Exploiting Intellectual
Property Assets
Tamara Nanayakkara
Counsellor
SMEs Division
World Intelllectual Property Organization
Summary Slide
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New Economy
Intellectual Property and Competitiveness
Intellectual Property Assets
Exploiting IP assets
New Economy
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New economy or the knowledge economy –
Greater reliance on know-how, knowledge,
human creativity and innovation (infinite)
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“It is estimated that by 2007, as much as 90% of the value
of the world’s top 2000 enterprises will consist of
intellectual property”
Price Waterhouse Coopers
The amount of market value that cannot
be traced to tangible assets on the
corporate books.
,
Japanese IP Typhoon Still Not Even a Tropical Storm! (II), Terry Ludlow IP frontline.com, Feb 2008
New Economy
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Global market place
Demanding and fickle consumers
Shorter product cycles
Working through relationships, networks and
outsourcing
Increased competition
Pressure to do more with less
IP and Competitiveness
Design
Source
Reputation
Innovative
features
Quality
Intellectual Property and Competitiveness
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The intangibles that add value and
differentiate a product are protected by IP
The IP system provides exclusivity over the
exploitation of innovative products and
services, creative designs and business
identifiers
Exclusivity means that an owner of IP has the
right to prevent anyone else from using and
exploiting the IP right
Intellectual Property Assets
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Innovative products/ processes
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Cultural, artistic and literary works  Copyright and related rights
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Goods that have a certain quality
or reputation due to where it
comes from
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Creative designs
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Distinctive signs
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Confidential business information
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Patents or utility models
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Geographical Indications
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design rights
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Trademark
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Trade secrets
Patents
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A product or process providing a new way of
doing something, or a new technical solution
to a problem
(which may lower cost, create efficiencies,
enhance performance, add new features etc..)
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If it is new, not obvious and has industrial
applicability it could be granted a patent
which would provide an exclusive right to
prevent others from using the invention for a
maximum period of 20 years
Trademarks
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A sign that distinguishes the goods and
services of one enterprise from that of
another
Right to prevent others from using identical or
similar marks with respect to goods or
services that are identical or similar
Rights obtained through registration (or use)
Famous marks have greater rights
Design Rights
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The ornamental or aesthetic aspects of a product,
that which distinguishes that product from the
competition and makes the product appealing to a
consumer
Right to prevent others from using identical or
similar designs
Rights obtained by registration but in some
countries there exists an unregistered design right
Geographical Indications
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Goods that have a certain quality or reputation due
to the geographical region it comes from
Generally pertaining to agricultural products
Examples: Bordeaux wine, Ceylon tea, Gruyere
cheese, Swiss chocolates, Champagne, Colombian
coffee, Greek feta cheese
Copyright
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Copyright law grants authors, composers, and other
creators legal protection for their creations usually
referred to as “works.”
From a business point of view these will include
computer programs or software, content on websites,
catalogs, newsletters, manuals, artwork and text on
product literature, labels or packaging, posters etc,
It gives an author or creator economic rights to control
the economic use of his work and moral rights to protect
his reputation and integrity.
No registration required to obtain rights
Trade Secret
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If reasonable steps have been taken to keep
certain information secret and it has
commercial value by virtue of being secret it
may qualify for trade secret protection
Use of confidentiality agreements, physical
barriers to access to information and a HR
policy that values and protects the
confidential information of the business
Exploiting IP Assets
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The right to prevent a third party from using
and exploiting the IP right vests in the owner
an asset not very different to a physical
asset, such as a car or a house
Like physical assets, IP assets could be
creatively and profitably exploited
Exploiting IP assets
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Core to the competitiveness of the product or
service
Other options
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Sale, license, franchise or merchandise
Joint ventures and strategic alliances
Defensive patenting, publication
Finance
Core to the product or service
Copyright – ring tones, games, software
Trademark – Nokia connecting people, signature tune
Patent – over 10,000 patented inventions, caller name display
and caller specific ring tone two nokia patents used by most
phones, industry standard technologies. Nokia, Ericsson and
Motorola account for more than 60% of the industry's R&D –
significant entry barriers
Design – shape, look, keypad etc. The mobile phone has
become a status icon, making the product design critical in
the purchase decision
Trade secret – all of the know-how and confidential
business practices that went into the manufacture of the
device
Licensing
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Licensing is when an owner of such an
intangible asset, transfers the right to use that
asset to another, for a price, while retaining
ownership of that asset.
Licensing
The inventor licensed the system to Coca-Cola at 1/10
of a penny per can. During the period of validity of
the patent the inventor obtained 148,000 UK pounds a
day on royalties
Franchise
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A specialized license where the franchisee is
allowed by the franchisor in return for a fee to
use a particular business model and is
licensed a bundle of IP rights (TM, service
marks, patents, trade secrets, copyrighted
works…) and supported by training, technical
support and mentoring
Merchandising
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The licensing of trademarks, designs,
artworks as well as fictional characters
(protected by these rights) and real
personalities are broadly referred to as
merchandising
Defensive Patenting and Cross Licensing
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Where a product has a multitude of technologies
integrated in it covered by patents owned by
different owners access to each others' technologies
is necessary. Here the different companies will cross
license each other rather than sue each other.
Offensive patent is one that license revenue is
ensured as the other party does not have a patent
and defensive one is when the other party has one
and then you cross license each other.
Strategic Alliances
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Easier to enter into alliances when you have
a strong IP portfolio
Publication
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By publishing, the invention is no longer new
and not patentable. Decide not to patent and
prevent others from patenting
Finance
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As assets they could be pledged as a
collateral for a bank loan
Angel investors and Venture Capitalists are
inclined to invest in companies that have a
good IP portfolio