EFFECTS OF INTELLECTUAL PROPERTY ON
TECHNOLOGY TRANSFERAND
SMEs COMPETITIVENESS
October 30, 2012, Belgrade
Francisco Javier Riesco Ruiz, Patent ExaminerSpanish Patent and Trademark Office
TAIEX Workshop onTAIEX Workshop onthe key role of Patents in the Transfer of Knowledgethe key role of Patents in the Transfer of Knowledge
in the Knowledge-based Economyin the Knowledge-based Economy
EFFECTS OF INTELLECTUAL PROPERTY ONTECHNOLOGY TRANSFER AND SMEs COMPETITIVENESS
OUTLINE
1) Effect of IPRs on Tech-Transf PROMOTION
- Solving the risk of Imitation
- Patent as a very suitable mean for Tech-Transf
2) Effect of IPRs on SMEs Competitiveness INCREMENT
- Competitiveness Innovation IPRs
- Economic Justifications
- Exploiting IP Assets
- IP and SMEs: Obstacles
- Measures to be taken by Support Institutions
- EU projects to promote the use of IPRs
EFFECTS OF INTELLECTUAL PROPERTY ONTECHNOLOGY TRANSFER AND SMEs COMPETITIVENESS
Main Effect of IPRs on Tech Transf PROMOTION
- Main Technology Transfer Obstacle:risk of IMITATION
- Solving the risk of IMITATION
. Historic Solution to Imitation risk in Inventors Fair in Vienna (1874): Paris Convention (1883) Granting Industrial PRs to inventors / creators
- “(1) The countries to which this Convention applies constitute a Union for the protection of industrial property.
- (2) The protection of industrial property has as its object patents, utility models, industrial designs, trademarks, service marks, trade names, indications of source or appellations of origin, and the repression of
unfair competition.”
- National Treatment, Right of Priority and Independence of Patents
EFFECTS OF INTELLECTUAL PROPERTY ONTECHNOLOGY TRANSFER AND SMEs COMPETITIVENESS
Main Effect of IPRs on Tech Transf PROMOTION
. Historic Solution to Imitation risk in Inventors Fair in Vienna (1874): Paris Convention (1883) Granting Industrial PRs to inventors / creators
- Observed by EPC (art. 87), PCT (art. 1.2), TRIPS (art. 2) and others
- Berne Convention (1886) Copyright and related rights
- Industrial PRs + Copyright = Intellectual PRs (IPRs)
EFFECTS OF INTELLECTUAL PROPERTY ONTECHNOLOGY TRANSFER AND SMEs COMPETITIVENESS
Main Effect of IPRs on Tech Transf PROMOTION
Types of Creations Intellectual Property Rights Industrial products or processes (inventions)
Creative designs
Distinctive signs
Microchips
Denominations of goods attributable to a geographical origin
Confidential business information
Cultural artistic and literary works
Patents or utility models
Industrial design rights
Trademarks
Topographies of semiconductors
Geographical indications
Trade secrets
Copyright and related rights
Exclusive right to prevent others from exploiting (making, using, offering for sale, selling or importing) the invention for a maximum period of, generally, 20 years from filing date
The invention could be a product, process or a new use
Conditions: novelty, inventive step and susceptible of industrial application
National Patent law, European Patent Convention
Key tool to reward research investments
Patents
Technically less complex inventions or inventions with a short commercial life. Maximum period of, generally, 10 years from filing date
Not for a process or new use Conditions: Less stringent inventive step
required (ex: incremental innovations)
Utility Models
Appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation. No technical features protected
Exclusive right to prevent others from copying or imitations for a maximum period of, generally, up to 25 years from filing date
Conditions: originality and individual character National laws, Regulation 6/2002 on Community
Designs
Industrial Design and Model Rights
Distinctive sign suitable for distinguishing the goods or services provided by one enterprise from those of another
Words, pictures, symbols, tri-dimensional shapes, sounds or even smells
Conditions: novelty, distinctive character National law, Regulation 207/2009 on the
Community Trademark Different from a trade name
Trademarks
Coca-Cola: 67 b US$
Microsoft : 57 b US$
IBM: 56 b US$
Exclusive right to prevent others from exploiting the design of a semiconductor product, such as chip. Maximum period of, generally, 10 years from filing date or commercial exploitation or 15 from creation.
Conditions: creation’s own intellectual effort and not commonplace in the semiconductor market
National laws
Topographies of Semiconductors
Goods that have a certain quality or reputation due to the geographical region it comes from. Encompasses appellations of origin
Generally pertaining to agricultural products Examples: Bordeaux wine, Gruyere cheese,
Sierra de Segura (Jaén, Spain) Olive Oil, Swiss chocolates, Champagne, Colombian coffee
Geographical Indications
Any kind of information used by a business and preserved from the outsider access
Legal protection without registration (unlimited period of time)
General Conditions (TRIPs art. 39): Secret Information, Commercial Value and reasonable steps for keeping it secret (ex: Non Disclosure or Confidentiality Agreements)
Very well Known examples: Coca-cola formula and Source code for Windows
Trade Secrets
Copyright law grants authors, artists and other creators legal protection for their creations usually referred to as “works”. Basically authorization or not for the work reproduction
It protects books, music, films magazines, paintings, photographs, sculptures, architecture, computer programs, etc
Limited period of time (life of author plus either 50 or 70 years)
Related rights to performing artists, producers of sound recordings and broadcasting organizations
Copyright
Many IPRs in one Product 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
Many IPRs in one Product
Invention of CD playerprotected by patent
Brand on CD playerprotected by trademark
Design of CD player protected by industrial design
Music played on CD playerprotected by copyright
EFFECTS OF INTELLECTUAL PROPERTY ONTECHNOLOGY TRANSFER AND SMEs COMPETITIVENESS
Main Effect of IPRs on Tech Transf PROMOTION
PATENT as a very suitable mean for Tech-Transf
Reasons:
- Clear and complete Disclosure of the invention (Art.83 EPC)
- Worldwide uniform Estructure easier to use than know-how
- Includes State of the Art of the Technology being transfered
- Allow the transferee actually to see what he is buying, specially when a Search Report is attached or an Examination Procedure has been passed
- Indication of the holder and creator speeds up negotiations
- Developed Licensing System for transferring patent-based technology
EFFECTS OF INTELLECTUAL PROPERTY ONTECHNOLOGY TRANSFER AND SMEs COMPETITIVENESS
Effect of IPRs on SMEs Competitiveness INCREMENT
Competitiveness Innovation IPRs
Being Competitive means
Acquiring New Technology
Social Need New Product or Service Innovate
Lower Prices Cost Reduction in Known products Innovate
From an Industrial Economy (land, labor, capital) to a Knowledge Economy (based on new technology)
-By your own: R&D by the company itself or in cooperation with others
- Additional Source of Income by Exploiting IP Assets:
Licensing, Selling, Know-how Contract, Franchising, and more…
Technology itself becomes the product
- By Licensing from others
For focusing on SMEs 23 million SMEs account for 70% of the EU jobs
and Gross Domestic Product (GDP) For focusing on IPRs
30-40% of US gains in productivity and growth over the 20th century is linked to innovation
70% of the value of the top enterprises consists of IPRs Assets
Enable SMEs to attract investment capital and to access finance (ex: start-ups having IPRs as their core assets)
Economic Justifications
Lack of IPR protection deters investors form undertaking local production and encourages them to focus on distribution of imported products
Econometric Models testing and confirming the positive correlation between IPRs and FDI (Foreign Direct Investment), Manufacturing and Profit
(Papers of Javorcik, Wakasugi, Branstetter,..)
Economic Justifications
EXPLOITING IP ASSETS
LicensingSaleKnow-how ContractFranchisingJoint Ventures
Effect of IPRs on SMEs Competitiveness INCREMENT
Permission given by the owner of a patent to another person or legal entity to perform one or more of the “acts” which are covered by the exclusive rights.
Main elements of a License agreement: Limitations: what “acts” of exploitation in what
territories. Restrictions to part of the claims Exclusive or non-exclusive Lump Sum, royalties, inflation Infringement and disputes Duration Special Licenses: FRAND licensing, Compulsory
Licenses, ….
Licensing
The patent holder licensed the ring pull system to Coca-Cola at 1/10 of a penny per can. During the period of validity of the patent the holder obtained 148,000 UK pounds a day on royalties
Licensing
Effect of IPRs on SMEs Competitiveness INCREMENT
Sale: The owner rights pass form seller to buyer (Assignment). Ideal solution for owner with no market experience or not interested in technology at work
Know-How Contract: In a tangible form (documents, photographs, blueprints) or intangible form (explanations of processes)
Franchising: Business arrangement in which reputation, technical information and expertise of one party are combined with the investment of another for the purpose of selling goods. Usually based on a trademark, service mark or trade name license
Joint ventures: alliance between two separate companies in which licensing agreements or know-how contracts are integrated
IP and SMEs: Obstacles
SMEs worldwide, especially those in developing countries or countries in transition, largely under-utilize the intellectual property because they
Are generally unaware about IP and its role in competitiveness
Find the cost of obtaining and maintaining IP high Find the costs of defending their IP rights daunting
(litigations) Find the IP system complex Lack qualified human resources to use IP system
Effect of IPRs on SMEs Competitiveness INCREMENT
Effect of IPRs on SMEs Competitiveness INCREMENT
Awareness-raising and Training Activities Technological Information Services Financial Assistance Customised Advisory Services Assistance on IP Exploitation and
Commercialisation As today’s fresh idea becomes tomorrow’s old
idea reminding the need for keeping on innovating in the future
Diagnosis of the IP needs of the enterprise (IP Audit)
Measures to be taken by Support Institutions
Effect of IPRs on SMEs Competitiveness INCREMENT
IPR-Helpdesk: On-line Help with
professional advice on specific IP or IPR query
Experienced lawyers for answering personal IP issues
Training events on different aspects of IP management and IPR
Regular publications: eMail Newsletter and the Bulletin
EU projects to promote the use of IPRs
Effect of IPRs on SMEs Competitiveness INCREMENT
IPeuropAware: support to national intellectual property offices improving their business support services about IPR
EU projects to promote the use of IPRs
Effect of IPRs on SMEs Competitiveness INCREMENT
China IPR SME Helpdesk: pilot project to help small and medium-sized businesses facing IPR problems in, or arising from, China
EU projects to promote the use of IPRs
Maybe new Helpdesks for
the Asian and Mercosur Regions
Effect of IPRs on SMEs Competitiveness INCREMENT
On-line catalogue of IPR tools for SMEs
EU projects to promote the use of IPRs