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Patents and innovation management. Christoph Bruhn European Patent Academy. Istanbul 04 December 2009. Innovation. Successful exploitation of new ideas. Bringing a new idea to the market, leading to a new product, a new method or service. Innovation includes a process. Creation of ideas.

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patents and innovation management

Patents and innovation management

Christoph Bruhn

European Patent Academy

Istanbul 04 December 2009

innovation
Innovation

Successful exploitation of new ideas

Bringing a new idea to the market, leading to a new product, a new method or service

Innovation includes a process

Creation

of ideas

Project

design

Project

development

Production

Market

launch

innovation process
Innovation process

Creation

of ideas

Project

design

Project

development

Production

Market

launch

Intellectual assets

Know how and information on

  • Market & customers
  • Technology & production
  • Competition
  • Investors & funding
  • Risks & opportunities
patent management
Patent management

Assessment

Be aware of your intellectual assets

Risk determination

Determine the risks related to your assets

Evaluation

Understand the value of your assets

Decision on use

Decide on strategic use of your patents

Protection

Manage your patent portfolio

patent management1
Patent management

Assessment

Be aware of your intellectual assets!

Know-how of your experts!

Patents, trade marks,

designs, brands

Licenses, NDAs,

Ideas, inventions,

project concepts, construction plans

Market surveys, competitor information

Marketing concepts, promotion material, films, photos, logos

New products,

methods, uses, formulations,

construction manuals, computer programmes

Customer lists, supplier, distribution lists

Test material, series, prototypes,

trials, samples

patent management2
Patent management

Assessment

Be aware of your intellectual assets!

Systematic assessment and inventory of intellectual assets of your company

and its partners, subcontractors, consultants!

Clarification of ownership

Regular review and update

Participation/involvement of company areas (management, R&D, marketing, legal, finance, personnel...)

clarify ownership
Clarify ownership!
  • Who is the author, inventor, creator etc. of an intellectual asset?to what extend (share)?
  • Include possible external authors/inventors (contract staff, consultants, subcontractors, partners)
  • Essential for
    • application/registration of protection rights
    • employee‘s compensation and motivation (!)
    • negotiation with investors
    • licensing, collaboration, selling, ...
patent management3
Patent management

Assessment

Be aware of your intellectual assets

Risk determination

Determine the risks related to your assets

risks
Risks!

You cannot use your own product

Infringement of third party‘s rights

Change, substitution of technology

No market for your products

Competitor copied/designed „around“ your product

Dominated by competitors

You will not find an investor

No project clearance

No appropriate protection

You cannot transfer your IP

Unclear ownership

risks1
Risks!

You cannot use your own product

Infringement of third party‘s rights

Freedom to operate search!

No market or shrinking market for your products

Change, substitution of technology

Competitor copied/designed „around“ your product

Dominated by competitors

freedom to operate fto
Freedom to Operate (FTO)

Condition for full use and commercialisation of a product or processwithout infringing third parties‘ rights

Pre-requisite for

  • Selling, marketing, importing
  • Using for development, testing
  • Licensing, collaboration,
  • Funding, investment

FTO analysis: identify valid patents that might be infringed by own products:

  • Search in patent databases (patents & applications!)
  • Detailed analysis of critical patents
fto analysis
FTO Analysis

Regular review to consider

  • New patents filed (incl. patents not published before)
  • Changes in status (invalidity, country coverage)
  • Progress in own development (more precise search terms, field coverage)

Special consideration of critical patents:

  • Coverage of claims & countries (valid?, really infringing?)
  • Licensing-in, cross-licensing, collaboration
  • Inventing around

Can be very costly, but balanced by potential savings

risks2
Risks!

You cannot use your own product

Infringement of third party‘s rights

Freedom to operate search!

No market or shrinking market for your products

Change, substitution of technology

Technology trend analysis!

Competitor copied/designed „around“ your product

Dominated by competitors

risks3
Risks!

You cannot use your own product

Infringement of third party‘s rights

Freedom to operate search!

No market or shrinking market for your products

Change, substitution of technology

Technology trend analysis!

Broader protection, blocking patents!

Competitor copied/designed „around“ your product

Dominated by competitors

risks4
Risks!

You cannot use your own product

Infringement of third party‘s rights

Freedom to operate search!

No market or shrinking market for your products

Change, substitution of technology

Technology trend analysis!

Broader protection, blocking patents!

Competitor copied/designed „around“ your product

Cross-licensing, collaboration!

Dominated by competitors

risks5
Risks!

Freedom to Operate!

You will not find an investor

No project clearance

Convincing protection policy!

No appropriate protection

You cannot transfer your IP

Unclear ownership

risks6
Risks!

Freedom to Operate!

You will not find an investor

No project clearance

Convincing protection policy!

No appropriate protection

Inventory of IP!

You cannot transfer your IP

Unclear ownership

patent management4
Patent management

Assessment

Be aware of your intellectual assets

Risk determination

Determine the risks related to your assets

Evaluation

Understand the value of your assets

evaluation
Evaluation
  • Market
    • Customer demand
    • Market access, growth
    • Market barriers
    • Competition
  • Motives
    • Selection of ideas in early project phase
    • Decision on investment in a technology
    • Portfolio management
    • Decision on licensing, selling

Value assessment

Relative: Quantitative:

Which is the best What is the

Idea, invention, monetary

product, process? (€) value?

  • Technology
    • Innovative level
    • Technological attractivity
    • R&D requirements
    • Technological fit
  • Legal status
    • FTO?
    • Protectable?
    • Protective scope
    • Enforceable?
patent management5
Patent management

Assessment

Be aware of your intellectual assets

Risk determination

Determine the risks related to your assets

Evaluation

Understand the value of your assets

Decision on use

Decide on strategic use of your patents

use of patents
Use of patents

To protect & defend your business

  • Excluding others from using, selling, copying, etc.
  • Defending your competitive advantage
  • Enforcement against infringement
  • Blocking competitors‘ freedom to operate
  • Forcing competitors to design around your patent scope
use of patents1
Use of patents

To attract investment

To increase your liquidity

To save money

To generate additional income

  • Valuable and strong patent portfolio is pre-requisite for external investment
  • Licensing-out your IP rights will generate income from royalties, up-front payment to increase liquidity in early project phase
  • Cross-licensing will open the door for co-operation and saving development cost
  • Cross-licensing may prevent from infringement litigation
use of patents2
Use of patents

To get access to

  • Technologies
  • New markets
  • Established production capacities
  • Distribution channels
  • Patents as bargaining chips for access to technologies, freedom to operate
  • Licensing-out your IP rights will bring you access to new markets, additional complementary production capacities, distribution channels
  • Cross-licensing will open the door for co-operation, joint ventures
decision on use
Decision on use
  • Integration into business/patent strategy, innovation management
  • Open innovation/collaboration vs. Internal development with own resources
  • Critical factors:
    • Capacity of own resources
    • Know-how
    • Complementary assets
    • Technology portfolio
    • Competition
  • Regular review (portfolio management)
    • New developments (in market, competition, own project, technology trend)
    • New applications/reduce/abandon patents
patent management6
Patent management

Assessment

Be aware of your intellectual assets

Risk determination

Determine the risks related to your assets

Evaluation

Understand the value of your assets

Decision on use

Decide on strategic use of your patents

Protection

Manage your patent portfolio

protecting intellectual assets
Protecting intellectual assets
  • Particular relevance for
    • Results of R&D, project design and production/process development
    • Know-how transfer in the context of licensing, selling, collaboration
    • Attracting investors
  • Set-up (integrate with) patent strategy
    • Defensive/offensive/commercial exploitation
    • Competition
    • Market policy
    • Regular revision, portfolio management
    • Participation/communication with management, finance, R&D, production, marketing
  • Consider different options of protection
    • Patenting/secrecy (NDA policy!)/publication/lead time to market/control of technology & complementary assets
    • Type of technology, product life cycle, value of asset
    • Seek expert consultancy, patent/trademark attorney
options for protection of inventions
Options for protection of inventions

Patenting

  • Social deal: Exclusivity for disclosure of invention
  • Costs, time limit 20 years

Defensive publishing

  • Disclosure of technology, no exclusivity
  • Prevention of patenting by third parties

Trade secrets

  • Requires secrecy management, NDAs
  • No disclosure, but only suitable for process inventions

Lead-time to market

  • For short product life cycles
  • Product development, marketing, distribution faster than competitors

Control of complementary assets

  • Control of technology/market/distribution
innovation process1
Innovation process

Creation

of ideas

Project

design

Project

development

Production

Market

launch

Patent management: Regular review & screening of resulting intellectual assets

Use of Patent Information to support Innovation & patent management

key recommendations
Key recommendations
  • Be aware of your intellectual assets
  • Create awareness for the risks and opportunities related to IP in your company
  • Appoint a person/team in your company responsible for IP, provide support from top management
  • Seek professional help; outsource special tasks to professional experts
  • Set-up and integrate a patent strategy with your business/innovation strategy
  • Don‘t invest before freedom to operate search
  • Make use of patent information
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