organized by the world intellectual property organization (wipo) and the turkish patent institute...

© Vladimir Yossifov, 2011 1

WIPO TRAINING OF TRAINERS PROGRAM ON EFFECTIVE INTELLECTUAL PROPERTY ASSET MANAGEMENT BY SMALL AND MEDIUM-SIZED ENTERPRISES

(SMEs)

organized by the World Intellectual Property Organization (WIPO)

and the Turkish Patent InstituteIstanbul, September 13 to 15, 2011

Shaping Business Strategy through Competitive Intelligence – Strategic Use of Intellectual Property Information

presented by Vladimir Yossifov,

Consultant, IP Services


IntroductionKnowledge + Brainpower + information

= competitive advantageInnovation and creativity lead to

competitive advantage Information revolution in private and

professional life - information a marketable product

Technology & inventions, knowledge & information are parts of innovation process

The World Wide Web; a tool for access to information and dissemination


Growing Role of Intellectual Property Rights (IPR)

IPR = Information incorporated in tangible objects, reproduced in different locations

IPR = Economic Asset control over technology, new products & processes secure the way to “competitive advantage”

A sound patent system provides a legal environment conductive to encouragement of innovation and technology transfer


Growing Role of Intellectual Property Rights (IPR)

Worldwide patent applications - each year over two million, result in some 800,000 granted patents

Patent documents published each year over two million, total published over 60 million


Insufficient Use of Information Contained in Patent Documents

Surveys show that less than 7% of enterprises use patent literature as an innovative instrument

Less than 20% of companies with more than 100 staff use patent literature for business and R&D intelligence

Only 2-3% of SMEs (enterprises with less than 100 staff) use patent literature for business and R&D intelligence

55% of patent applications originate from enterprises with 500 & more employees


Insufficient Use of Information Contained in Patent DocumentsIn EC countries, billions per are lost

every year for duplicate R&D work – some researchers speak of 30% of European R&D being duplicative work.,

UK Patent Office refers to 20 billion Pounds wasted to develop things already developed and documented.


Insufficient Use of Information Contained in Patent Documents

Users of patent information are not informed about patent literature

Small improvements are also disclosed in patent documents.

Patent documents disclose most recent information which is not divulged in other form of literature

Without information about the state-of-the-art, there is a high risk of developing a product a second time

Industrial property offices should make publicity for their existing services


Importance of Industrial Property Rights for SMEs, R&D and Business Development

Enterprises, in particular SMEs, universities or R&D organizations should manage their intellectual property assets (inventions and patents for inventions, industrial designs, trademarks, know-how, trade secrets, geographical indications and appellations of origin, software, copyright, etc.)

identify intellectual property developed, acquired and used by its employees;

to decide on ownership in intellectual property developed, acquired and used;


Importance of Industrial Property Rights for SMEs, R&D and Business DevelopmentThe IP system was set-up to encourage and reward creative and entrepreneurial individuals

In the modern era, many of these creative and entrepreneurial individuals create SMEs to promote their inventive ideas to the market place.

Are SMEs inventive and innovative entities?

Are they more inventive then LARGE companies?

Why?


Inventors, Inventions, Information and the Real World

Many SMEs created on the basis of innovative ideas and products

Successful inventions respond to real needs

Cooperation between: creators of invention & technology, explorers & market creators, invention & technology users

Crucial point in the innovation process: production, marketing & commercialization stage


Inventors, Inventions, Information and the Real WorldPatents documents: description of

scientific, technical concepts & practical details of processes & apparatus

Inventions have an economic value when used in industry

Incentive for the creation of new technology & inventions (exclusive rights to inventors)

NOTE: Patents are business tools, however granted on technical criteria, not on commercial merits!


Information Aspects of the Industrial Property SystemFunctions: Protection &

Information Importance of information

sharing: Publication is the basis for new technological development by other inventors

Unique source of technological and business information

Growing number of IP offices using the Internet to publish patent documents


Information Aspects of the Industrial Property System

The IP System:Incentive to create new technology = new

products, inventions and commercial opportunities

Legal framework to encourage investmentInstrument for commercial & industrial

planning & strategic decision-makingPublication of information

◦ new R&D projects◦ a catalyst for commercialization of

inventions


Information Aspects of the Industrial Property SystemMatches technology, suppliers &

recipientsStimulates invention & innovation

through the pool of technological information in patent documents

State-of-the-art searches: to prevent duplication in research work, to identify newly developing areas of technology for future R&D activity and product development


Industrial Property Information as a Source of Business Intelligence

Indicator of countries or companies’ activities in various fields

IPR analysis: a means of forecasting future industrial developments in different countries and company strategies

Monitoring technology trends and competitors' R&D activities Early indicator for business and market expansion Early indication of future trends in a company’s activities Technological information in patent documents is not secret,

freely used to support business and R&D activities If a given invention is not protected by a patent in the

country of the user, it can be used industrially and commercially in that country, without need of the consent of the owner.

Patent only requested if there is an economic interest


Patent documents cover most of what is new and most of what is worthwhile knowing about technology development.

Patent documents have a fairly uniform structure:

the claims give the essence of what is new;

the description - gives the background to the invention; and

defines the difference between the pre-existent technology and what the invention contributes to technology development.

Advantages of Patent Documents as a Source of Business Intelligence


Many patent documents contain an abstract and drawings.

Patent documents generally contain information which is not divulged in any other form of literature.

70% of the technology disclosed in U.S. patent documents from in the 70’s had not been disclosed in non-patent literature.



Patent documents bear “classification symbols” which facilitate searching and retrieving information

The International Patent Classification (IPC) has been established by an intergovernmental agreement, and is now applied by over 130 Patent Offices worldwide.

Patent documents belonging to a given classification subdivision contain a highly concentrated technically advanced information on a given technological field.

Advantages of Patent Documents as a Business Intelligence Source



User Groups:Industry: especially R&D intensiveR&D InstitutionsSmall & medium-size enterprisesIndividual inventorsProfessionals in Industrial PropertyEducational institutions &

university studentsGovernment authorities


Advantages of Patent Documents as a Source of Business IntelligenceInformation contained in patent documents is

useful to: identify new ideas & technical solutions, products & processes

identify the state-of-the-art in a specific technological field

avoid duplication of R&D work improve an existing product or process develop new technical solutions, products &

processes identify existing or prospective IPR’s assess novelty & patentability monitor activities of competitors identify a market niche reverse Engineering assess & evaluate specific technology & identify

licensors identify alternative technology & its sources locate sources of know-how in a specific field of

technology


Characteristic of Patent Documents & their Contents

Description, Claims, DrawingsAbstractsClassificationDateInventor, Applicant, Owner


Patent documents bear a date. Patent documents indicate the name and address of the applicant, the patentee (the owner), the inventor, and the agent or representative, or at least one or two of those persons.

Patent documents often give detailed information on the possibility of the practical application of an invention.

Characteristic of Patent Documents & their

Contents

23

Various Types of Searches Using Patent Documentation

Pre-Application Searches (PAS)State-of-the-Art Searches

◦ Especially useful in relation to technology development or technology transfer

Novelty Searches◦ To discover relevant prior art, disclosed in

patent documents or any scientific publications

Patentability or Validity Searches◦ Novelty and patentability searches - mainly

carried out by industrial property offices in support of patent examination procedures.© Vladimir Yossifov, 2011

24


Name Searches◦ To locate information about published patent

documents involving specific companies or individuals (applicants, assignees, patentees or inventors)

Technological Activity Searches◦ To identify companies and/or inventors

active in a specific field of technology.

Infringement Searches◦ To locate patents and published patent

applications which might be infringed by a given industrial or commercial activity.

© Vladimir Yossifov, 2011



Patent Family Searches◦ to find the countries in which a patent

applications (for the same invention) have been filed;

◦ to find a “patent family member” that is written in a desired language;

◦ to obtain a list of prior art documents or “references cited”;

◦ to estimate the importance of the invention.

Legal Status Searches◦ To obtain information on the validity (status) of a

patent or a published patent application, on a given date, under the applicable patent legislation in one or more countries.


Importance of Industrial Property Rights for R&D and Business Development

use technological, legal and commercial information contained in patent documents in the decision-making process (before starting R&D projects or the development of new products, marketing of such products, launching a new company, etc.)


Industrial Property Strategies of Innovative and R&D based SMEs

- provide information for important management decisions (e.g. new research or product development projects)

- identify and protect new products and research results through IPRs

- establish basis for R&D cooperation and transfer of research results to larger companies (licensing, franchising)

- generate income for future product development and R&D



Any new product development project should start with assessment of the state-of-the-art, as disclosed in the patent literature, to:

minimize the risk of using valuable R&D resources on reinventing an existing product

identify leading companies or individuals involved in the development of similar projects

stimulate new ideas.

Periodic project development review should always include review of IPR related issues



Periodic project development review should always include review of IPR related issues :

patentability of research results (prior to publishing or disclosing information to 3rd parties)

filing national patent applications (home country)Select between patent and utility model

protection (where applicable)decision concerning IPR protection abroadpackaging commercial proposals for transfer of

technology or research resultsmonitoring competitors’ activities

Thank you for your attention

Vladimir YossifovConsultant, IP ServicesGeneva, Switzerland

[email protected]

organized by the world intellectual property organization (wipo) and the turkish patent institute...

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