The Role and Functions of an In-house IP

The Role and Functions of an In-house IP Department or IP Focal Point and/or External Specialist Support Services Shozo Uemura World Intellectual Property Organization 1

Overall Mission of IP Department/IP Focal Point n Translation of the concept: “IP as a power tool for economic growth” into “a power tool for each enterprise’s growth” n Ensure that business strategy and IP strategy are aligned 2

IP Department/IP Focal Point is the Driving Force to. . . n n (1) Spur creativity, inventions and innovation (2) Identify, protect and maintain IPRs (3) Monitor and Exploit IPRs (4) Audit IP assets 3

No One-Size-Fits-All Structure for an In-house IP Department (1) n n Broadly speaking, role and functions are similar in all inhouse IP Departments In most large enterprises, the in-house IP department reports to the General Counsel n Number of staff: Very variable n Structure: Also variable. A typical arrangement will comprise a number of patent attorneys/agents reporting to a division counsel or senior attorney, who in turn reports to the chief patent counsel, who invariable is a corporate vice president nowadays in light of the transcending importance of IP to the corporation which puts the IP department center-stage. 4

No One-Size-Fits-ALL Structure for an In-house IP Department (2) n In a large enterprise, the in-house IP department may have sections aligned with operating units, where each attorney/agent handles the entire spectrum of IP work from the corresponding section n The trademark function, however, is usually a separate unit 5

IP Department/IP Focal Point Cannot do Everything n External support invariably needed even by an IP department of a large enterprise n For quality control purposes, assignments handled by in-house attorneys/agents may be reviewed by outside attorneys/agents n Outsourcing may also provide salutary exposure of in-house IP staff to private IP service providers 6

IP Department in an SME versus IP Department of a Large Enterprise n n n Overall, same role and functions Advantages (in SME): Closer to top management; Quick and flexible actions and decisions Disadvantages (in SME): Limited staff; Gaps in information, knowledge, skills and competence; Limited funds 7

General Measures to Overcome Disadvantages in SMEs n n In-house IP-related awareness raising, capacity building and human resources development Including at the levels of IP focal points, all managers, researchers, etc Have highly motivated R & D staff Doing More with Less: Efficient and effective in-house IP focal point 8

Outsourcing Versus Integration (1) n Private services (by professionals or practitioners; expensive): - Patent agents/attorneys (acquisition, enforcement) - Lawyers (Licensing, enforcement) - Consultants/Advisors (specialized in Technology, management, financing, patent marketing, patent information utilization) - Banks, Trust organizations 9

Outsourcing Versus Integration (2) n Public services/tools (free or less expensive) – Governments, typically IP Offices – Nongovernmental organizations (NGOs) – WIPO 10

Local IP Service Providers or Support Institutions Of special relevance to SMEs (because of proximity) are: n Local governments n Local universities n 11

Type of Services n n Individual services on specific cases (from advisory to professional) Collective services (e. g. seminars, workshops, databases, tool kits, prototyping (models), check lists, guides, e-learning) 12

Resource Persons n n Contracts with those providing individual services (Example: KIPO provides free patent management services in cooperation with professional patent agents) Retired engineers, IP specialists 13

Roles and Functions of IP Department or Focal Point n n n Non-exhaustive list A compilation of services provided by public service providers Whenever available and affordable, any roles and functions may be supported by private service providers 14

In-house Awareness Raising and Capacity Building n n n Why: (1) To establish a sound in-house IP culture and IP management strategy; (2) to enhance the incentives for R & D; (3) So as not to lose IP assets or rights Who: All, but especially business managers, marketing/sales staff, R & D staff How: Direct or customized utilization of external services 15

Making rules on employee’s inventions or instituting an commendation or reward system n n Why: (1) To enhance researcher’s motivation; (2) To avoid problems between employer and employee (Recently in Japan: ca. $ 200 M Award); (3) To make the SME more 16 attractive to engineers

State-of-the-Art/Patent Search (1) n n n Why? (1) To assess competitiveness; (2) To identify areas of technology to be developed; (3) To enhance patentability; (4) To avoid possible conflict with IP rights of others; and (4) To take action to invalidate IP 17 rights of others.

State-of-the-Art/Patent Search(2) n n Examples of external specialist services: Patent Digital Library Advisor (NCIPI, Japan); Technology Trend Analysis (IGE); Patent Information Services (FUNDATEC Bahia Blanca); Patent Search(HKPC); Free-of-Charge Prior Art Search Service (JPO); Software (PIAS: Patent Information Analysis System) to generate a patent map/technology map(KIPO); 18 PATLIB Network(EPO)

Spotting Inventions Early n n n Why: Researchers may not be aware of the merit of the research outcome in the IP context. By keeping regular constant contacts with researchers This function cannot, generally, be relied on public services. In-house efforts a must, which may be supplemented by assistance from 19

Documentation of Inventions; Recording of R & D Activities n n Why: To assess the value of an invention; not to lose valuable inventions when an inventor leaves the enterprise; to decide whether to protect by a patent, keep it a trade secrets or make defensive public disclosure; to create evidence of inventorship or priority in the first-to-invent system; to collect evidence to show prior user’s right in litigation In general, this function cannot be entrusted to public IP services provider 20

Management of Confidentiality or Trade Secrets n n Why: not to lose patentability because of publication or divulgence prior to filing; to determine whether the invention should be protected as trade secret; to determine whether the invention should be made known, for defensive purposes, to the public without filing; to monitor whether a confidentiality contract is breached by a company’s former employees In general, this function cannot be entrusted to public IP services provider 21

IP Acquisition n Why: Self-evident core mission Filing IP applications; reviewing the value of maintaining an IP application; making request for examination of IP application; response to office actions or opposition; appeals; administration of patents (P), trademarks (TM), and industrial designs (ID); reviewing the value of maintaining P, TM or ID. In general, this function cannot be entrusted 22 to public IP services provider

Commercialization, Marketing and Branding Building n n Why: to make the product more attractive, differentiated and distinctive, establish unique identity, positive reputation/image and brand (through acquisition of trademarks, geographical indications or industrial designs); to design an effective and legitimate means of advertisement; to decide the scope of the market (whether to export and, if so, where) Requires involvement of all the relevant people or units/departments (e. g. sales/marketing, R & D); Cannot, generally, rely on public IP services. 23

Exploitation, Assessment and Valuation of IP Assets n n n Why: to improve enterprise profitability, maximize wealth creation and enterprise more competitive; to raise finance How: through direct exploitation, licensing, franchising and/or merchandising, and developing other types of strategic business relationships (e. g. OEM, SMEs Cluster); through trust or other securitization Examples of external specialist/resource: A model for the management and evaluation of IPR 24 (DKPTO)

Utilization of External Intellectual Resources (1) n n n Why: To supplement in-house resources; to avoid infringement; to efficiently expand business domains How: Through license of right; through patent marketplace; through (local) university TLO (seeds-needs matching) Example of external specialist/service and patent marketplace: “Patent Licensing Advisor” system ( NCIPI, Japan); Technology transfer services (Garching Innovation-MPG); TTO(Technology transfer Office)(NOVA-UNICAMP); contd. 25

Utilization of External Intellectual Resources (2) n n Examples of external specialist services contd. : Assistance in licensing in/out using international IP commercialization experts (IP Wales®); Extension and technology advisory services (NOTAP); Technology transfer from university to SMEs (UNAM); Tech. Mart(HKPC); Tecma (AWS); Tecnet (AWS); INSTI-Innovation Market (INSTI); Surf. IP (IPOS); The Circulating/Internet/Standing Patent Technology Markets(KIPO) 26

International IP Management n n Why: to deploy and secure business globally; to acquire a global standard How: (Given the cost could be enormous) Selection of inventions to be protected abroad; selection of route through which to apply (e. g. PCT route ) 27

Raising Business Finance (1) Subsidies/grants by (local) government n Loans from banks n Business angels/venture capitalists n Trust or Securitization n 28

Raising Business Finance (2) n n n n Importance of the preparation of a persuasive business plan Examples of external resources: Funding for patents (Enterprise Ireland) Financing (Grants/Loans) for commercialization of inventions (Foundation for Finnish Inventions) Patent application grant (HKPC) Seed financing scheme((AWS) Financial support to local SMEs(IP Wales®) Financial assistance to inexperienced SME; i²Ideas 29

Finding Ways to Minimize Cost n n n Fee reduction (e. g. JPO, USPTO, KIPO), tax reduction, use of international registration/application system Minimizing outsourcing, and wherever possible , maximizing public services Reviewing regularly the necessity of maintaining pending IP application(s) or granted IP right, especially patent(s) 30

Other Functions (1) n n n Copyright/related right; optional registration; use of collective rights management system Special consideration for the digital environment (technological measures to protect contents, e-commerce, etc) Trademarks, Geographical Indications and Industrial Designs: - Develop and maintain brand, identity and reputation 31

Other Functions (2) Contd. -Naming, avoidance of conflicts with other identifiers (including domain names) -Registration and timely renewal -Effective use of other regional and international registration systems (e. g. , the Madrid System for Marks and the Hague system for Industrial Designs) 32

Other Functions (3) n n n Participation in the activities of IP associations Clearance of technical publications Prepare, finalize or update various corporate and departmental strategies, policies, procedures, forms and manuals such as Corporate Personnel or Employment Policy, Corporate Patent Policy, Trade Secret Policy, Invention Agreement, Operations Manual, IP Due Diligence Procedures, etc. 33

Conclusions n n Message to SMEs: “Capacity Building and Efficiency” Message to Policy Makers: “More Public Services” 34