An Overview of National and International Intellectual Property Systems and the Role of WIPO

Guriqbal Singh JaiyaDirector, SMEs Division

World Intellectual Property Organization (WIPO)Guriqbal.jaiya@wipo.int

Status: An int’l intergovernmental organization

Member States: 183

Staff: 915 from 94 countries

Treaties Administered: 24

Decisions by: GA, CC, WIPO Conference

Guiding Principles: Transparency, Accountability, Consensus

To promote the protection of IP rights worldwide and extend the benefits of the international IP system to all member States

WIPO’s Mission:

Basic Facts about WIPO

Milestones : 1883 to 2006

Paris Convention

1883

1886

18911893

1925

1960

1967

1970

1970

1989

2002

Berne Convention

Madrid Agreement

BIRPI

Hague Agreement

BIRPI moves to Geneva

WIPO Convention

WIPO established

PCT

Madrid Protocol

Internet Treaties

Intellectual Property: A Tool for Development

“In the age of the knowledge economy, the efficient and creative use of knowledge is a key determinant of international competitiveness, wealth creation and improved social welfare.”

“An effective intellectual property (IP) system embedded within a national strategy which anchors IP considerations firmly within the policy-making process will help a nation to promote and protect its intellectual assets, thereby driving economic growth and wealth creation.”

Kamil Idris WIPO Director General

Types of IP Rights

• Trade Secrets

• Copyright and Related Rights

• Industrial Designs

• Trademarks (Brands)

• Geographical Indications

• Utility Models and Patents

• New Varieties of Plants

• Unfair Competition

Strategic Goals• Promotion of an IP culture

– build a foundation for more solid & extensive IP culture– better understanding & use of IP system. – Greater respect for IP rights

• IP policies as part of Nat’l Dvpt. Strategies• Development of balanced IP laws responsive to

emerging needs• Delivery of quality global IP protection systems • Enhanced Access to IP System

– practical solutions to empower all stakeholders to develop, protect, enforce, manage and commercially exploit IPRs for development

OutreachOutreach

Intellectual PropertyOffices

Intellectual PropertyOffices

Public Sector & Policy-MakersPublic Sector & Policy-Makers

General Public, Private Sector & Civil SocietyGeneral Public, Private Sector & Civil Society

Building awarenessBuilding awarenessBuilding awarenessBuilding awareness

WIPO’s Activities

Norm-Setting

Services to Industry

Economic Development

• AIM: Progressive development of international IP law for an IP system that is:– balanced/responsive to emerging needs– effective in encouraging innovation/creativity– sufficiently flexible to accommodate national policy objectives

• Address/provide info. on current & emerging issues in IP - (review/discussion of topical issues in standing committees).

NORM SETTING

NORM SETTING

A Success Story: Functional challenges: (success has generated operational issues) Political challenges: (greater public scrutiny)

> Clarify current/emerging issues > Discuss improvements in op. principles/practice > Address issues in line with national/international economic development strategies

Aim: Take into account interests of all stakeholders.A system that is balanced, reliable, swift, user-friendly, accessible, cost-effective

atents

NORM SETTING

opyright & Related Rights:- encourage broader use of system

- ensure it is in line with digital environ.Priorities:

Implementation of WCT/WPPT(major step forward in updating CR at

international level)

Build consensus on topical issues

NORM SETTING

Tools for domestic/international commerce, marketing strategies

• Develop int’l TM law (TLT Revision)• Legal advice• Promote convergence of admin. practices• Soft Law approach• Promote dvpt./use of registration systems

rademarks, Designs, Geographical Indications

NORM SETTINGTraditional Knowledge, Access to Genetic Resources,

FolkloreAim: Generate practical benefits from using IPS/use IP assets to support socio-ec. development, cultural integrity of communities/address concerns

of indigenous peoples, etcGenetic Resources & Benefit SharingTraditional Knowledge & Innovations.

IGC (2000): Int’l Forum for tackling issues at several interlocking levels

debating broad policy and legal questions; sharing practical experience; and developing practical tools and mechanisms

Current situation: Maturing process - common objectives/ core principles.

WIPO GA: new mandate - international dimension/no outcome excluded

ECONOMIC DEVELOPMENT

To maximize strategic use of IP for development by:

- updating IP legislation- upgrading IP infrastructure- demystifying IP- promoting understanding of policy options offered by IPS

Approach: tailored to specific national needs (NFAPs, etc. via regional offices)

Focus Shift: deliverables, capitalize on assistance rendered.

EMPHASIS ON ….

• Networks - synergistic relationships• Outreach• Training• Collective Copyright Management

Organizations• Promotion of Creativity and

Innovation

• Distance Learning Program

• Professional Training

• Policy Dvpt., Teaching & Research

• Approach: Training trainers» Partnerships with Academic

Institutions/IGOs/NGOs - synergies for dvpt.

» Joint programs/publications, promo. materials

WIPO WORLDWIDE ACADEMY

ACADEMIC TRAINING

INNOVATORS & SMES

• Dynamic Economic Sector• Aim: improve IP awareness to enable

formulation & implementation of:– policies;– programs;– strategiesto enhance strategic use of IP assets by R&D, Innovators/SMEs

e.g. licensing agreements; finance; IP information to monitor competitors, etc.

GUIDELINES & FILING SERVICES

I. Enhancement of global protection systems to further simplify and reduce costs of obtaining protection in multiple countries for:

PATENTS (PCT):

- PCT Reform

- E-filing

TRADEMARKS (MADRID)

INDUSTRIAL DESIGNS (HAGUE)

GEOGRAPHICAL INDICATIONS (LISBON)

MICRO-ORGANISMS (BUDAPEST)

0

20000

40000

60000

80000

100000

120000

140000

1600001990

1991

1992

1993

1994

1995

1996

1997

1998

1999

2000

2001

2002

2003

2004

2005

THE PATENT COOPERATION TREATY

PCT

WIPO LEGAL SERVICES

Alternative dispute resolution (ADR) offered by WIPO Arbitration & Mediation Center - tailor-made D R procedures, e.g.:

- UDRP criteria:- identical/confusingly

similar- legitimate interest- bad faith

- cost-effective and expeditious procedure (see http://arbiter.wipo.int)

- WIPO Trademark Database Portal

(http://ecommerce.wipo.int/databases/trademark/)

6%

76%

15%1%2%

Member StatesPCT SystemMadrid SytemHague SystemOther

WIPO’S INCOME2006-2007

Total: 531 M CHF

From Invention to Innovation

From Invention to Innovation

While invention depends upon creativity,

successful technological innovation requires integrating new knowledge with multiple business functions.

Innovation – What is it?Innovation – What is it?

The creation of new ideas/processes which The creation of new ideas/processes which will lead to change in an enterprise’s will lead to change in an enterprise’s economic or social potentialeconomic or social potential

[P. Drucker, ‘The Discipline of Innovation’, Harvard Business Review, Nov-Dec, 1998, 149]

What is Innovative Thinking?

– A means of generating innovation to achieve two objectives that are implicit in any good business strategy:

• make best use of and/or improve what we have today• determine what we will need tomorrow and how we can best

achieve it, to avoid the « Dinasaur syndrome » 

– Innovative thinking has, as a prime goal, the object of improving competitiveness through a perceived positive differentiation from others in:

• Design/Performance• Quality• Price• Uniqueness/Novelty

Obstacles to Successful Obstacles to Successful InnovationInnovation

• Competitive positionCompetitive position

• Market judgementMarket judgement

• Technical performanceTechnical performance

• Manufacturing expertiseManufacturing expertise

• Financial resourcesFinancial resources

How to classify newness and degree of innovation and what to focus on:

• New to the firm? • First in the market?• First in the world?• Incremental or radical innovation?

Innovation

There are several types of new products. Some are new to the market, some are new to the firm, and some are new to both. Some are minor modifications of existing products while some are completely innovative

Product Development Strategies

OldMarket

New Market

Old Product New Product

MarketPenetration

ProductDevelopment

Market Development

ProductDiversification

Marketing principles…….Marketing principles…….

• Identify opportunities and threatsIdentify opportunities and threats

• Identify customer needsIdentify customer needs

• React to a competitive environmentReact to a competitive environment

• Careful planning to make a New or improved productCareful planning to make a New or improved product

• Use the 4 P’s….Use the 4 P’s….

Product serviceProduct service

PricePrice

Promotion Promotion

Place (distribution)Place (distribution)

• Retain flexibility to react to changesRetain flexibility to react to changes

The Development of Technology: From Knowledge Generation to Diffusion

The Development of Technology: From Knowledge Generation to Diffusion

Basic Knowledge

Invention Innovation Diffusion

IM ITATION

ADOPTION

Supply side

Demand side

Innovation Process

• The adoption of an The adoption of an innovation by similar firmsinnovation by similar firms

• Usually leads to product Usually leads to product or process standardizationor process standardization

• Products based on Products based on imitation often are offered imitation often are offered at lower prices but with at lower prices but with fewer featuresfewer features

InventionInvention

InnovationInnovation

ImitationImitation

The Innovation Process

• An innovation starts as an idea/concept that is refined and developed before application.

• Innovations may be inspired by reality (known problem). The innovation (new product development) process, which leads to useful technology, requires: – Research– Development (up-scaling, testing)– Production – Marketing– Use

• Experience with a product results in feedback and leads to incrementally or radically improved innovations.

Translation of a Creative Idea into Useful Application

Analytical Planning

Organizing Resources

Implementation Commercial Application

To Identify:Product DesignMarket StrategyFinancial Need

To Obtain:MaterialsTechnologyHuman ResourcesCapital

To Accomplish:OrganizationProduct DesignManufacturingServices

To Provide:Value to CustomersRewards to EmployeeRevenue to InvestorsSatisfaction of Founders

The Innovation Process

The Profitability of InnovationThe Profitability of Innovation

• Legal protection

• Complementary resources

• Ease of imitation of technology

• Lead time

Profits from

Innovation

Value of an innovation

Innovator’s ability to

appropriate value from an

innovation

Value Value Appropriation Appropriation

from from InnovationInnovation

Barriers to IntegrationBarriers to Integration

Different TimeDifferent Time

InterpersonalInterpersonal

Different GoalDifferent Goal

Formality ofFormality of

OrientationOrientation

OrientationOrientation

OrientatioOrientationn

StructureStructure

Facilitators of Facilitators of IntegrationIntegration

Shared ValuesShared Values

Leaders’ VisionLeaders’ Vision

EffectiveEffective

Budget AllocationBudget Allocation

CommunicationCommunication

Appropriating Value from InnovationAppropriating Value from Innovation

Cross-Cross-Functional Functional

Integration/Integration/Design TeamsDesign Teams

Time to Time to MarketMarket

Product Product QualityQuality

Creation of Creation of Customer Customer

ValueValue

Product Life CycleProduct Life Cycle

SalesSales

TimeTime

IntroductiIntroductionon

GrowthGrowth

MaturityMaturity

DeclineDecline

New Product Development

Stages in a New Product Development process:

• Idea Generation

• Idea Screening

• Concept Development and Testing

• Business Analysis

• Beta Testing and Market Testing

• Technical Implementation

• Commercialization

Technology Adoption – Diffusion of InnovationTechnology Adoption – Diffusion of Innovation

EarlyAdopters

InnovatorsLaggards

EarlyMajority

LateMajority

Take up Rate

Time

Innovators:Innovators: venturesome; greatest venturesome; greatest needneedEarly adopters:Early adopters: opinion leaders; opinion leaders; needs drivenneeds drivenEarly majority:Early majority: deliberatedeliberateLate majority:Late majority:skepticsskepticsLaggards:Laggards: traditionalists; traditionalists; suspicioussuspicious

New Business Models EmergeThen…

One Integrated Company

Now…

Many Distributed Companies

Product Development

Cycle

Product Developmen

t

Tool Compani

es

Testing Services

CRO’s CRM’s

New Regional Model EmergeThen…

Manufacturing

Research

Development

Trials/Testing

Services

Self-contained regional clusters

Region A

Region E

Region B

Region F

Region D

Region C

Region G

Now…

Specialized, networked regions

Commercialization Model• Strategic Investment is the Foundation of a

Successful Commercialization Model

What Investors Look for?What Investors Look for?

Novelty; world-class; evidence of commercial Novelty; world-class; evidence of commercial interest; clear path to marketinterest; clear path to market

Unencumbered, or encumbered by reasonable Unencumbered, or encumbered by reasonable conditions (Equity, royalties)conditions (Equity, royalties)

Protection (Non-disclosure agreements, Protection (Non-disclosure agreements, Patents, Designs, Brands, Copyright)Patents, Designs, Brands, Copyright)

IP protected by one or more Patents is the IP IP protected by one or more Patents is the IP required to implement the business planrequired to implement the business plan

““Freedom to Operate”Freedom to Operate”

Innovation, Intellectual Property and Poverty Reduction

Critical Ingredients for Innovation:

• Intellectual Capital

• Human Capital

• Financial Capital

• Proximity

• Social Network Capital

Complementary ResourcesComplementary Resources

Bargaining power of owners of complementary resources depends upon whether complementary resources are generic or specialized.

Manufacturing Distribution

Service

Complementarytechnologies

OtherOther

Marketing

FinanceCore

technological know-how

Risk & Return

CompetingResources

Examples

LicensingOutsourcing

certain functions

Strategic Alliance

Joint Venture

Internal Commercialization

Small risk, but limited returns also (unless patent position very strong

Limits investment, but dependence on suppliers & partners

Benefits of flexibility; risks of informal structure

Shares investment & risk. Risk of partner conflict & culture clash

Biggest risks & benefits. Allows complete control

Few Allows outside resources & capabilitiesTo be accessed

Permits pooling of the resources/capabilities of more than one firm

Substantial resource requirements

Konica licensing its digital camera to HP

Pixar’s movies (e.g. “Toy Story”) marketed & distributed by Disney.

Apple and Sharp build the “Newton” PDA

Microsoft and NBC formed MSNBC

TI’s development of Digital Signal Processing Chips

Alternative Strategies for Exploiting InnovationAlternative Strategies for Exploiting Innovation

Uncertainty & Risk Management in Tech-based IndustriesUncertainty & Risk Management in Tech-based Industries

Sources ofuncertainty

Technologicaluncertainty

Selection process for standards and dominant designs emerge is complex and difficult to predict, e.g. future of 3G

Customer acceptance and adoption ratesof innovations notoriously difficult to predict, e.g. PC, Xerox copier, Walkman

Marketuncertainty

Strategies formanaging risk

Cooperating with lead users early identification of customer requirements

–assistance in new product development

Flexibilility—keep options open—use speed of response to adapt quickly to new information—learn from mistakes

Limiting risk exposure—avoid major capital commitments (e.g. lease don’t buy)—outsource—alliances to access other firms’ resources & capabilities—keep debt low

Innovation riskInnovation risk

RISKSRISKS COSTSCOSTS

RESEARCHRESEARCH DEVELOPMENT DEVELOPMENT COMMERCIALISATION COMMERCIALISATION

Mortality of New Product IdeasMortality of New Product Ideas

The “ Right” Innovative Product?

The right product is one that becomes available at the right time (i.e., when the market needs it), and is better and/or less expensive that its competition.

To have the right product, therefore, one must: Predict a market need Envisage a product whose performance and

capability will meet that need Develop the product to the appropriate time scale

and produce it. Sell the product at the right price

TimelyTimelyTimelyTimely

Difficult forDifficult forcompetitors to imitatecompetitors to imitate

Difficult forDifficult forcompetitors to imitatecompetitors to imitate

Commercially exploitableCommercially exploitablewith present capabilitieswith present capabilities

Commercially exploitableCommercially exploitablewith present capabilitieswith present capabilities

Innovation and Competitive AdvantageInnovation and Competitive Advantage

CompetitiveCompetitiveAdvantageAdvantage

CompetitiveCompetitiveAdvantageAdvantage

Provides significantProvides significantvalue to customers value to customers Provides significantProvides significantvalue to customers value to customers

Strategic Entrepreneurship and Innovation

• Entrepreneurship is concerned with:– The discovery of profitable opportunities– The exploitation of profitable opportunities

• Firms that encourage entrepreneurship are:– Risk takers– Committed to innovation– Proactive in creating opportunities rather than

waiting to respond to opportunities created by others

EntrepreneurshipCreativity is at the heart of entrepreneurship, enabling entirely new ways of thinking and working.

Entrepreneurs identify opportunities, large or small, that no one else has noticed.

Good entrepreneurs also have the ability to apply that creativity—they can effectively marshal resources to a single end.

They have drive—a fervent belief in their ability to change the way things are done, and the force of will and the passion to achieve success.

They have a focus on creating value—they want to do things better, faster, cheaper.

And they take risks—breaking rules, cutting across accepted boundaries, and going against the status quo.

EntrepreneurshipDefining entrepreneurship is difficult because there is no universal, clear-cut definition of the term. In its most basic sense, entrepreneurship is manifest in a business venture when an individual is able to turn a novel idea into a profitable reality. In practice, however, entrepreneurship is more multifaceted, ranging from operating a small business in one’s own home, to bringing a national franchise to a small town, to turning a new and unique idea into a high-growth company. Entrepreneurship can involve starting a business that brings a new store to main street, offering a product or service previously unavailable to a community, or acquiring an existing business that has had a long-standing presence in a community and helping it evolve to reflect one’s own vision and personality.

EntrepreneurshipThe word entrepreneurship literally means, "to take or carry between" in the sense of an economic transaction; to be a market-maker. It does not literally convey the notion of innovation that we commonly associate with the term.

Joseph Schumpeter (1883-1950), one of the more well known theorists on entrepreneurship, defined an entrepreneur as one who reorganizes economic activity in an innovative and valuable way. That is, an entrepreneur is one who engages in a new economic activity that was previously unknown. An entrepreneur is a risk taker because being innovative means there are few rules or history for guidance.

EntrepreneurshipEntrepreneurship is the process of creating or seizing an opportunity, and pursuing it regardless of the resources currently controlled.

The Webster’s Third New International Dictionary defines an entrepreneur to be “one who organizes, owns, manages, and assumes the risks of a business”

EntrepreneurshipThe entrepreneur shifts resources out of an area of lower and into an area of higher productivity and greater yield.[J. B. Say, French economist, circa 1800] Entrepreneurship is creative destruction. Dynamic disequilibrium brought on by the innovating entrepreneur, rather than equilibrium and optimization, is the norm of a healthy economy and the central reality of economic theory and practice. [Joseph Schumpeter, Austrian economist, 1911] The entrepreneur searches for change, responds to it, and exploits it as an opportunity. Innovation is the specific tool of entrepreneurs, the means by which they exploit change as an opportunity for a different business or a different service[Peter Drucker, 1985]

Entrepreneurship

Entrepreneurship drives innovation, competitiveness, job creation and economic growth.

It allows new/innovative ideas to turn into successful ventures in high-tech sectors and/or can unlock the personal potential of disadvantaged people to create jobs for themselves and find a better place in society.

EntrepreneurshipEntrepreneurship, in small business or large, focuses on "what may be" or "what can be".

One is practicing entrepreneurship by looking for what is needed, what is missing, what is changing, and what consumers will buy during the coming years.

Entrepreneurship

Entrepreneurs have:– A passion for what they do– The creativity and ability to innovate– A sense of independence and self- reliance– (Usually) a high level of self confidence– A willingness and capability (though not

necessarily capacity or preference) for taking risks

Entrepreneurship

Entrepreneurs do not (usually) have:– A tolerance for organizational bureaucracies– A penchant for following rules– A structured approach to developing and

implementing ideas– The foresight to plan a course of action once

the idea is implemented and established

Entrepreneurial Success

1. People (Entrepreneur /Entrepreneurial Team)

2. Opportunity (Marriage of Market andProduct/Service)

3. Access to Resources (Land. Labor, Capital, Knowledge)

And the fit amongst these three elements

Major factors determining success of a new product in the market

• The product provides functional advantages

• Lower price for comparable product• More attractive design (look)• Reputation of brand• Easy access: Available in the main

retail shops• Consistent product quality• Excellent after-sales services

Competitive AdvantageCompetitive Advantage

Criteria…Criteria…

Low cost producerLow cost producer

Product differentiationProduct differentiation

Niche marketNiche market

New Product

Development

BreakthroughBreakthroughInnovationInnovation

?

Need two processes: NPD and NB(usiness)D

?

Innovative Innovative New ProductsNew Products

NewNewBusinessesBusinesses

New Business

Development

An opportunity driven path to

market- a different

business design

Protection of IPProtection of IP

IdeasIdeas

ResearchResearch

TechnologiesTechnologies

ProductsProducts

Utility models, Patents

Collaborative ResearchAgreement

Confidentiality or Nondisclosure Agreements (Trade Secrets)

Technology LicensingAgreement, Branding

ValueValue addingadding

Intellectual Property Questions

Intellectual Property (IP) Issues/questions during New Product Development (NPD):

Can the innovation be legally protected? For how long?

How does one protect an innovation from imitators? How much will it cost? When to protect? Do you need to rely on an IP expert?

The answers are complicated by the fact that one or more types of legal frameworks may be used to protect a particular innovation, product, process, or creative work. These include trade secrets, trademarks, designs, patents, and copyright.

It is necessary to know which are applicable and when each is appropriate. This varies somewhat from jurisdiction to jurisdiction. The advice of a lawyer that specializes in these matters is essential

Intellectual Property Questions

•It is necessary to know which types of intellectual property rights (IPRs) are applicable and when is each type of IPR appropriate. This varies somewhat from one country to another.

•The advice of an IP lawyer is desirable if not essential.

Background• In September 2000, the WIPO

Assemblies approved the creation of “a substantial new program of activities, focusing on the IP-related needs of SMEs worldwide”

• SMEs Division established in October 2000

• Nine professionals and three administrative staff in the SMEs Division of WIPO

Strategy

• 1. Demystification

• 2. New audience

• 3. New Areas

• 4. Proactive

• 5. E-Services

• 6. Partnership

(1) Demystification• Studies

• Guides

• Events and expert missions

• Website and newsletter

• CD-ROM

• Magazine articles

(1) Demystification (Studies)

• National Studies (on IP and SMEs) completed or under way in Argentina, Bhutan, Mongolia, Nepal, Philippines, Sri Lanka, Tanzania, Sierra Leone, Romania, Chile, Colombia, Costa Rica, El Salvador, Honduras and Paraguay, Egypt, Morocco, Lebanon

• WIPO Survey of IP Services to Tenants of European Technology Incubators

• Norwegian SMEs and the IPR system

(1) Demystification (Guides)

• WIPO/ITC Guide on Marketing of Crafts and Visual Arts; Role of Intellectual Property; A practical guide

• WIPO/ITC Guide on Secrets of Intellectual Property: Guide for Small and Medium Sized Exporters

• WIPO/ITC Guide on Exchanging Value: Negotiating Technology Licensing Agreements - A Training Manual

• ITC Guide on Exporting Automotive Components• ITC Guide on Pharmaceutical SMEs (Forthcoming)

IP for Business Series

• Making a Mark

(Trademarks)• Looking Good

(Designs)• Inventing the

Future (Patents)• Creative

Expression (Copyright and Related Rights)

(1) Demystification (Guides)

• Translation and/or customization: Under way, with funding from several sources, in the following countries: Algeria, Argentina, Australia, Canada, Czech Republic, Egypt, Estonia, Hungary, Italy, India, Israel, Kenya, Lebanon, Malaysia, Malta, Mongolia, Morocco, New Zealand, Philippines, Poland, Slovakia, Spain, Tanzania, Tunisia, Vietnam

• 16 Countries members of the OAPI

(1) Demystification (Events)

• Special programs, seminar and workshops organized by the SMEs Division in Geneva in partnership with selected associations and organizations (IASP, INSME, IPI, MOST, WASME)

• Annual WIPO Forum on IP and SMEs for IP Offices of OECD Countries

(1) Demystification (Events)

• WIPO-Italy Forum on Textile and Clothing Industries of the Mediterranean Basin Countries (Prato, Italy - December 2003)

• Participants from Algeria, Cyprus, Egypt, Jordan, Israel, Lebanon, Malta, Morocco, Palestine, Syria, Tunisia, Turkey

(1) Demystification (Website)

• The Website of the SMEs Division is in six UN languages (English, French, Spanish, Arabic, Russian and Chinese)

• More than 100,000 pages viewed every month in 2006

• Contents include sections such as IP for Business, IP and E-Commerce, Activities, Best Practices, Case Studies and Documents

SMEs Website

(1) Demystification (Newsletter)

• Monthly e-newsletter in the 6 UN languages (Free)

• Content includes articles, updates with information, links and documents

• Launched in August 2001

• Total number of subscribers: >25,000

(1) Demystification (CD-ROM)

• 50,000 copies of the SMEs Division CD-ROM distributed to SME support institutions, IP Offices and others worldwide

• Marketing and customization

• E-learning CD ROM (in partnership with KIPO: “IP Panorama”)

• SAARC CD-ROM (in preparation)

(1) Demystification (Articles)

• Some articles recently published:– What to do if you are accused of copyright infringement

– Tapping into Patent Information: a buried treasure– International trade in technology – licensing of know-

how and trade secrets

– Intellectual Property and E-commerce: how to take care of your business’ website

– Offshore outsourcing and IP– Savvy marketing: merchandising of IP rights

(2) New Audience

• Bringing IP issues to SME events• Bringing new business perspective to IP

events• New partnership: Open door policy• IGOs, government focal points, SME

support, training and financial institutions, chambers of commerce and industry, SME associations, SME research institutions, private sector institutions, universities, etc...

(3) New Areas• IP for financing (venture capital, securitization)• Accounting and valuation of IP assets• IP Asset Management, IP Due Diligence and IP Audit• Fiscal policies and IP (tax incentives for R&D

activities, patenting, licensing etc.)• IP services to SMEs by incubators, technology

parks, chambers of commerce and SME associations

• IP needs of SMEs in agriculture, biotechnology, handicrafts, software, textiles, etc

(4) Being Proactive

• Original Content

• Links

• Best Practices

• Case Studies

(5) E-Services

• Web site content

• SME mail

• E-mail newsletter

• Distance learning (proposed)

• Discussion forum (proposed)

(6) Partnership• National and Regional IP Offices• National SME focal points in government, private

sector• Chambers of Commerce and Industry• SME Associations; Cooperatives• Incubators, Science Parks, Technology Parks• Universities; R & D Institutes• Private Sector Consultants• SME Finance Institutions (including venture

capitalists)• Other UN Agencies (ITC, ILO, UNIDO, AfDB, UN

Regional Commissions)

Bringing it All Together Example No. 1Example No. 1

• Decades ago, Coca-Cola decided to keep its soft drink formula a secret

• The formula is only know to a few people within the company

• Kept in the vault of a bank in Atlanta

• Those who know the secret formula have signed non-disclosure agreements

• It is rumored that they are not allowed to travel together

• If it had patented its formula, the whole world would be making Coca-Cola

Bringing it All Together Example No. 2Example No. 2

• Patent for stud and tube coupling system (the way bricks hold together)

• But: Today the patents have long expired and the company tries hard to keep out competitors by using designs, trademarks and copyright

Bringing it All Together Example No. 3Example No. 3

• Patent for the fountain pen that could store ink

• Utility Model for the grip and pipette for injection of ink

• Industrial Design: smart design with the grip in the shape of an arrow

• Trademark: provided on the product and the packaging to distinguish it from other pens

Source: Japanese Patent Office

® Registered Trade Mark

‘TM’ Unregistered Registered Design

Copyright: Labels & Artwork

Patents: Several dozen!

Bringing it All Together Example No. 4Example No. 4

Bringing it All Together Example No. 5Example No. 5 : Personal Computer

• Patent protection for the innovative functional features of the computer

• Trademark protection for the brand name that goes on the box

• Copyright protection for the software that runs inside

• Trade secret protection for the semiconductor processing techniques used to create the processor

IP TRIGGERS• Starting up, investing in, buying or selling a business• Selecting a name or logo for a product, service, or company• Developing a new product or service (biotechnology,

software, devices, and instruments)• Improving an existing product or service• Applying for a government grant • Entering into a government, academic, or corporate

collaboration• Bringing on a key employee or contractor for design,

research, or development work• Providing business or technical information to suppliers,

customers, partners or investors• Launching a major sales effort or marketing initiative• Maintaining or expanding a customer list• Searching for advantages in a competitive market• Setting up a website for your business

Key Message 1

IP adds value at every stage of the value chain from creative/innovative idea to putting a new, better, and cheaper, product/service on the market:

Literary / artisticcreation

Invention

Financing Product Design

CommercializationMarketing

Licensing

Exporting

Patents / Utility Models/Trade secrets

Copyright/Related Rights

Patents / Utility models

Industrial Designs/

Trademarks/GIs

Trademarks/ GIsInd. Designs/Patents/Copyright

All IP Rights

All IP Rights

Key Message 2

• IP Strategy should be an integral part of the overall business strategy of an Enterprise

• The IP strategy of an Enterprise is influenced by its creative/innovative capacity, financial resources, field of technology, competitive environment, etc.

• BUT: Ignoring the IP system altogether is in itself an IP strategy, which may eventually prove very costly or even fatal

Key Message 3 (More for Less)

• Own Use

• Licensing

• Franchising

• Merchandising (Mickey Mouse, Hello Kitty)

Key Questions

– What are the IP assets of a business?– Status of the company’s IP Portfolio?– How important are IP assets to the business?– How does the company protect its IP assets?– How does the company protect itself from the

IP assets of others?– What is the company’s IP policy and

strategy? – Is the Company’s business strategy and IP

strategy aligned ?– Is the company getting the best value out of

its IP assets?

Protecting Inventions

Manage Competition

Hierarchy of IP Value

Design Freedom

Build Markets and Relationships

Deliver Revenue

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Biz Strategy Driver

Stage 1: IP Health Check

Identification/Documentation/Product review:

• patents, trademarks, copyright

• technical specifications, manufacturing and design documents

• benefits statements, product descriptions, marketing statements

IP Management:

• process

• capture, registration

Stage 2: IP Consolidation

IP Protection:

• IP Gap/Risk Analysis

• includes DRM focus

IP Management:

•IP Register (Build/Refresh)

•IP Management Process

“Like financial management, IP management must be disciplined and process rich to be effective”

Stage 3: IP Management

IP Register

IP Management Process

IP as an Asset – Culture

Resultant IP – IP Capture process/tools

“The interaction between a company’s IP and the IP of others (eg key suppliers of operating software, infrastructure and services) in our increasingly interconnected world is a rich source of resultant, and ultimately valuable, IP”

Stage 4: IP Commercialisation

‘To Market’ advantage for your valuable resultant IP

An IP lifecycle management advantage

New or enhanced IP revenue streams

Constantly refresh and extract from your IP repository

IP ROI

“Uncaptured, unidentified and/or ill-managed IP cannot contribute to the overall IP ROI businesses must aspire to realise”

IP Management Tips• Integrated management of all IP• Allocate responsibility

– Inside and outside• Conduct research• Create, maintain, and enforce rights• Careful timing of decisions

– Timely filings– Budget planning for expensive actions

• Avoid liability and ownership disputes– IP owners– Customers – Collaborators

IP Management

• Legal

• Technical

• Business

• Export

• Financial

• Relationships

• Accounting

• Tax

• Insurance

• Security

• Automation

• Personnel

An Aspect of Good Management• People Management – because IP is generated by people and

used by people

• Knowledge Management – because a lot of knowledge is informal and may or may not crystallise as recognisable category of IP

• IT Strategic Planning – because a lot of IP is IT-related; some of the more complex IP issues arise in IT context

• Contract Management – because IP is often created (or improved) in context of a contract (eg, supply contract or joint venture

relationship)

• Asset Management – because IP is an asset, albeit intangible; it has a value

• Risk Management – because there are risks to an organisation flowing from its actions, or failure to act, in relation to IP (including risk of lost opportunity)

with permission of P Crisp, AGS, 2003

Thank You

Guriqbal Singh Jaiya

guriqbal.jaiya@wipo.int

www.wipo.int/sme/en/index.html

www.wipo.org