An Overview of National and
International Intellectual Property
Systems and the Role of WIPO
Guriqbal Singh Jaiya
Director, SMEs Division
World Intellectual Property Organization (WIPO)
Guriqbal.jaiya@wipo.int
Basic Facts about WIPO
WIPO’s Mission:
To promote the protection of IP rights
worldwide and extend the benefits
of the international IP system to all
member States
Status: An int’l intergovernmental organization
Member States: 183
Staff: 915 from 94 countries
Treaties Administered: 24
Decisions by: GA, CC, WIPO Conference
Guiding Principles: Transparency, Accountability,
Consensus
Milestones : 1883 to 2006
2002
1989
1970
1967
1960
1925
1891
1886
1883
1893
BIRPI
Madrid Agreement
Berne Convention
Paris Convention
WIPO established
WIPO Convention
BIRPI moves to Geneva
Hague Agreement
Madrid Protocol
PCT
1970
Internet
Treaties
Intellectual Property:
A Tool for Development
“In the age of the knowledge economy, the efficient
and creative use of knowledge is a key determinant of
international competitiveness, wealth creation and
improved social welfare.”
“An effective intellectual property (IP) system
embedded within a national strategy which anchors IP
considerations firmly within the policy-making process
will help a nation to promote and protect its
intellectual assets, thereby driving economic growth
and wealth creation.”
Kamil Idris
WIPO Director General
Types of IP Rights
•
•
•
•
•
•
•
•
Trade Secrets
Copyright and Related Rights
Industrial Designs
Trademarks (Brands)
Geographical Indications
Utility Models and Patents
New Varieties of Plants
Unfair Competition
Strategic Goals
• Promotion of an IP culture
– build a foundation for more solid & extensive IP culture
– better understanding & use of IP system.
– Greater respect for IP rights
• IP policies as part of Nat’l Dvpt. Strategies
• Development of balanced IP laws responsive to
emerging needs
• Delivery of quality global IP protection systems
• Enhanced Access to IP System
– practical solutions to empower all stakeholders to develop,
protect, enforce, manage and commercially exploit IPRs for
development
Outreach
Public Sector & Policy-Makers
Building awareness
Intellectual
Property
Offices
General Public, Private Sector & Civil Society
WIPO’s Activities
Services
to
Industry
NormSetting
Economic Development
NORM SETTING
• AIM: Progressive development of international
IP law for an IP system that is:
– balanced/responsive to emerging needs
– effective in encouraging innovation/creativity
– sufficiently flexible to accommodate national policy objectives
• Address/provide info. on current & emerging
issues in IP - (review/discussion of topical
issues in standing committees).
NORM SETTING
atents
A Success Story:
Functional challenges:
(success has generated operational issues)
Political challenges: (greater public scrutiny)
> Clarify current/emerging issues
> Discuss improvements in op. principles/practice
> Address issues in line with national/international
economic development strategies
Aim: Take into account interests of all stakeholders.
A system that is balanced, reliable, swift, user-friendly,
accessible, cost-effective
NORM SETTING
opyright & Related Rights:
- encourage broader use of system
- ensure it is in line with digital environ.
Priorities:
Implementation of WCT/WPPT
(major step forward in updating CR at international
level)
Build consensus on topical issues
NORM SETTING
rademarks, Designs, Geographical
Indications
Tools for domestic/international commerce,
marketing strategies
• Develop int’l TM law (TLT Revision)
• Legal advice
• Promote convergence of admin. practices
• Soft Law approach
• Promote dvpt./use of registration systems
NORM SETTING
Traditional Knowledge, Access to Genetic
Resources, Folklore
Aim: Generate practical benefits from using IPS/use IP
assets to support socio-ec. development, cultural integrity of
communities/address concerns of indigenous peoples, etc
Genetic Resources & Benefit Sharing
Traditional Knowledge & Innovations.
IGC (2000): Int’l Forum for tackling issues at several
interlocking levels
debating broad policy and legal questions;
sharing practical experience; and
developing practical tools and mechanisms
Current situation: Maturing process - common objectives/
core principles.
WIPO GA: new mandate - international dimension/no
outcome excluded
ECONOMIC DEVELOPMENT
To maximize strategic use of
IP for development by:
- updating IP legislation
- upgrading IP infrastructure
- demystifying IP
- promoting understanding of policy
options offered by IPS
Approach: tailored to specific national needs
(NFAPs, etc. via regional offices)
Focus Shift: deliverables, capitalize on
assistance rendered.
EMPHASIS ON ….
•
•
•
•
Networks - synergistic relationships
Outreach
Training
Collective Copyright Management
Organizations
• Promotion of Creativity and Innovation
ACADEMIC TRAINING
WIPO WORLDWIDE ACADEMY
• Distance Learning Program
• Professional Training
• Policy Dvpt., Teaching & Research
• Approach: Training trainers
» Partnerships with Academic
Institutions/IGOs/NGOs - synergies for dvpt.
» Joint programs/publications, promo. materials
INNOVATORS & SMES
• Dynamic Economic Sector
• Aim: improve IP awareness to enable formulation &
implementation of:
– policies;
– programs;
– strategies
to enhance strategic use of IP assets by
R&D, Innovators/SMEs
e.g. licensing agreements; finance; IP
information to monitor competitors, etc.
GUIDELINES & FILING
SERVICES
I. Enhancement of global protection systems to
further simplify and reduce costs of obtaining
protection in multiple countries for:
PATENTS (PCT):
- PCT Reform
- E-filing
TRADEMARKS (MADRID)
INDUSTRIAL DESIGNS (HAGUE)
GEOGRAPHICAL INDICATIONS (LISBON)
MICRO-ORGANISMS (BUDAPEST)
THE PATENT COOPERATION
TREATY
PCT
160000
140000
120000
100000
80000
60000
40000
20000
2005
2004
2003
2002
2001
2000
1999
1998
1997
1996
1995
1994
1993
1992
1991
1990
0
WIPO LEGAL SERVICES
Alternative dispute resolution (ADR) offered by
WIPO Arbitration & Mediation Center - tailormade D R procedures, e.g.:
- UDRP criteria:
- identical/confusingly similar
- legitimate interest
- bad faith
- cost-effective and expeditious
procedure (see http://arbiter.wipo.int)
- WIPO Trademark Database Portal
(http://ecommerce.wipo.int/databases/trademark/)
WIPO’S INCOME
2006-2007
15%
1%2%
6%
76%
Total: 531 M CHF
Member States
PCT System
Madrid Sytem
Hague System
Other
From Invention to
Innovation
While invention depends
upon creativity,
successful technological
innovation requires
integrating new knowledge
with multiple business
functions.
Innovation – What is it?
The creation of new ideas/processes which
will lead to change in an enterprise’s
economic or social potential
[P. Drucker, ‘The Discipline of Innovation’,
Harvard Business Review, Nov-Dec, 1998, 149]
What is Innovative Thinking?
– A means of generating innovation to achieve two objectives that are
implicit in any good business strategy:
• make best use of and/or improve what we have today
• determine what we will need tomorrow and how we can best
achieve it, to avoid the « Dinasaur syndrome »
– Innovative thinking has, as a prime goal, the object of improving
competitiveness through a perceived positive differentiation from
others in:
•
•
•
•
Design/Performance
Quality
Price
Uniqueness/Novelty
Obstacles to Successful
Innovation
•
Competitive position
•
Market judgement
•
Technical performance
•
Manufacturing expertise
•
Financial resources
Innovation
How to classify newness and degree of
innovation and what to focus on:
• New to the firm?
• First in the market?
• First in the world?
• Incremental or radical innovation?
There are several types of new products. Some are new
to the market, some are new to the firm, and some are
new to both. Some are minor modifications of existing
products while some are completely innovative
Product Development Strategies
Old Product New Product
Old
Market
Market
Penetration
Product
Development
New
Market
Market
Development
Product
Diversification
Marketing principles…….
•
Identify opportunities and threats
•
Identify customer needs
•
React to a competitive environment
•
Careful planning to make a New or improved product
•
Use the 4 P’s….
•

Product service

Price

Promotion

Place (distribution)
Retain flexibility to react to changes
The Development of Technology: From
Knowledge Generation to Diffusion
IM ITATION
Supply side
Basic
Knowledge
Invention
Innovation
Diffusion
Demand side
ADOPTION
Innovation Process
Invention
Innovation
Imitation
• The adoption of an
innovation by similar
firms
• Usually leads to
product or process
standardization
• Products based on
imitation often are
offered at lower prices
but with fewer features
The Innovation Process
• An innovation starts as an idea/concept that is
refined and developed before application.
• Innovations may be inspired by reality (known
problem). The innovation (new product
development) process, which leads to useful
technology, requires:
–
–
–
–
–
Research
Development (up-scaling, testing)
Production
Marketing
Use
• Experience with a product results in feedback and
leads to incrementally or radically improved
innovations.
The Innovation Process
Translation of a Creative Idea into
Useful Application
Analytical
Planning
To Identify:
Product
Design
Market
Strategy
Financial
Need
Organizing
Resources
Implementation
Commercial
Application
To
To Provide:
To Obtain:
Accomplish: Value to Customers
Materials
Organization Rewards to Employee
Technology
Product Design Revenue to Investors
Human Resources
Manufacturing Satisfaction of
Capital
Services
Founders
The Profitability of Innovation
Profits
from
Innovation
Value of an
innovation
• Legal protection
Innovator’s
ability to
appropriate
value from an
innovation
• Ease of imitation
of technology
• Complementary
resources
• Lead time
Appropriating Value from Innovation
Barriers to Integration
Different Time
Orientation
Interpersonal
Orientation
Different Goal
Orientation
Formality of
Structure
Facilitators of
Integration
Shared Values
Leaders’ Vision
Budget Allocation
Effective
Communication
Time to
Market
CrossFunctional
Integration/
Design Teams
Product
Quality
Creation of
Customer
Value
Value
Appropriation
from
Innovation
Product Life Cycle
Maturity
Decline
Sales
Growth
Introduction
Time
New Product Development
Stages in a New Product Development process:
• Idea Generation
• Idea Screening
• Concept Development and Testing
• Business Analysis
• Beta Testing and Market Testing
• Technical Implementation
• Commercialization
Technology Adoption – Diffusion of Innovation
Time
Take up Rate
Early
Adopters
Innovators
Innovators:
Early adopters:
Early majority:
Late majority:
Laggards:
Early
Majority
Late
Majority
Laggards
venturesome; greatest need
opinion leaders; needs driven
deliberate
skeptics
traditionalists; suspicious
New Business Models Emerge
Then…
Now…
CRO’s
Product
Development
Product
Development
Cycle
Tool
Companies
One Integrated
Company
CRM’s
Testing
Services
Many Distributed
Companies
New Regional Model Emerge
Then…
Now…
Region D
Region A
Region B
Manufacturing
Region C
Research
Trials/Testing
Services
Development
Self-contained
regional clusters
Region G
Region E
Region F
Specialized,
networked regions
Commercialization Model
• Strategic Investment is the Foundation of a
Successful Commercialization Model
What Investors Look for?

Novelty; world-class; evidence of commercial
interest; clear path to market

Unencumbered, or encumbered by reasonable
conditions (Equity, royalties)

Protection (Non-disclosure agreements,
Patents, Designs, Brands, Copyright)

IP protected by one or more Patents is the IP
required to implement the business plan

“Freedom to Operate”
Innovation, Intellectual Property
and Poverty Reduction
Critical Ingredients for Innovation:
• Intellectual Capital
• Human Capital
• Financial Capital
• Proximity
• Social Network Capital
Complementary Resources
Manufacturing Distribution
Finance
Core
technological
know-how
Service
Complementary
technologies
Marketing
Other
Other
Bargaining power of owners of complementary
resources depends upon whether complementary
resources are generic or specialized.
Alternative Strategies for Exploiting Innovation
Licensing
Risk &
Return
Strategic
Alliance
Joint
Venture
Shares
investment &
risk. Risk of
partner
conflict &
culture clash
Small risk, but
limited returns
also (unless
patent position
very strong
Limits
investment, but
dependence on
suppliers &
partners
Benefits of
flexibility;
risks of
informal
structure
Few
Allows outside
resources &
capabilities
To be accessed
Permits pooling of the
resources/capabilities of
more than one firm
Konica
licensing its
digital
camera to
HP
Pixar’s movies (e.g.
“Toy Story”)
marketed &
distributed by
Disney.
Competing
Resources
Examples
Outsourcing
certain
functions
Apple and
Sharp build
the
“Newton”
PDA
Microsoft
and NBC
formed
MSNBC
Internal
Commercialization
Biggest risks &
benefits.
Allows complete
control
Substantial
resource
requirements
TI’s
development of
Digital Signal
Processing
Chips
Uncertainty & Risk Management in Tech-based Industries
Technological
uncertainty
Sources of
uncertainty
Market
uncertainty
Selection process for standards and
dominant designs emerge is complex
and difficult to predict, e.g. future of 3G
Customer acceptance and adoption rates
of innovations notoriously difficult to
predict, e.g. PC, Xerox copier, Walkman
Cooperating with lead users
early identification of customer requirements
–assistance in new product development
Strategies for
managing risk
Flexibilility
—keep options open
—use speed of response to adapt
quickly to new information
—learn from mistakes
Limiting risk exposure
—avoid major capital commitments
(e.g. lease don’t buy)
—outsource
—alliances to access other firms’
resources & capabilities
—keep debt low
Innovation risk
RISKS
RESEARCH
COSTS
DEVELOPMENT
COMMERCIALISATION
Mortality of New Product Ideas
The “ Right” Innovative Product?
 The right product is one that becomes
available at the right time (i.e., when the market
needs it), and is better and/or less expensive
that its competition.
 To have the right product, therefore, one must:
 Predict a market need
 Envisage a product whose performance and
capability will meet that need
 Develop the product to the appropriate time scale
and produce it.
 Sell the product at the right price
Innovation and Competitive Advantage
Difficult for
competitors to imitate
Commercially exploitable
with present capabilities
Provides significant
value to customers
Timely
Competitive
Advantage
Strategic Entrepreneurship
and Innovation
• Entrepreneurship is concerned with:
– The discovery of profitable opportunities
– The exploitation of profitable opportunities
• Firms that encourage entrepreneurship are:
– Risk takers
– Committed to innovation
– Proactive in creating opportunities rather than
waiting to respond to opportunities created by
others
Entrepreneurship
Creativity is at the heart of entrepreneurship, enabling entirely new
ways of thinking and working.
Entrepreneurs identify opportunities, large or small, that no one
else has noticed.
Good entrepreneurs also have the ability to apply that
creativity—they can effectively marshal resources to a single end.
They have drive—a fervent belief in their ability to change the way
things are done, and the force of will and the passion to achieve
success.
They have a focus on creating value—they want to do things
better, faster, cheaper.
And they take risks—breaking rules, cutting across accepted
boundaries, and going against the status quo.
Entrepreneurship
Defining entrepreneurship is difficult because there is no
universal, clear-cut definition of the term. In its most basic
sense, entrepreneurship is manifest in a business venture
when an individual is able to turn a novel idea into a
profitable reality. In practice, however, entrepreneurship is
more multifaceted, ranging from operating a small
business in one’s own home, to bringing a national
franchise to a small town, to turning a new and unique
idea into a high-growth company. Entrepreneurship can
involve starting a business that brings a new store to main
street, offering a product or service previously unavailable
to a community, or acquiring an existing business that has
had a long-standing presence in a community and helping
it evolve to reflect one’s own vision and personality.
Entrepreneurship
The word entrepreneurship literally means, "to take or
carry between" in the sense of an economic
transaction; to be a market-maker. It does not literally
convey the notion of innovation that we commonly
associate with the term.
Joseph Schumpeter (1883-1950), one of the more well
known theorists on entrepreneurship, defined an
entrepreneur as one who reorganizes economic activity
in an innovative and valuable way. That is, an
entrepreneur is one who engages in a new economic
activity that was previously unknown. An entrepreneur
is a risk taker because being innovative means there
are few rules or history for guidance.
Entrepreneurship
Entrepreneurship is the process of
creating or seizing an opportunity, and
pursuing it regardless of the resources
currently controlled.
The Webster’s Third New International
Dictionary defines an entrepreneur to be
“one who organizes, owns, manages,
and assumes the risks of a business”
Entrepreneurship
The entrepreneur shifts resources out of an area of lower and
into an area of higher productivity and greater yield.
[J. B. Say, French economist, circa 1800]
Entrepreneurship is creative destruction. Dynamic
disequilibrium brought on by the innovating entrepreneur,
rather than equilibrium and optimization, is the norm of a
healthy economy and the central reality of economic theory
and practice. [Joseph Schumpeter, Austrian economist, 1911]
The entrepreneur searches for change, responds to it, and
exploits it as an opportunity. Innovation is the specific tool of
entrepreneurs, the means by which they exploit change as an
opportunity for a different business or a different service
[Peter Drucker, 1985]
Entrepreneurship
Entrepreneurship drives innovation,
competitiveness, job creation and economic
growth.
It allows new/innovative ideas to turn into
successful ventures in high-tech sectors
and/or can unlock the personal potential of
disadvantaged people to create jobs for
themselves and find a better place in society.
Entrepreneurship
Entrepreneurship, in small business
or large, focuses on "what may be" or
"what can be".
One is practicing entrepreneurship by
looking for what is needed, what is
missing, what is changing, and what
consumers will buy during the coming
years.
Entrepreneurship
Entrepreneurs have:
– A passion for what they do
– The creativity and ability to innovate
– A sense of independence and self- reliance
– (Usually) a high level of self confidence
– A willingness and capability (though not
necessarily capacity or preference) for taking
risks
Entrepreneurship
Entrepreneurs do not (usually) have:
– A tolerance for organizational bureaucracies
– A penchant for following rules
– A structured approach to developing and
implementing ideas
– The foresight to plan a course of action once
the idea is implemented and established
Entrepreneurial Success
1. People (Entrepreneur /Entrepreneurial
Team)
2. Opportunity (Marriage of Market and
Product/Service)
3. Access to Resources (Land. Labor,
Capital, Knowledge)
And the fit amongst these three elements
Major factors determining success of
a new product in the market
• The product provides functional
advantages
• Lower price for comparable
product
• More attractive design (look)
• Reputation of brand
• Easy access: Available in the main
retail shops
• Consistent product quality
• Excellent after-sales services
Competitive Advantage
Criteria…
Low cost producer
Product differentiation
Niche market
Need two
processes:
NPD and
NB(usiness)D
New Product
Development
Breakthrough
Innovation
An opportunity
driven path to
marketa different
business design
New Business
Development
Innovative
New Products
New
Businesses
Protection of IP
Value adding
Ideas
Confidentiality or Nondisclosure
Agreements (Trade Secrets)
Research
Technologies
Products
Collaborative Research
Agreement
Utility models, Patents
Technology Licensing
Agreement, Branding
Intellectual Property Questions
Intellectual Property (IP) Issues/questions during New Product
Development (NPD):
Can the innovation be legally protected? For how long?
How does one protect an innovation from imitators? How much
will it cost? When to protect? Do you need to rely on an IP
expert?
The answers are complicated by the fact that one or more types
of legal frameworks may be used to protect a particular
innovation, product, process, or creative work. These include
trade secrets, trademarks, designs, patents, and copyright.
It is necessary to know which are applicable and when each is
appropriate. This varies somewhat from jurisdiction to
jurisdiction. The advice of a lawyer that specializes in these
matters is essential
Intellectual Property Questions
•It is necessary to know which types
of intellectual property rights (IPRs)
are applicable and when is each
type of IPR appropriate. This varies
somewhat from one country to
another.
•The advice of an IP lawyer is
desirable if not essential.
Background
• In September 2000, the WIPO
Assemblies approved the creation of
“a substantial new program of
activities, focusing on the IP-related
needs of SMEs worldwide”
• SMEs Division established in
October 2000
• Nine professionals and three
administrative staff in the SMEs
Division of WIPO
Strategy
•
•
•
•
•
•
1.
2.
3.
4.
5.
6.
Demystification
New audience
New Areas
Proactive
E-Services
Partnership
(1) Demystification
• Studies
• Guides
• Events and expert
missions
• Website and
newsletter
• CD-ROM
• Magazine articles
(1) Demystification (Studies)
• National Studies (on IP and SMEs)
completed or under way in Argentina,
Bhutan, Mongolia, Nepal, Philippines, Sri
Lanka, Tanzania, Sierra Leone, Romania,
Chile, Colombia, Costa Rica, El Salvador,
Honduras and Paraguay, Egypt, Morocco,
Lebanon
• WIPO Survey of IP Services to Tenants of
European Technology Incubators
• Norwegian SMEs and the IPR system
(1) Demystification (Guides)
• WIPO/ITC Guide on Marketing of Crafts and Visual
Arts; Role of Intellectual Property; A practical guide
• WIPO/ITC Guide on Secrets of Intellectual
Property: Guide for Small and Medium Sized
Exporters
• WIPO/ITC Guide on Exchanging Value:
Negotiating Technology Licensing Agreements - A
Training Manual
• ITC Guide on Exporting Automotive Components
• ITC Guide on Pharmaceutical SMEs (Forthcoming)
IP for Business Series
• Making a Mark
(Trademarks)
• Looking Good
(Designs)
• Inventing the
Future (Patents)
• Creative
Expression
(Copyright and
Related Rights)
(1) Demystification (Guides)
• Translation and/or customization: Under
way, with funding from several sources, in
the following countries: Algeria, Argentina,
Australia, Canada, Czech Republic, Egypt,
Estonia, Hungary, Italy, India, Israel,
Kenya, Lebanon, Malaysia, Malta,
Mongolia, Morocco, New Zealand,
Philippines, Poland, Slovakia, Spain,
Tanzania, Tunisia, Vietnam
• 16 Countries members of the OAPI
(1) Demystification (Events)
• Special programs, seminar and
workshops organized by the SMEs
Division in Geneva in partnership
with selected associations and
organizations (IASP, INSME, IPI,
MOST, WASME)
• Annual WIPO Forum on IP and SMEs
for IP Offices of OECD Countries
(1) Demystification (Events)
• WIPO-Italy Forum on
Textile and Clothing
Industries of the
Mediterranean Basin
Countries (Prato, Italy December 2003)
• Participants from Algeria,
Cyprus, Egypt, Jordan,
Israel, Lebanon, Malta,
Morocco, Palestine, Syria,
Tunisia, Turkey
(1) Demystification (Website)
• The Website of the SMEs Division is
in six UN languages (English, French,
Spanish, Arabic, Russian and
Chinese)
• More than 100,000 pages viewed
every month in 2006
• Contents include sections such as IP
for Business, IP and E-Commerce,
Activities, Best Practices, Case
Studies and Documents
SMEs Website
(1) Demystification (Newsletter)
• Monthly e-newsletter in the 6 UN
languages (Free)
• Content includes articles, updates with
information, links and documents
• Launched in August 2001
• Total number of subscribers: >25,000
(1) Demystification (CD-ROM)
• 50,000 copies of the SMEs Division
CD-ROM distributed to SME support
institutions, IP Offices and others
worldwide
• Marketing and customization
• E-learning CD ROM (in partnership
with KIPO: “IP Panorama”)
• SAARC CD-ROM (in preparation)
(1) Demystification (Articles)
• Some articles recently published:
– What to do if you are accused of copyright infringement
– Tapping into Patent Information: a buried treasure
– International trade in technology – licensing of knowhow and trade secrets
– Intellectual Property and E-commerce: how to take care
of your business’ website
– Offshore outsourcing and IP
– Savvy marketing: merchandising of IP rights
(2) New Audience
• Bringing IP issues to SME events
• Bringing new business perspective to IP
events
• New partnership: Open door policy
• IGOs, government focal points, SME
support, training and financial
institutions, chambers of commerce and
industry, SME associations, SME
research institutions, private sector
institutions, universities, etc...
(3) New Areas
•
•
•
•
IP for financing (venture capital, securitization)
Accounting and valuation of IP assets
IP Asset Management, IP Due Diligence and IP Audit
Fiscal policies and IP (tax incentives for R&D
activities, patenting, licensing etc.)
• IP services to SMEs by incubators, technology
parks, chambers of commerce and SME
associations
• IP needs of SMEs in agriculture, biotechnology,
handicrafts, software, textiles, etc
(4) Being Proactive
• Original Content
• Links
• Best Practices
• Case Studies
(5) E-Services
•
•
•
•
•
Web site content
SME mail
E-mail newsletter
Distance learning (proposed)
Discussion forum (proposed)
(6) Partnership
• National and Regional IP Offices
• National SME focal points in government, private
sector
• Chambers of Commerce and Industry
• SME Associations; Cooperatives
• Incubators, Science Parks, Technology Parks
• Universities; R & D Institutes
• Private Sector Consultants
• SME Finance Institutions (including venture
capitalists)
• Other UN Agencies (ITC, ILO, UNIDO, AfDB, UN
Regional Commissions)
Bringing it All Together
Example No. 1
• Decades ago, Coca-Cola decided to keep its
soft drink formula a secret
• The formula is only know to a few people
within the company
• Kept in the vault of a bank in Atlanta
• Those who know the secret formula have
signed non-disclosure agreements
• It is rumored that they are not allowed to
travel together
• If it had patented its formula, the whole world
would be making Coca-Cola
Bringing it All Together
Example No. 2
• Patent for stud and tube
coupling system (the way
bricks hold together)
• But: Today the patents
have long expired and the
company tries hard to keep
out competitors by using
designs, trademarks and
copyright
Bringing it All Together
Example No. 3
• 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
Bringing it All Together
Example No. 4
® Registered Trade Mark
‘TM’ Unregistered
Registered Design
Copyright: Labels & Artwork
Patents: Several dozen!
Bringing it All Together
Example No. 5 : Personal Computer
• Patent protection for the innovative functional
features of the computer
• Trademark protection for the brand name that
goes on the box
• Copyright protection for the software that runs
inside
• Trade secret protection for the semiconductor
processing techniques used to create the
processor
IP TRIGGERS
• Starting up, investing in, buying or selling a business
• Selecting a name or logo for a product, service, or company
• Developing a new product or service (biotechnology,
software, devices, and instruments)
• Improving an existing product or service
• Applying for a government grant
• Entering into a government, academic, or corporate
collaboration
• Bringing on a key employee or contractor for design,
research, or development work
• Providing business or technical information to suppliers,
customers, partners or investors
• Launching a major sales effort or marketing initiative
• Maintaining or expanding a customer list
• Searching for advantages in a competitive market
• Setting up a website for your business
Key Message 1
IP adds value at every stage of the value
chain from creative/innovative idea to putting a
new, better, and cheaper, product/service on
the market:
Trademarks/ GIs
Ind. Designs/Patents/Copyright
Patents /
Utility Models/Trade secrets
Patents /
Utility models
Invention
Commercialization
Marketing
Financing
Literary / artistic
creation
Copyright/Related Rights
All IP Rights
Industrial Designs/
Trademarks/GIs
Product Design
Licensing
All IP Rights
Exporting
Key Message 2
• IP Strategy should be an integral part of the
overall business strategy of an Enterprise
• The IP strategy of an Enterprise is influenced by
its creative/innovative capacity, financial
resources, field of technology, competitive
environment, etc.
• BUT: Ignoring the IP system altogether is in
itself an IP strategy, which may eventually prove
very costly or even fatal
Key Message 3 (More for Less)
• Own Use
• Licensing
• Franchising
• Merchandising (Mickey
Mouse, Hello Kitty)
Key Questions
–
–
–
–
–
What are the IP assets of a business?
Status of the company’s IP Portfolio?
How important are IP assets to the business?
How does the company protect its IP assets?
How does the company protect itself from the
IP assets of others?
– What is the company’s IP policy and
strategy?
– Is the Company’s business strategy and IP
strategy aligned ?
– Is the company getting the best value out of
its IP assets?
Hierarchy of IP Value
Biz Strategy
Driver
Build Markets and Relationships
Design Freedom
Manage Competition
Protecting Inventions
Potential Return
Deliver Revenue
Stage 1: IP Health Check
 Identification/Documentation/Product review:
• patents, trademarks, copyright
• technical specifications, manufacturing and design
documents
• benefits statements, product descriptions, marketing
statements
 IP Management:
• process
• capture, registration
Stage 2: IP Consolidation
IP Protection:
• IP Gap/Risk Analysis
• includes DRM focus
IP Management:
•IP Register (Build/Refresh)
•IP Management Process
“Like financial management, IP management
must be disciplined and process rich to be
effective”
Stage 3: IP Management
 IP Register
 IP Management Process
 IP as an Asset – Culture
 Resultant IP – IP Capture process/tools
 “The interaction between a company’s IP and the
IP of others (eg key suppliers of operating software,
infrastructure and services) in our increasingly
interconnected world is a rich source of resultant, and
ultimately valuable, IP”
Stage 4: IP Commercialisation
 ‘To Market’ advantage for your valuable
resultant IP
 An IP lifecycle management advantage
 New or enhanced IP revenue streams
 Constantly refresh and extract from your IP
repository
 IP ROI
 “Uncaptured, unidentified and/or ill-managed
IP cannot contribute to the overall IP ROI
businesses must aspire to realise”
IP Management Tips
• Integrated management of all IP
• Allocate responsibility
– Inside and outside
• Conduct research
• Create, maintain, and enforce rights
• Careful timing of decisions
– Timely filings
– Budget planning for expensive actions
• Avoid liability and ownership disputes
– IP owners
– Customers
– Collaborators
IP Management
•
•
•
•
•
•
•
Legal
•
Technical
•
Business
•
Export
•
Financial
Relationships•
Accounting
Tax
Insurance
Security
Automation
Personnel
An Aspect of Good Management
•
People Management –
because IP is generated by people and
used by people
•
Knowledge Management –
because a lot of knowledge is informal
and may or may not crystallise as
recognisable category of IP
•
IT Strategic Planning –
because a lot of IP is IT-related; some
of the more complex IP issues arise in
IT context
•
Contract Management –
in context of a contract (eg,
because IP is often created (or improved)
supply contract or joint venture
relationship)
•
Asset Management –
because IP is an asset, albeit intangible;
it has a value
•
Risk Management –
because there are risks to an
organisation flowing from its actions, or
failure to act, in relation to IP (including
risk of lost opportunity)
with permission of
P Crisp, AGS, 2003
Thank You
Guriqbal Singh Jaiya
guriqbal.jaiya@wipo.int
www.wipo.int/sme/en/index.html
www.wipo.org