Exploiting Intellectual Assets There’s a lot more to intellectual assets than just patents and trademarks.

Find out about the assets that you are not protecting or exploiting

Ken Marr Targeting Innovation Ltd

Agenda

• Why intellectual assets?

• Tangible - or - intangible assets

• Intellectual property

• Asset protection

• Asset exploitation

Why Intellectual Assets?

The Best a Man can Get TM

Intangible Assets

Intellectual Capital

Intellectual Property/Assets

Human Capital

Intellectual Assets

External Facing Factors

Product/Service Based

Contract Based

Customer and Supplier

Business Organisation

Intellectual Property

Copyright/Database Rights

Patent

Trade Mark

Design Right

Trade Secret

Tangible - or - Intangible Assets

External Facing Factors

• Product Based

• Contract Based

• Customer & Supplier

• Business Organisation

Intellectual Property

• Copyright/Database

• Patent

• Trade Mark

• Design Right

• Trade Secret

Intellectual Assets & Intellectual Property

Overview of Intellectual Property

Legal right What for? How?

Copyright Original creative or

artistic forms

Trade marks Distinctive identification of products or services

Use and/or registration

Registered designs

Registration*

Patents New inventions Application and

examination

Exists automatically

Trade secrets

External appearance

Valuable information not known to the public

Reasonable efforts to keep secret

Asset Protection

• MONOPOLY RIGHTS

• CERTAIN TIME PERIOD

• ALL REQUIRE FINANCIAL OUTLAY

REGISTERED

Forms of Protection

UNREGISTERED

PATENTS

REGISTERED TRADE MARKS ®

REGISTERED DESIGNS

UNREGISTERED TRADE MARKS TM

UNREGISTERED DESIGNS

COPYRIGHT

KNOW HOW/ CONFIDENTIAL INFORMATION

NOT TRUE MONOPOLY RIGHTS

NEED TO RECORD YOUR

ORIGINATION OF THEM

IN A DISPUTE AN ELEMENT OF COPYING

OR USE MUST BE DEMONSTRATED

CONFERRED RIGHTS ARE FREE

Copyright

Trade secrets

• Any information (formulae, methods, manufacturing processes, financial data, customer lists etc.)

e.g. formula for Coca-Cola, McDonald’s “special sauce”, KFC 11 herbs and spices

• Held secret through its holder’s reasonable effort

• Conferring economic value /competitive advantage due to its secret nature

• Indefinite duration (until disclosed/discovered)

• Means of protection:

Confidentiality agreements

Technological measures

• National unfair competition law

11

Registered Designs

Robert Welch Designs Ltd

142922

Argos

Unregistered Design Right (UK only)

Chloe £185 Topshop £35

Karen Millen Dunnes Stores

• Original designs protected against copying

• Protects shapes and configurations (internal or external)

• Design protected for 10 years from first marketing, or 15 years from

first creation, whichever is shorter

Asset Exploitation

Sell

License

DIY

Product

• Licensing Agreements

• Technical Know-how

• Proprietary Technical / Production Material

• Processes / Methods

• Product Development Knowledge

• Un-patented Know-how

Contract

• Licensing Agreements

• Consulting Agreements

• Alliances and Partners (e.g. Freelance)

• Non Competitive Covenants and NDAs

Customer and Supplier

• Customer List

• Networking

• Repeat Business

• Market Know-how

• Long-term Contracts

• Affiliations & Networks

• Management Methods

Non IP Assets

• Know-how and show-how e.g. Named designer, R&D company

• Process procedures and technical information e.g. Training manual, help desk

• Confidential information / trade secrets e.g. Drambuie, Irn Bru

• Management systems and infra-structure e.g. John Lewis

• Unregistered trade marks and domain names

• Contracts e.g. employee, lease, license, etc

• Image enhancing customers e.g. by Royal Appointment

• Goodwill and reputation e.g. Virgin not Ratners

• Customer and supplier knowledge and networks e.g. CRM

• Accreditations e.g. ISO, IIP

• Market knowledge

SELL DESIGN

LICENCE DESIGN

DESIGN, MARKET, SELL OUTSOURCE MANUFACTUING (DISTRIBUTION)

CARRY OUT FULL PROCESS SOURCE MATERIALS, MANUFACTURE, MARKET, SELL, DISTRIBUTE, SUPPORT

Some Business Model Options

Some Business Model Options

Lump sum received from purchaser

No requirement to have further involvement with product, i.e. design, marketing, sales, realisation, distribution, etc.

No ongoing costs

Possibility to use funds to develop additional products

No ongoing costs

Income received depending upon sales (and potential lump sum) which are dependent upon deal

Available to work on new designs

Ready outlet for new products, etc.

No further involvement in product

All further development out with control

Funding may be required to get product to stage where sale takes place

How to get full value of design

Sales and future developments outwith control

Sales, etc. are dependent upon others

Funding may be required to get to stage where agreement can be made

Cost of deal and negotiations

SELL DESIGN

LICENCE DESIGN

PRO CON

Now Over to You…

How to exploit Scotland’s intellectual assets.

What are they?

What are they worth?

How would you exploit them?

License?

You have just 15 minutes

Securing Ownership

Who Owns Copyright

• Image taken by Carolyn Robb, the Prince's executive chef.

• Settled for a "four figure fee" for use by Royal Mail.

Exploiting IP – Extracting Value

• Exploitation - Identification - Securing ownership - Actions - Strategy

• Make/market it yourself

• Assign the rights (sell)

• License the rights

• Identify, secure, exploit

• Focus on Commercial Opportunity

• Consider Capacity of Owner

• Lay Foundation of a Business Proposition

IP for Commercial Benefit: Not just for the sake of it.

IP Strategy

You Can Think Out of The Box

So how do you do it?

• Develop an Intellectual Assets policy

• What action is appropriate for your organisation to manage and protect its brand assets?

• IP Registration: protect trade marks, designs rights, copyright

• IA manual to ensure that use of all trade marks, design rights, copyright is consistent.

• Be consistent … across everything

• Creating internal processes and training to ensure that everyone sticks to policy.

Summary

• Why intellectual assets?

• Tangible - or - intangible assets

• Intellectual property

• Asset protection

• Asset exploitation

Bye Bye