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

Guriqbal Singh Jaiya

Director, SMEs Division World Intellectual Property Organization (WIPO) Guriqbal.jaiya@wipo.int

Basic Facts about WIPO

WIPOs Mission: To promote the protection of IP rights worldwide and extend the benefits of the international IP system to all member States
Status: An intl intergovernmental organization Member States: 183 Staff: 915 from 94 countries Treaties Administered: 24 Decisions by: GA, CC, WIPO Conference Guiding Principles: Transparency, Accountability, Consensus

Milestones : 1883 to 2006

2002 1989 1970 1970 1967 1960 1925 Hague Agreement 1891 1886 1883 1893 BIRPI Madrid Agreement Berne Convention Paris Convention PCT WIPO established WIPO Convention Internet Treaties

Madrid Protocol

BIRPI moves to Geneva

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.
WIPO Director General

Kamil Idris

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 Natl 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

Outreach
Public Sector & Policy-Makers

Building awareness

Intellectual Property Offices

General Public, Private Sector & Civil Society

WIPOs Activities

Services to Industry

NormSetting

Economic Development

NORM SETTING
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 atents

A Success Story: Functional challenges:

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

(success has generated operational issues)

NORM SETTING
opyright & Related Rights: - encourage broader use of system - ensure it is in line with digital environ.
level)

Priorities: Implementation of WCT/WPPT (major step forward in updating CR at international Build consensus on topical issues

NORM SETTING
rademarks, Designs, Geographical Indications
Tools for domestic/international commerce, marketing strategies Develop intl TM law (TLT Revision) Legal advice Promote convergence of admin. practices Soft Law approach Promote dvpt./use of registration systems

NORM SETTING
Traditional Knowledge, Access to Genetic Resources, Folklore
assets to support socio-ec. development, cultural integrity of communities/address concerns of indigenous peoples, etc
Genetic Resources & Benefit Sharing Traditional Knowledge & Innovations.

Aim: Generate practical benefits from using IPS/use IP

IGC (2000): Intl 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

ACADEMIC TRAINING
WIPO WORLDWIDE ACADEMY
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

INNOVATORS & SMES

Dynamic Economic Sector
Aim: improve IP awareness to enable formulation & implementation of: policies; programs; strategies to 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)

THE PATENT COOPERATION TREATY

160000 140000 120000 100000 80000 60000 40000 20000 0
1990 1991 1992 1993 1994 1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005

PCT

WIPO LEGAL SERVICES

Alternative dispute resolution (ADR) offered by WIPO Arbitration & Mediation Center - tailormade 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/)

WIPOS INCOME 2006-2007

15% 1%2% 6%

Member States PCT System Madrid Sytem Hague System Other

76%

Total: 531 M CHF

From Invention to Innovation

While invention depends upon creativity, successful technological innovation requires integrating new knowledge with multiple business functions.

Innovation What is it?

The creation of new ideas/processes which will lead to change in an enterprises economic 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 Innovation

Competitive position
Market judgement

Technical performance
Manufacturing expertise Financial resources

Innovation
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?

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

Old Product New Product Old Market

Market Penetration Market Development Product Development Product Diversification

New Market

Marketing principles.
Identify opportunities and threats Identify customer needs React to a competitive environment Careful planning to make a New or improved product

Use the 4 Ps.

Product service Price Promotion Place (distribution)

Retain flexibility to react to changes

The Development of Technology: From Knowledge Generation to Diffusion

IM ITATION

Supply side
Basic Knowledge Invention

Innovation

Diffusion

Demand side
ADOPTION

Innovation Process
Invention

Innovation

Imitation

The adoption of an innovation by similar firms Usually leads to product or process standardization Products based on imitation often are offered at lower prices but with fewer features

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.

The Innovation Process

Translation of a Creative Idea into Useful Application
Analytical Planning To Identify: Product Design Market Strategy Financial Need Organizing Resources Implementation Commercial Application

To To Provide: To Obtain: Accomplish: Value to Customers Materials Organization Rewards to Employee Technology Human ResourcesProduct Design Revenue to Investors Manufacturing Satisfaction of Capital Services Founders

The Profitability of Innovation

Profits from Innovation

Value of an innovation

Legal protection Complementary resources Ease of imitation of technology Lead time

Innovator s ability to appropriate value from an innovation

Appropriating Value from Innovation

Barriers to Integration Different Time Orientation Interpersonal Orientation Different Goal Orientation Formality of Structure Facilitators of Integration

Time to Market
CrossFunctional Integration/ Design Teams

Product Quality Creation of Customer Value

Value Appropriation from Innovation

Shared Values
Leaders Vision Budget Allocation Effective Communication

Product Life Cycle

Maturity Decline

Sales

Growth

Introduction

Time

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 Innovation

Time

Take up Rate
Early Adopters Innovators Early Majority Late Majority

Laggards

Innovators: Early adopters: Early majority: Late majority: Laggards:

venturesome; greatest need opinion leaders; needs driven deliberate skeptics traditionalists; suspicious

New Business Models Emerge

Then
CROs

Now
CRMs

Product Development Cycle

Tool Companies

Product Development

Testing Services

One Integrated Company

Many Distributed Companies

New Regional Model Emerge

Then
Region A Manufacturing Research Trials/Testing Services Development Region G Region E Region F Region B Region C

Now
Region D

Self-contained regional clusters

Specialized, networked regions

Commercialization Model
Strategic Investment is the Foundation of a Successful Commercialization Model

What Investors Look for?

Novelty; world-class; evidence of commercial interest; clear path to market Unencumbered, or encumbered by reasonable conditions (Equity, royalties)

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

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

Innovation, Intellectual Property and Poverty Reduction

Critical Ingredients for Innovation:

Intellectual Capital
Human Capital Financial Capital

Proximity
Social Network Capital

Complementary Resources
Manufacturing Distribution

Finance

Core technological know-how

Service

Marketing Other

Complementary technologies
Other

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

Alternative Strategies for Exploiting Innovation

Licensing

Outsourcing certain functions Limits investment, but dependence on suppliers & partners Allows outside resources & capabilities To be accessed

Strategic Alliance

Joint Venture

Internal Commercialization

Risk & Return

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

Benefits of flexibility; risks of informal structure

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

Biggest risks & benefits. Allows complete control

Competing Resources

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

Substantial resource requirements TIs development of Digital Signal Processing Chips

Examples

Konica licensing its digital camera to HP

Pixars movies (e.g. Toy Story) marketed & distributed by Disney.

Apple and Sharp build the Newton PDA

Microsoft and NBC formed MSNBC

Uncertainty & Risk Management in Tech-based Industries

Selection process for standards and dominant designs emerge is complex and difficult to predict, e.g. future of 3G Customer acceptance and adoption rates of innovations notoriously difficult to predict, e.g. PC, Xerox copier, Walkman

Technological uncertainty Sources of uncertainty Market uncertainty

Cooperating with lead users

early identification of customer requirements assistance in new product development

Strategies for managing risk

Limiting risk exposure

avoid major capital commitments (e.g. lease dont buy) outsource alliances to access other firms resources & capabilities keep debt low

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

Innovation risk

RISKS

COSTS

RESEARCH

DEVELOPMENT

COMMERCIALISATION

Mortality 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

Innovation and Competitive Advantage

Difficult for competitors to imitate Commercially exploitable with present capabilities

Provides significant value to customers

Timely

Competitive Advantage

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

Entrepreneurship
Creativity 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 creativitythey can effectively marshal resources to a single end. They have drivea 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 valuethey want to do things better, faster, cheaper. And they take risksbreaking rules, cutting across accepted boundaries, and going against the status quo.

Entrepreneurship
Defining 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 ones 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 ones own vision and personality.

Entrepreneurship
The 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.

Entrepreneurship
Entrepreneurship is the process of creating or seizing an opportunity, and pursuing it regardless of the resources currently controlled. The Websters Third New International Dictionary defines an entrepreneur to be one who organizes, owns, manages, and assumes the risks of a business

Entrepreneurship
The 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.

Entrepreneurship
Entrepreneurship, 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 and Product/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 Advantage
Criteria
Low cost producer Product differentiation Niche market

Need two processes: NPD and NB(usiness)D

Breakthrough Innovation

An opportunity driven path to marketa different business design

New Product Development

New Business Development

Innovative New Products

New Businesses

Protection of IP
Value adding
Ideas

Confidentiality or Nondisclosure Agreements (Trade Secrets)

Collaborative Research Agreement Utility models, Patents Technology Licensing Agreement, Branding

Research

Technologies

Products

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. 2. 3. 4. 5. 6. Demystification New audience New Areas Proactive E-Services 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 knowhow 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. 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. 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. 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

Bringing it All Together Example No. 4

Registered Trade Mark

TM Unregistered Registered Design

Copyright: Labels & Artwork Patents: Several dozen!

Bringing it All Together Example 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:
Patents / Utility Models/Trade secrets Patents / Utility models Invention Industrial Designs/ Trademarks/GIs Commercialization Marketing Trademarks/ GIs Ind. Designs/Patents/Copyright All IP Rights

Financing
Literary / artistic creation

Product Design
Licensing

Exporting

Copyright/Related 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 companys 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 companys IP policy and strategy? Is the Companys business strategy and IP strategy aligned ? Is the company getting the best value out of its IP assets?

Hierarchy of IP Value
Biz Strategy Driver Deliver Revenue Build Markets and Relationships Potential Return

Design Freedom Manage Competition Protecting Inventions

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 companys 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 Knowledge Management because IP is generated by people and used by people because a lot of knowledge is informal and may or may not crystallise as recognisable category of IP because a lot of IP is IT-related; some of the more complex IP issues arise in IT context

IT Strategic Planning

Contract Management in context of a contract (eg,

Asset Management Risk Management risk of lost opportunity)

because IP is often created (or improved) supply contract or joint venture relationship)
because IP is an asset, albeit intangible; it has a value because there are risks to an organisation flowing from its actions, or failure to act, in relation to IP (including

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