1. IPR Workshop
January 12th, 2010

2. Outline
 09:30 Welcome & Coffee
 10:00 IP essentials
 12:00 Sandwich lunch
 12:45 Testimonial JPEG2000, 1T3XT
 13:15 IP search: technical & legal data available
 15:15 Coffee break
 15:30 Testimonial Siruna, SUMO, Geosparc
 16:30 Closing networking reception

3. Intellectual Property
essentials

4. IBBTs valorisation toolbox for business
Knowledge
People
People Knowledge
Business

5. Intellectual Property: what?
 Invention
 Name, logo, symbol
 Design, model
 Literary work
To be or not to be protected
 Intellectual Property Rights

6. The entrepreneurial process
Source: UK Intellectual Property Office
Evaluating the potential of the idea
or new technology

7. Potential innovation value
Source: www.isopatent.com

8. The 4 key factors to valuing innovation
 Inherent value of the innovation
 Technology feasible?
 Potential profits e.g. estimated market size, product assessment (must
have or nice to have, cost etc...)
 Anticipated scope of patent protection
 The broader, the larger the market, the more valuable the patent and
innovation
 No infringement of another‟s patent
 Freedom to operate? If not, what‟s the alternative?
 Sound, analytical business plan
 Develop and market innovation
 Roadmap with timeline/goals to attract investment or business partners
or realize full economic potential

9. In other words...
 1/3 is re-inventing the wheel
 Know market & competition
 Freedom to operate
 Ownership R&D results
Source: „Seven deadly sins of the inventor‟ - EPO
 Protect creativity
 ROI² (return on innovation investment)

10. Added value
 Technological advance - improvement
 Conceptual change
 Business asset
 Licensing
 Cross-licensing
 Scientific reputation

11. Integrate IP in your business model
 Start asap, i.e.during idea
generation
 IP landscape
 state-of-the-art
 freedom to operate
 market & competition
 red sea versus blue ocean strategy

12. Prior-art search
 Number 1: Google !!!
 Free patent databases
 Non-patent literature
 Other...

13. Freedom to operate
 Why?
 Minimizing risks
 Not to be blocked by others
 Ensuring that the commercial production, marketing and use of a new
product, process or service does not infringe the IP rights of others
 How?
 Patent search (practical limit: time/money)
 Expert services strongly recommended (private/national offices)
 Note patent limitations: territorial, limited duration, limits of scope
 But „assessment‟, no full proof

14. Strategies for obtaining freedom to operate
 Abandon innovation
 Design around, inventing around
 Acquire or license in rights on pre-existing patent
 Sell or license out innovation
 Cross-licensing
 Patent pool (essential patents, standardization)
 Oppose pre-existing patent application or revoke pre-existing patent

15. Red sea versus blue ocean strategy
Red sea Blue ocean
Compete in existing market space Create uncontested market space
Beat the competition Make the competition irrelevant
Exploit existing demand Create and capture new demand
Make the value-cost trade-off Break the value-cost trade-off
Align the whole system of activities Align the whole system of activities in
with strategic choice of differentiation pursuit of differentiation and low cost
or low cost

16. Intellectual Property protection
Cost Protection Enforceable Content
Patent high strong yes idea
Copyright © low low yes expression of idea
Trade secret - low - strong ~no / ~yes any
Trademark ® moderate moderate yes name, logo
Design moderate moderate yes drawing
i-Depot low no ~no any

17. Patent
 Protect all instances of a technical invention
 Technical solution to a technical problem
 Right to exclude others
 Exclusive rights against all commercial uses in exchange of
mandatory publication
 Application – prosecution – litigation
 Max. 20 years, grant after ~5 years
 First to file, first to invent
 Strict criteria:
 Novelty, inventive step, industrial applicability
 Clarity, sufficiency of disclosure

18. Patent: inventive step?

19. Patent process
REPORT THE PRIOR ART
DRAFTING
INVENTION SEARCH & FIRST FURTHER
PATENT
TO PATENT PATENTABILITY FILING FILING
APPLICATION
ATTORNEY STUDY
CLAIMS PRIORITY PRIORITY
PRIOR ART DATE YEAR
EMBODIMENTS
DRAWINGS
© 2008 BiiP

20. Patent: from filing to grant...
27-JUL-2011
PCT FILING PCT REGIONAL PHASE
PATENT APPLICATION
GRANTED PATENT
UNDER EXAMINATION
1-5 YRS
27-JAN-2009 27-JAN-2010 27-JUL-2010
PRIORITY SEARCH PRIORITY PUBLICATION GRANT EXPIRY
DATE REPORT YEAR with SRP
(first filing)
12 MONTHS
18 MONTHS
30 MONTHS
20 YEARS
© 2008 BiiP

21. EPO patent procedure

22. Patents for software
 CIIs are in principle patentable
 Referral to Enlarged Board of Appeal
 No patents on trivial inventions
 No source code necessary
 Patent applications create transparency
 Patents secure competitiveness
 More information on EPO website:
http://www.epo.org/topics/issues/computer-implemented-
inventions/software.html

23. F/OSS: freedom to copy, modify, distribute
Free Software Foundation Apache Software Foundation
GPL, (LGPL), AGPL ASL
Most famous example: Most famous example:
GNU OS with Linux Kernel: aka Linux Apache webserver
Typical for FSF licenses: Typical for ASL licenses:
Strong copyleft, “viral” effect Milder copyleft, no “viral” effect
Other well-known OS licences: University OS licenses:
MPL (Mozilla) MIT (Massachusetts)
EPL (Eclipse) BSD (Berkeley)
Both weak copyleft Very liberal, no copyleft
Learn more about open source?
Open Source Initiative: www.opensource.org

24. F/OSS: difficulties?
White zone
Code of which IP is 100% clear
Gray zone
Code contributed by others
Black zone
Code for which
no license or authorization

25. F/OSS: incompatible licenses
Distributing your product

26. Patents & standards
Commonalities Potential conflicts
Encourage investment in Implementing standards using patented technology
innovation - R&D -Interoperability (essential patents)
-Multiple patents and patent owners
Disclosure of technical International standards different national patent
information regimes (geopolitics)
Dissemination of technology
 Monopoly versus free collective use
 Rights of patent owner to enjoy benefits
 Third parties want to make and sell interoperable products corresponding to the
standard
 Public (user, consumer…) wants freedom to choose between different products
even after a standardisation
 Standardisation authority cannot define a standard that will be blocked

27. Copyright
 Protects the expression of idea, not idea itself
 No registration required
 Fixation
 Originality
 Duration (+70 or 50yrs)

28. Trade secret
 Source code !
 Copies of object code can be sold
 Reverse engineering using decompilers
 No protection against piracy of object code

29. Respect IP when creating your website
 Be aware of the types of IP, especially trademarks and
copyrights regarding website development
 Guidelines when having someone develop your website
 Be cautious about content
 Original content, privacy policy
 Be smart about promotion
 Careful with using competitor‟s name
 Be proactive in protecting assets
 Use appropriate designations (™, ®, or ©)

30. Towards the business
 IP strategy
 Due diligence
 Business model - types of business
 Business plan
 Venture capital

31. Agreements
 Employment
 Confidentiality
 Licensing
 Partnership / co-operation / consortium

32. Employment Agreement
 Ownership of the invention
 In general: inventions assigned to employer by contract
 ≠ inventorship
 Non-competition clause, confidentiality clause
 In Dutch: concurrentiebeding, confidentialiteitsbeding
 Participants in IBBT projects
 IBBT payroll „arbeidsovereenkomst‟ Art. 5
 University research group „valorisatiereglement‟
 Industry partner, company
 Seperate assignment for patents or other IP rights

33. Confidentiality
 Careful with disclosures!
 Fatal for grant of patent in most countries, before
application is filed
 Public = could be consulted or known
 Use Non-Disclosure Agreement
 Careful with opinions on patentability of inventions!
 Carefully date, document and save inventions!
 Keep strictly confidential and mark „Confidential‟!

34. Non-Disclosure Agreement
 Types
 One-way
 Two-way
 Specific
 Use
 Whenever technical information has to be disclosed in
closed (controllable) environment
 Including when patent application has been filed,
during 18 months temporal secrecy period

35. Licensing Agreement
 Trade secret, know-how, patent
 Scope of the license
 Exclusive, non-exclusive
 Confidentiality
 Compensation: royalty rate, royalty payment, lump-sum
 Third-party rights, infringement
 Results
 Liability
 Term and termination

36. Co-operation Agreement
 Parties, preambule/recitals, definitions, subject of the
agreement, party‟s obligations, IPR, confidentiality,
(sub)licensing, term and end, force majeure, liability, court,
party‟s signatures
 IPR definitions: background, sideground, foreground,
access rights, confidential information, co-ownership

37. Some examples from the field
 Blackberry case
http://www.wipo.int/export/sites/www/academy/en/ipacademies/educational_materials/cs2_blackberry.pdf
 FTO analysis in the field of medical devices
 Level3 and IBM cross-licensing agreement

38. Final notes
 Go for it but look before you leap
 Careful with inventions Confidential
 Do publish but consider trade-off in terms of added value
 Appropriate form of protection
 Open source integration includes timely documentation

39. Questions?
Eefje Vandamme
Manager Intellectual Property IBBT
T: +32 9 331 48 25
F: +32 9 331 48 05
M: +32 476 89 62 61
E: eefje.vandamme@ibbt.be
Thank you

40. References
 „Marketing your Invention‟ 3rd Edition, ABA Section of Intellectual Property Law
 „Intellectual property rights and entrepreneurship‟, UK Intellectual Property Office
 „Why All Small Businesses Need Software Patents‟ by Gene Quinn, IPWatchdog.com
 „201 Thoughts to Ignite Innovation‟ by David E. Rogers and Amy L. Hartzer, Isopatent
 „New Product Launch: Evaluating Your Freedom to Operate‟ by Esteban Burrone, WIPO
 „Freedom to Operate and Risk Management‟ by Concept Foundation, MIHR and PIPRA,
ipHandbook of Best Practices: Executive Guide
 „Engineering a High-Tech Business – Entrepreneurial Experiences and Insights‟ by José
Miguel López-Higuera and Brian Culshaw
 „Jeopardizing Patent Rights‟ by Todd A. Taylor and Kara K. Fairburn, ipFrontline
 „IP Due Diligence – A necessity, Not a Luxury‟ by Ian Cockburn, WIPO