INTELLECTUAL PROPERTY

SERVICE INDUSTRY
IN THE EUROPEAN UNION
Benoit Misonne, Team Leader | IP Key
Beijing, 5 September 2014 | Qingdao

A project funded by the European Union

 Background to IP Key

• EU-China Cooperation Projects on the Protection of

Intellectual Property Rights
• IPR1 (1999 – 2004): Focus on legislation
• IPR2 (2007 – 2011): Focus on enforcement
• Evolving relationship, beyond technical assistance,
enhance cooperation in the sphere of economic
and competitive development
• New EU-China Activity-Based Cooperation on IP
• EUs financial contribution through “Intellectual
Property: A Key to Sustainable Competitiveness”, or IP
Key (2013 – 2016)
 Before we start …

• IP as a business tool to protect investments (ref.:

Venice, Statute of Queen Anne, etc.)
• Not about IP but about innovation and doing
business!
• It is not, and it shouldn’t be any company’s
objective to quantify the number of IP they want to
register as a set objective. Rather, any business’
objective is to create added value and generate
profits, then the deriving interests from all other
stakeholders: government, workers, consumers,
society, etc.
 Contents

• IP Service Industry in the EU

• Traditional IP intermediaries
• IP Information Systems
• IP Valuation

• EU led initiatives to boost the knowledge economy:

• Intellectual Property for Innovation (IP4INNO)
• Enterprise Europe Network (EEN)
• IPR Helpdesk(s)
 Traditional IP
intermediaries
In-house counsels, IP strategists and law firms will support
companies develop an IP strategy, IP filing, enforcement
strategies, etc.
 Aligning your business & IP strategies

• Align your IP strategy with your overall business strategy - it

starts at the top  CEO / COO / CFO

• What is your company’s business strategy?

• Establish a new market?
• Become a significant player in an existing market?
• Develop your market share vis-à-vis your competitors?
• Maintain your market share in a mature market?
• Build your company by organic growth?
• Build your company by acquiring others?
• Protect your company from acquisition by others?

• IP strategy must reflect and help to drive overall company

strategy – different at different stages of the company’s
development
  advice to right holders

• Make use of professional experts!

• Esp. in setting up IP strategy
• Contracts, in particular technology related: R&D,
licensing, etc.
• In IP dispute cases (active and passive)

• For patent/design/trademark applications in

Europe, you need external patent/IP attorneys in
the respective member states …
 Elements of an IP Strategy

• Defend  towards third parties

• Protect  your own achievements
• Employ  to enhance your business
• Exploit  to generate money defend

protect
IP employ
strategy

exploit
Source: Dr. Bertram Huber, Rechtsanwalt - IP*SEVA, Backnang (Stuttgart)
 European Union ≠ European Patent Convention ≠ Europe
Geographical considerations‘

Source: http://de.wikipedia.org/w/index.php?title=Datei:Office_europeen_brevets.svg&filetimestamp=20101002175823
 Geographical considerations

Term of protection Registration Examination

Patent 20 years Registration Substantial

Utility models National National National

Design 10 years Registration Only formal examination

Trademark Unlimited Registration Substantia

Copyright National No registration -

Know-how unlimited No registration -

Source: Dr. Thomas Pattloch, Taylor Wessing

 Geographical considerations

EPO fees • Cost of a "sample"

EUR 4,300
National renewal fees
EUR 8,500 European patent
• Reduce post-grant
14% Professional translation costs for the
Representation
29% before the EPO European patent
EUR 5,500
18%

39%

EUR 11,500
Translation in the contracting states
London Agreement
1)
20 pages, 10 claims, 8 states, 10-year term

Source: Dr. Thomas Pattloch,

Taylor Wessing
 Geographical considerations

• Countries where European companies usually file

applications:

Countries,
future
markets
Japan

Countries in which
competitors produce

USA

Home country &

European Patent
IP Information Systems
 Benefits of patents | Inventors

• For inventors, patents can:

• help safeguard financial returns from the commercial
exploitation of the invention
• give holders time to recoup their development costs
• encourage further investment in R&D
 Benefits of patents | Economy

• For the economy, patents are a prime source of

new technical knowledge:
• Search and analysis of IP drives research strategy and
supports innovation management
• Integrating activities for IP search and analysis in
technology strategy formulation leads to higher
probability of success in new technology ventures

Patents foster technical innovation, which is crucial to

competitiveness and overall economic growth
 Patent Search | Why?

• Avoids unnecessary research which is already done

• prevent the duplication of R&D in industry and
universities
• Identify new technological trends + Identify
alternative technologies = inspire further inventions
• Find ready solutions for technical problems
• Identify & locate business partners
• Monitor activities of potential competitors
• Find interesting personal for your company
• Oppose grant of patents of possible conflict
• Precondition for any valuating
 Searches | Useful at many stages

Someone has a great idea New ? Inventive ?

Industrial Application ?
Patent data search

Found a commercial partner, investment, realism,

Trademarks ? Distribution
Patent data search

Developed / Perfected
Patent data search

Marketing
Patent data search

Sales contracts
Patent data search

Enforcement of rights in relevant territories

 Patent Search | Where?

• From free – entry level patent

info on esp@cenet (EPO)

• To professional databases and

landscaping software e.g.：
• EPO | Global Patent Index (GPI)
• Questel | ORBIT
• Thomson Reuters | Derwent
World Patents Index
• Etc.
 TTOs/KTOs: Fill the gap
Filling the gap between invention and application
 Shifting paradigm

Before Now
• Inventions rather than innovations • Innovations based on research and
science
• Patent is an academic merit
• No patenting unless there is money
• No support to tech entrepreneurs to be made
• Researchers motivated by further • Venture capital
research
• Entrepreneur-in-residence
• Pricing as part of research contract
• Motivation to get rich or see use of
• Reactiveness in commercialization results
• Avoid risks • Market pricing
• Domestic focus • Plan for commercialization
• Fail fast, try again
• No time to waste in becoming global

Source: VTT
 Challenge | Increasing income stream

• High cost of prosecuting patent families

• Cost analysis
• Licenses / patents ratio?
• Mony cow licenses / patents?
• The goal is to find a balance between :
• Leaving enough space so that you avoid to pass on a
great and high value invention
• Be selective enough to maintain a manageable portfolio
and keep cost under control
 TTO/KTOs in R&D work

Basic research

Applied TTO/KTOs
research

Development

Source: VTT
 European initiatives
Support to industry (esp. SMEs) focusing at awareness raising,
capacity building & networking to max. use of IP as a business
tool.
 In brief:

Business,
IP &
IP capacity Techxfer in
building in EU
EU

IP as a
business
tool
abroad

Enterprise Europe Network (EEN),

IP4INNO, European IPR SME Helpdek(s),
etc.
 EEN

• Aim: “one-stop shop” to meet all the information

needs of SMEs and companies to make the most of
business opportunities in EU's single market

• 600 different organisations encompassing over 4,000

staff in over 40 countries
• Chambers of Commerce, RDAs or DAs or University technology
centres
• Designed for SMEs but available to all businesses,
research centres and universities across Europe
• Aspires to be a two-way network bringing the European
Commission closer to businesses and vice versa
• Services are free of charge

Source: EEN
 IP4INNO

• Based on a Europe-wide training needs and

methodologies analysis
• Intermediaries: High level of IP knowledge. Focus on training
others
• TTOs and Researchers:
• Need to publish and an unstable / unavailable IP budget
• Integration of IP tools into curricula is an important step to improving
the use of IP tools by future researchers.
• SMEs: specific areas where training is necessary for SMEs:
• instruments / mechanisms of basic IP protection and enforcement,
• instruments / mechanisms to avoid IP violation, such as the
importance of technology watch or surveillance and examples of
good practice,
• strategic use of IP and commercialisation techniques.
Time and money issues, focus on how IP can be a profit-making
exercise / Also, need to be shown that other, less costly and less
complex IP instruments exist whose procedures are not so
complicated.
 IP4INNO | Output  IPR2

Access to modules:
 HTTP://WWW.IP4INNO.EU (originals)
 HTTP://IPR2.IPR.GOV.CN (Chinese)
Going-out: IPR SME Helpdesk(s)

• information and services free

of charge
• case study catalogue and
solutions centre, e-learnings,
direct enquiries to the desk
• raising awareness and
preparing SMEs for IPR issues
on external markets: "know
before you go"
• business-focused and
practical first-line advise
• delivering IPR business tools
and self-help solutions
(guides, e-learning, etc.)

In China: www.china-iprhelpdesk.eu
 Thank You!
Room 2480, Sunflower Tower
No. 37 Maizidian West Street
Beijing, China 100125 The EUs financial contribution for the new intellectual
property cooperation is provided through ICI+ project
"Intellectual Property: a Key to Sustainable Competiti-
[t] +86 10 8527 5705 veness (IP Key)” whereas China's financial contributions will be provided
through its own means. IP Key is implemented (and co-financed) by the
[f] +86 10 8527 5708 Office of Harmonization for the Internal Market (OHIM) in partnership
[e] info@ipkey.org with the European Patent Office (EPO) and builds on the achievements
of past EU-China cooperation projects, most recently the EU-China IPR2
[w] www.ipkey.org project.