6 Edition: Managing Intellectual Property

Innovation Management and
New Product Development

6th edition
Chapter 6
Managing intellectual
property
Copyright © 2018, 2013, 2008 Pearson Education, Inc. All Rights Reserved
Table 6.1
An overview of the main types of
intellectual property
Patents
For a patent to benefit from legal protection it must

meet strict criteria:
1.novelty;
2.inventive step;
i.identifying the inventive concept embodied in the patent;
ii.whether it was common general knowledge in the art at the
time;
iii.identifying the differences if any between the matter cited and
the alleged invention; and
iv.deciding whether those differences constituted any degree of
invention.
3.industrial application.
First to file versus first to invent
• In Europe, a patent is invalid if the inventor has published
the novel information before filing for patent protection.
• In the United States there are some provisions which

allow inventors to talk first and file later.
• In Europe, patent applications are published while

pending. This allows the chance to see what monopoly
an inventor is claiming and object to the Patent Office if
there are grounds to contest validity.
• In the United States the situation is quite different –

applications remain secret until granted.
Expiry of a patent and patent
extensions
• On expiry of a patent competitors are able to use
the technology;
• In pharma such products are referred to as
generic drugs;
• The launch of generics on a product which has
just come off-patent can be considerable.
• Market share falls of 85 per cent are typical;
• Pharmaceutical drugs are relatively easy to copy.
• The principal forms of defence are brand
development and further research.
Figure 6.1
The effect on its market share of a drug
coming off-patent
Patent and patent extensions
• Patent extensions are known in Europe as

Supplementary Protection Certificates, usually
abbreviated to ‘SPC’.
• They were introduced to compensate patent owners
for regulatory delays in approving their
pharmaceuticals.
• The approvals sometimes took so long the inventor
had reduced time to commercialise it.
• In the United States the approach is to extend the
lifetime of patents where the applicant can show
regulatory delay.
Table 6.2
Reasons why firms patent
Source: Cohen, W.M. (2002) Patents: Their Effectiveness and Role, Carnegie Mellon University & National Bureau of Economic Research. With permission from Wesley Cohen.
Improved Financial Performance
• Tap patents for new revenues

– Systematic ‘mining’ of patent portfolio
 Licensing of patent rights (IBM $1bn pa)
– Acquisitions (companies with under-utilised patents)
• Reduce costs
– Portfolio maintenance costs
 Dow Chemical – $50m saving
• Attract new capital and enhance value

– Patent assets recognised by stock markets
– IP capabilities
Table 6.3
Alternative strategies to patenting
Limitations of patents
• Annual fees required
• National patent protection
• Patent harmonisation
– European Patent Convention (EPC)
– Paris Convention – 114 countries
– First-to-file (EU) vs first-to-invent (US)
• Legal costs of defence
• Limited effectiveness in some industries
– Patent life vs ‘imitation lag’
• Inventing around patents
Trademarks
• Trademarks are closely associated with business image,
goodwill and reputation.
• Many trademarks have become synonymous with
particular products.
• A trademark is any sign capable of being represented
graphically which is capable of distinguishing goods or
services of one undertaking from those of other
undertakings.
• A trademark should:
– satisfy the requirements of section 1(1);
– be distinctive;
– not be deceptive; and
– not cause confusion with previous trademarks.
Remedy against infringement
Some infringements carry criminal penalties.
But mostly a civil action is brought by the plaintiff for:
Damages
The owner of the copyright and ask the court for damages,
on the basis of compensation for the actual loss suffered.
Injunction
An injunction is an order of the court which prohibits a person
making infringing copies of a work of copyright.
Accounts
It enables access to the profits made from the infringement of
copyright.
Registered Designs
• Intended for designs with aesthetic appeal
– Toys, electrical appliances, packaging, etc.
• New designs:
– Not published in the UK
– Materially different appeal to the eye
• Outward appearance of an article

– Actual shape, configuration, pattern, etc.
• Maximum of 25 years
– Renewable for up to five five-year periods
• Similar in operation to the patent system
Source: UNICEF (2015) http://www.unicef.org/esaro/5482_HIV_AIDS.html.

6 Edition: Managing Intellectual Property

Uploaded by

Document Information

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

6 Edition: Managing Intellectual Property

Uploaded by

Copyright:

Available Formats

Innovation Management and

New Product Development

For a patent to benefit from legal protection it must

• In the United States there are some provisions which

• In Europe, patent applications are published while

• In the United States the situation is quite different –

• Patent extensions are known in Europe as

• Tap patents for new revenues

• Attract new capital and enhance value

• Outward appearance of an article

• Similar in operation to the patent system

You might also like