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Patents and innovation management

Patents and innovation management. Christoph Bruhn European Patent Academy. Istanbul 04 December 2009. Innovation. Successful exploitation of new ideas. Bringing a new idea to the market, leading to a new product, a new method or service. Innovation includes a process. Creation of ideas.

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Patents and innovation management

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  1. Patents and innovation management Christoph Bruhn European Patent Academy Istanbul 04 December 2009

  2. Innovation Successful exploitation of new ideas Bringing a new idea to the market, leading to a new product, a new method or service Innovation includes a process Creation of ideas Project design Project development Production Market launch

  3. Innovation process Creation of ideas Project design Project development Production Market launch Intellectual assets Know how and information on • Market & customers • Technology & production • Competition • Investors & funding • Risks & opportunities

  4. Patent management Assessment Be aware of your intellectual assets Risk determination Determine the risks related to your assets Evaluation Understand the value of your assets Decision on use Decide on strategic use of your patents Protection Manage your patent portfolio

  5. Patent management Assessment Be aware of your intellectual assets! Know-how of your experts! Patents, trade marks, designs, brands Licenses, NDAs, Ideas, inventions, project concepts, construction plans Market surveys, competitor information Marketing concepts, promotion material, films, photos, logos New products, methods, uses, formulations, construction manuals, computer programmes Customer lists, supplier, distribution lists Test material, series, prototypes, trials, samples

  6. Patent management Assessment Be aware of your intellectual assets! Systematic assessment and inventory of intellectual assets of your company and its partners, subcontractors, consultants! Clarification of ownership Regular review and update Participation/involvement of company areas (management, R&D, marketing, legal, finance, personnel...)

  7. Clarify ownership! • Who is the author, inventor, creator etc. of an intellectual asset?to what extend (share)? • Include possible external authors/inventors (contract staff, consultants, subcontractors, partners) • Essential for • application/registration of protection rights • employee‘s compensation and motivation (!) • negotiation with investors • licensing, collaboration, selling, ...

  8. Patent management Assessment Be aware of your intellectual assets Risk determination Determine the risks related to your assets

  9. Risks! You cannot use your own product Infringement of third party‘s rights Change, substitution of technology No market for your products Competitor copied/designed „around“ your product Dominated by competitors You will not find an investor No project clearance No appropriate protection You cannot transfer your IP Unclear ownership

  10. Risks! You cannot use your own product Infringement of third party‘s rights Freedom to operate search! No market or shrinking market for your products Change, substitution of technology Competitor copied/designed „around“ your product Dominated by competitors

  11. Freedom to Operate (FTO) Condition for full use and commercialisation of a product or processwithout infringing third parties‘ rights Pre-requisite for • Selling, marketing, importing • Using for development, testing • Licensing, collaboration, • Funding, investment FTO analysis: identify valid patents that might be infringed by own products: • Search in patent databases (patents & applications!) • Detailed analysis of critical patents

  12. FTO Analysis Regular review to consider • New patents filed (incl. patents not published before) • Changes in status (invalidity, country coverage) • Progress in own development (more precise search terms, field coverage) Special consideration of critical patents: • Coverage of claims & countries (valid?, really infringing?) • Licensing-in, cross-licensing, collaboration • Inventing around Can be very costly, but balanced by potential savings

  13. Risks! You cannot use your own product Infringement of third party‘s rights Freedom to operate search! No market or shrinking market for your products Change, substitution of technology Technology trend analysis! Competitor copied/designed „around“ your product Dominated by competitors

  14. Risks! You cannot use your own product Infringement of third party‘s rights Freedom to operate search! No market or shrinking market for your products Change, substitution of technology Technology trend analysis! Broader protection, blocking patents! Competitor copied/designed „around“ your product Dominated by competitors

  15. Risks! You cannot use your own product Infringement of third party‘s rights Freedom to operate search! No market or shrinking market for your products Change, substitution of technology Technology trend analysis! Broader protection, blocking patents! Competitor copied/designed „around“ your product Cross-licensing, collaboration! Dominated by competitors

  16. Risks! Freedom to Operate! You will not find an investor No project clearance Convincing protection policy! No appropriate protection You cannot transfer your IP Unclear ownership

  17. Risks! Freedom to Operate! You will not find an investor No project clearance Convincing protection policy! No appropriate protection Inventory of IP! You cannot transfer your IP Unclear ownership

  18. Patent management Assessment Be aware of your intellectual assets Risk determination Determine the risks related to your assets Evaluation Understand the value of your assets

  19. Evaluation • Market • Customer demand • Market access, growth • Market barriers • Competition • Motives • Selection of ideas in early project phase • Decision on investment in a technology • Portfolio management • Decision on licensing, selling Value assessment Relative: Quantitative: Which is the best What is the Idea, invention, monetary product, process? (€) value? • Technology • Innovative level • Technological attractivity • R&D requirements • Technological fit • Legal status • FTO? • Protectable? • Protective scope • Enforceable?

  20. Patent management Assessment Be aware of your intellectual assets Risk determination Determine the risks related to your assets Evaluation Understand the value of your assets Decision on use Decide on strategic use of your patents

  21. Use of patents To protect & defend your business • Excluding others from using, selling, copying, etc. • Defending your competitive advantage • Enforcement against infringement • Blocking competitors‘ freedom to operate • Forcing competitors to design around your patent scope

  22. Use of patents To attract investment To increase your liquidity To save money To generate additional income • Valuable and strong patent portfolio is pre-requisite for external investment • Licensing-out your IP rights will generate income from royalties, up-front payment to increase liquidity in early project phase • Cross-licensing will open the door for co-operation and saving development cost • Cross-licensing may prevent from infringement litigation

  23. Use of patents To get access to • Technologies • New markets • Established production capacities • Distribution channels • Patents as bargaining chips for access to technologies, freedom to operate • Licensing-out your IP rights will bring you access to new markets, additional complementary production capacities, distribution channels • Cross-licensing will open the door for co-operation, joint ventures

  24. Decision on use • Integration into business/patent strategy, innovation management • Open innovation/collaboration vs. Internal development with own resources • Critical factors: • Capacity of own resources • Know-how • Complementary assets • Technology portfolio • Competition • Regular review (portfolio management) • New developments (in market, competition, own project, technology trend) • New applications/reduce/abandon patents

  25. Patent management Assessment Be aware of your intellectual assets Risk determination Determine the risks related to your assets Evaluation Understand the value of your assets Decision on use Decide on strategic use of your patents Protection Manage your patent portfolio

  26. Protecting intellectual assets • Particular relevance for • Results of R&D, project design and production/process development • Know-how transfer in the context of licensing, selling, collaboration • Attracting investors • Set-up (integrate with) patent strategy • Defensive/offensive/commercial exploitation • Competition • Market policy • Regular revision, portfolio management • Participation/communication with management, finance, R&D, production, marketing • Consider different options of protection • Patenting/secrecy (NDA policy!)/publication/lead time to market/control of technology & complementary assets • Type of technology, product life cycle, value of asset • Seek expert consultancy, patent/trademark attorney

  27. Options for protection of inventions Patenting • Social deal: Exclusivity for disclosure of invention • Costs, time limit 20 years Defensive publishing • Disclosure of technology, no exclusivity • Prevention of patenting by third parties Trade secrets • Requires secrecy management, NDAs • No disclosure, but only suitable for process inventions Lead-time to market • For short product life cycles • Product development, marketing, distribution faster than competitors Control of complementary assets • Control of technology/market/distribution

  28. Innovation process Creation of ideas Project design Project development Production Market launch Patent management: Regular review & screening of resulting intellectual assets Use of Patent Information to support Innovation & patent management

  29. Key recommendations • Be aware of your intellectual assets • Create awareness for the risks and opportunities related to IP in your company • Appoint a person/team in your company responsible for IP, provide support from top management • Seek professional help; outsource special tasks to professional experts • Set-up and integrate a patent strategy with your business/innovation strategy • Don‘t invest before freedom to operate search • Make use of patent information

  30. Thank you for your attentionChristoph BruhnEuropean Patent Academycbruhn@epo.orgwww.epo.org

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