danae

Stamp

Transfer of new technologies from universities and research

institutions to parties capable of commercialization, or in the

sense of transfer of technologies across international borders,

generally from developed to developing countries.

Each year Israeli technology transfer companies generate a

total of over NIS 1 Billion in royalties.

Over NIS 100 Million are invested by industrial companies in

scientific research collaborations at universities

About 150 new technologies are licensed from Israeli

universities and research institutes each year

Entering into technology transfer agreements

Setting up joint ventures and partnerships to share both the risks

and rewards of bringing new technologies to market

Other corporate vehicles such as spin-outs. In such cases, the

parent company usually offers support to the “spin out” company

doing one or more of the following:

investing equity in the new firm,

being the first customer of the spin-out (helps to create cash

flow),

providing incubation space (desk, chairs, phones, internet

access, etc.),

providing services such as legal, finance, technology, etc…

Employee poaching

One of the methods used in the technology transfer industry to capture the expertise of competition is

to poach executives and technology specialists. This is one of the activities of headhunters,

recruitment firms.

Industrial espionage

It implies corporate spying with professional criminals targeting specific technology, initiating network

attacks (hacks), laptop computer thefts accessing source code, product designs, marketing plans,

customer lists, approaching employees to reveal company information, etc

Reverse engineering It occurs when someone legally obtains a product, and then discovers how that product works or how

it was put together by carefully studying it, taking it apart, experimenting on it, etc..

Counterfeiting

Counterfeit goods (commonly called "knockoffs") consist of the imitation of a product. If it is usually

made without compliance with quality standards of the infringing product, it sometimes leads to an

acquisition of knowledge, by the method of trial and error.

danae

Stamp

danae

Stamp

Designs

& Models

The unique way a product

looks such as a computer’s

molding

Patents

An invention, whether a product

or a process, which must be

industrially applicable (useful),

be new (novel)

and exhibit a sufficient

“inventive step”

(be non-obvious)

Trademarks

A distinctive sign,

which identifies certain goods

or services as those produced /

provided by a specific person or

enterprise

(i.e. logos, distinctive names for

products and

technologies)

Copyrights

Rights given to creators for their

literary and artistic works

(including technical manuals,

software, specifications,

formulae, schematics, and

documentation)

Trade secrets

A protected formula or

method, undisclosed

customer or technical

information,

algorithms, etc.

Patents e.g. Apple vs. Samsung case

Trademarks

Registration Number: 3886196 Mark

Standard Character claim: No

Current Status: Registered. The registration date is used to determine when post-registration maintenance

documents are due.

Filing Date: 2010-04-21 Registration Date: 2010-12-07

LAST APPLICANT(S)/OWNER(S) OF RECORD 1. Apple Inc.

GOODS AND/OR SERVICES International Class: 009

Class Status: Active

Telephony software, namely, computer software for making, managing, and receiving phone calls, and for

reviewing, managing, and playing electronic voice messages

Basis: 1(a) First Use Date: 2007-06-29 First Use in Commerce Date: 2007-06-29

ADDITIONAL INFORMATION Color(s) Claimed: The color(s) green, light green, dark green and white

is/are claimed as a feature of the mark.

Description of Mark: The mark consists of a rectangle with rounded corners depicting a stylized white

telephone receiver against a striped green and dark green background. A shade of light green covers the

upper half of the rectangle design.

Design Search Code(s):

16.01.08 - Telephones

26.11.21 - Rectangles that are completely or partially shaded

26.17.06 - Bands, diagonal; Bars, diagonal; Diagonal line(s), band(s) or bar(s); Lines, diagonal

MADRID PROTOCOL INFORMATION USPTO Reference Number: A0022117

International Registration Number: 1058208 International Registration Date: 2010-11-12

Original Filing Date with USPTO: 2010-11-12

International Registration Status: Application For IR Registered By IB

Date of International Registration Status: 2010-12-16

International Registration Renewal Date: 2020-11-12

Irregularity Reply by Date: (DATE NOT AVAILABLE)

Trade secrets

e.g. Coca Cola formula

Copyrights Copyright protection is not

subject to any formality (unlike

patents, registered designs or

trademarks). The work is

protected automatically upon its

creation. Basically it is the act of

creation which gives rise to

copyright.

Designs & Models

Three categories:

Agreements may be for certain IP rights only

e.g. a license to practice an identified patent or to copy and distribute a certain work of

authorship

Agreements may be for all the IP rights of any kind that are necessary

to reproduce, make, use, market, and sell products based on a type of

technology

e.g. a license to develop a new software product that is protected by patent, copyright,

trademark and trade secret law

Agreements may also be for all the IP rights necessary in order to

create and market a product that complies with a technical standard

or specification

e.g. a group of enterprises has agreed on a technical standard to ensure interoperability of

devices—the group agrees to pool their IP rights and license to each other all rights each will

need to manufacture and sell the product

Complexity and level of development of the technology that is to be acquired;

Actual needs of the recipient; His technological capacity and his ability to use

and/or adapt the technology being purchased

The relevance, availability and cost effectiveness of alternative technologies

Price (in cash or any other kind)

Other proposed terms and conditions for transfer, such as support offered during and

after transfer in absorbing and adapting the new technology, or rights over

improvements or adaptations made by the recipient,

The negotiating power of both parties (which will, in turn, depend on variables such

as size, technological sector, demand for the technology, number of competitors, etc.)

The type of relationship envisaged between the two parties (e.g. long-term, short-

term or one-off purchase of products/services.)

Product liability, indemnity, warranty, etc,

Whether technical support and training for use of new technology and related

equipment is required.

An IP Audit is defined as

a systematic review of the

IP owned, used or

acquired by a business.

1st step: identify the

readily identifiable IP

2nd step: itemize external

or market influences

Valuation of these items:

How much will it cost to

replace the item if it were

lost? What is the

expected income, e.g. in

the next five years, that

can be generated by the

IP assets?

Assignment of IP Rights

Licensing Agreements

Know-How contracts

Joint Venture Agreements

Franchise

Acquisition of Equipment and Capital Goods

IP right is to give its holder a competitive advantage in its

commercial activities, by preventing unauthorized exploitation by

third parties. This is especially important for SMEs, which IP rights

provide with powerful weapons to compete with much larger

companies.

IP rights can also be licensed or used to help create or finance a

spin-off company. It is therefore possible to derive value from them

even if their owner does not have its own manufacturing capability

(e.g. universities). IPRs protection should form a part of the overall

innovation and business strategy envisaged for the asset.

Attorney at law, admitted to Paris and Brussels bars

Professor at La Sorbonne University

thibault.verbiest@ulys.net

France: +33 (0)1 40 70 90 11

Belgium: +32 (0)2 340 88 10

Israel: +972 (0)3 970 70 20