for example, a product or manufacturing process)
• Trade secret or know how
– Protection of undisclosed know-how (for example, a recipe, technique, process, customer list, business plan)
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What kind of IP Exists in this
iphone?
Some IP found in a mobile phone
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• Trade marks:
– Apple logo
– Product name “iPhone” – Software “iOS”?
• Patents:
– Data-processing methods
– Semiconductor circuits
– Chemical compounds,…
• Copyrights:
– Software code
– Instruction manual
– Ringtone,…
• Trade secrets:
– ?
• Designs (some of them registered):
– Form of the overall phone
– Arrangement of buttons in oval shape
– Three-dimensional wave form of buttons,…
Some IP found in a mobile phone
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• Trade marks:
– Apple logo
– Product name “iPhone” – Software “iOS”?
• Patents:
– Data-processing methods
– Semiconductor circuits
– Chemical compounds,…
• Copyrights:
– Software code
– Instruction manual
– Ringtone,…
• Trade secrets:
– ?
• Designs (some of them registered):
– Form of the overall phone
– Arrangement of buttons in oval shape
– Three-dimensional wave form of buttons,…
Agenda
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• Types of IP – Copyright
– Trademark
– Design
– Trade secret
– Patent
• Key resources
Copyright
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Copyright
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• Definition – The exclusive, legally secured right to publish, reproduce and sell the
matter and form of a literary, musical, dramatic or artistic work
• Original works of authorship protected, include: – Literary works (includes computer source code!) – Musical works – Dramatic works – Choreographic works – Pictorial, graphical, sculptural works – Motion pictures – Architectural works
• Example: dictionary (Van Dale)
Copyright
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• Exception/Limitations:
– Limited in duration (though quite long!)
– Ideas vs. Expression
– “Fair use” when being reproduced but no protection for purposes such as criticism, comment, news reporting, teaching, research, further improvements, etc.
– “Private copies”
Agenda
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• Types of IP – Copyright
– Trademark
– Design
– Trade secret
– Patent
• Key resources
Trademarks
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• Definition – Any means to identify and distinguish products or services
• Duration:
– Period of 10 years indefinitely renewable
• Requirements: – Should have a distinguishing character, without being too
descriptive
– National registration
• Examples: – words, sign, sentence, odor, shape, color, tune, noise,…
Trademarks
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• “(…) Our registered trade mark (…) provides us with a consistent image to the marketplace. It's all about consumer recognition".
• The Coffee Club trade mark is registered
– with IP Australia across a variety of classes.
– in more than a dozen countries; providing protection for what could conceivably be a global market.
• “Intellectual property - our trade marks, copyrighted menus, brochures and so on - all of this is just as important to us as any other business issue. Maybe more so because that is what makes us distinctive, different from the rest”.
• The Coffee Club's secure IP is attractive to potential franchisees. “(…) protected from local and international competitors trying to imitate The Coffee Club brand, which could threaten our investment.”
Source: http://www.ipaustralia.gov.au
When buying/investing/partnering in/with a company, be careful of who holds the IP rights and if they are included in the deal...
Trademarks VW vs. Rolls Royce case
26 Source: http://www.ipaustralia.gov.au
Trademarks
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• Is my trademark already used/registered by another company? – Search on:
https://register.boip.int/bmbonline/intro/show.do – Example: search for the mark “PREOB”:
http://www.wipo.int/romarin/advSearch.do?ID=0&searchString=+/MARKGR/INTREGN+contains+972042&searchDatabaseAct=on&searchDatabaseDel=on
– Refused marks: https://register.boip.int/bmbonline/search/publication/perform.do
Source: www.boip.int
Agenda
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• Types of IP – Copyright
– Trademark
– Design
– Trade secret
– Patent
• Key resources
Designs or industrial models
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• Definition
– Industrial models or design protect the aesthetic qualities of a particular shape or form of a certain product having a specific function
• Duration:
– 5 + 5 + 5 years
Designs or industrial models
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• The problem: competitor copying designs
• Is my industrial model already used/registered by another company?
– Search on: https://register.boip.int/designsOnlineWeb/?l=fr
– Example: search for chair http://www.wipo.int/wipo_magazine/en/2012/06/article_0004.html
• The lesson: register designs before releasing them to the market
Source: www.boip.int
Agenda
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• Types of IP – Copyright
– Trademark
– Design
– Trade secret
– Patent
• Key resources
Trade secrets or know how
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• Secret information giving an advantage over competitors.
• Will need to be kept secret…
– Take all reasonable steps such as confidential agreements, clauses in contracts,…
Agenda
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• Types of IP – Copyright
– Trademark
– Design
– Trade secret
– Patent
• Key resources
A patent: definition
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Exclusive right
“Negative” right
Granted for an invention, product/process offering a new
technical solution to a problem
Duration: 20 years
Implication: the invention cannot be commercially made,
used, distributed or sold without the patent owner's
consent
Conditions to be fulfilled
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Practical use
Industrial application
Can be made or used in any kind of industry
Element of novelty
Not publicly available
Not part of the state of the art
Inventive step
Not obvious to a person skilled in the art
Accepted as "patentable" under law
A patent is a contract between an inventor and a state
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Inventor State
1. Protection for about 20 years 1. Publication of the invention
2. Exclusive rights to produce, use, sell and import the invention
- To recup investment in R&D - To strenghten market position and
competitiveness
- To spread new technical knowledge - To avoid R&D duplication - To foster innovation
Which roles a patent may fulfil ?(1/2)
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Competitive advantage
Attraction of capital
Negotiating power
● Technological negotiations
● Business negotiations
(Cross/sub)-licensing agreements
Bargain against financial difficulties
Patent portfolio = a valuable intangible asset
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1.100 patents
$500 millions - $2.6 billions =
The multiple roles of a patent: (2/2)
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Securing international and national markets
Defensive and offensive strategies
Improving the reputation
Facilitating the coordination amongst partners
…
Agenda
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• Types of IP – Copyright
– Trademark
– Design
– Trade secret
– Patent
• Key resources
Resources
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• https://www.iprhelpdesk.eu/
• http://www.ideasmatter.com/
• http://www.ipaustralia.gov.au/understanding-intellectual-property/case-studies/
• OHMI - Trademark, Design, Industrial secret:
https://oami.europa.eu/ohimportal/fr/
• EPO - Patent:
http://www.epo.org/
In Belgium:
• OBPI – Trademark, Design, Industrial secret
https://www.boip.int/wps/portal/site/home/!ut/p/a1/04_Sj9CPykssy0xPLMnMz0vMAfGjzOKdg5w8HZ0MHQ0MfJ3MDTx9Hb28_Xz8jC0CDPSD04r0C7IdFQH92-xE/
• OPRI - Patent
http://economie.fgov.be/fr/entreprises/propriete_intellectuelle/Aspects_institutionnels_et_pratiques/OPRI/#.U8JKXk2KAkI
• Public financial incentives:
http://newinnoviris.irisnet.be/fr/soutien-financier-entreprises/programmes-bruxellois/protect-patent
http://www.ecosubsibru.be/index.cfm?fuseaction=aides.aides_one&aide_id=28&language=FR
Q&A
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