Presentation from Ken Marr of Targeting Innovation 'Exploiting Intellectual Assets - There’s a lot more to intellectual assets than just patents and trademarks. Find out about the assets that you are not protecting or exploiting'

1. Exploiting Intellectual Assets
There’s a lot more to intellectual assets than just patents and trademarks.
Find out about the assets that you are not protecting or exploiting
Ken Marr
Targeting Innovation Ltd

2. Agenda
•Why intellectual assets?
•Tangible - or - intangible assets
•Intellectual property
•Asset protection
•Asset exploitation

3. Why Intellectual Assets?
The Best a Man can Get TM

4. Intangible Assets
Intellectual Capital Intellectual Property/Assets Human Capital
Intellectual Assets External Facing Factors Product/Service Based Contract Based Customer and Supplier Business Organisation
Intellectual Property
Copyright/Database Rights
Patent
Trade Mark
Design Right
Trade Secret

5. Tangible - or - Intangible Assets

6. External Facing Factors
•Product Based
•Contract Based
•Customer & Supplier
•Business Organisation
Intellectual Property
•Copyright/Database
•Patent
•Trade Mark
•Design Right
•Trade Secret
Intellectual Assets & Intellectual Property

7. Overview of Intellectual Property
Legal right
What for?
How?
Copyright
Original creative or artistic forms
Trade marks
Distinctive identification of products or services
Use and/or registration
Registered designs
Registration*
Patents
New inventions
Application and examination
Exists automatically
Trade secrets
External appearance
Valuable information not known to the public
Reasonable efforts to keep secret

8. Asset Protection

9. •MONOPOLY RIGHTS
•CERTAIN TIME PERIOD
•ALL REQUIRE FINANCIAL OUTLAY
REGISTERED
Forms of Protection
UNREGISTERED
PATENTS
REGISTERED TRADE MARKS ®
REGISTERED DESIGNS
UNREGISTERED TRADE MARKS TM
UNREGISTERED DESIGNS
COPYRIGHT
KNOW HOW/ CONFIDENTIAL INFORMATION
NOT TRUE MONOPOLY RIGHTS
NEED TO RECORD YOUR ORIGINATION OF THEM
IN A DISPUTE AN ELEMENT OF COPYING OR USE MUST BE DEMONSTRATED
CONFERRED RIGHTS ARE FREE

10. Copyright

11. Trade secrets
•Any information (formulae, methods, manufacturing processes, financial data, customer lists etc.)
e.g. formula for Coca-Cola, McDonald’s “special sauce”, KFC 11 herbs and spices
•Held secret through its holder’s reasonable effort
•Conferring economic value /competitive advantage due to its secret nature
•Indefinite duration (until disclosed/discovered)
•Means of protection:
Confidentiality agreements
Technological measures
•National unfair competition law
11

12. Registered Designs
Robert Welch Designs Ltd 142922
Argos

13. Unregistered Design Right (UK only)
Chloe £185
Topshop £35
Karen Millen
Dunnes Stores
• Original designs protected against copying
• Protects shapes and configurations (internal or external)
• Design protected for 10 years from first marketing, or 15 years from first creation, whichever is shorter

14. Asset Exploitation
Sell
License
DIY

16. Product
•Licensing Agreements
•Technical Know-how
•Proprietary Technical / Production Material
•Processes / Methods
•Product Development Knowledge
•Un-patented Know-how

17. Contract
•Licensing Agreements
•Consulting Agreements
•Alliances and Partners (e.g. Freelance)
•Non Competitive Covenants and NDAs

18. Customer and Supplier
•Customer List
•Networking
•Repeat Business
•Market Know-how
•Long-term Contracts
•Affiliations & Networks
•Management Methods

19. Non IP Assets
•Know-how and show-how e.g. Named designer, R&D company
•Process procedures and technical information e.g. Training manual, help desk
•Confidential information / trade secrets e.g. Drambuie, Irn Bru
•Management systems and infra-structure e.g. John Lewis
•Unregistered trade marks and domain names
•Contracts e.g. employee, lease, license, etc
•Image enhancing customers e.g. by Royal Appointment
•Goodwill and reputation e.g. Virgin not Ratners
•Customer and supplier knowledge and networks e.g. CRM
•Accreditations e.g. ISO, IIP
•Market knowledge

20. SELL DESIGN
LICENCE DESIGN
DESIGN, MARKET, SELL OUTSOURCE MANUFACTUING (DISTRIBUTION)
CARRY OUT FULL PROCESS SOURCE MATERIALS, MANUFACTURE, MARKET, SELL, DISTRIBUTE, SUPPORT
Some Business Model Options

21. Some Business Model Options

Lump sum received from purchaser
No requirement to have further involvement with product, i.e. design, marketing, sales, realisation, distribution, etc.
No ongoing costs
Possibility to use funds to develop additional products
No ongoing costs
Income received depending upon sales (and potential lump sum) which are dependent upon deal
Available to work on new designs
Ready outlet for new products, etc.

No further involvement in product
All further development out with control
Funding may be required to get product to stage where sale takes place
How to get full value of design
Sales and future developments outwith control
Sales, etc. are dependent upon others
Funding may be required to get to stage where agreement can be made
Cost of deal and negotiations
SELL DESIGN
LICENCE DESIGN
PRO
CON

22. Now Over to You…
How to exploit Scotland’s intellectual assets. What are they? What are they worth? How would you exploit them? License?
You have just 15 minutes

23. Securing Ownership

24. Who Owns Copyright
•Image taken by Carolyn Robb, the Prince's executive chef.
•Settled for a "four figure fee" for use by Royal Mail.

25. Exploiting IP – Extracting Value
•Exploitation - Identification - Securing ownership - Actions - Strategy
•Make/market it yourself
•Assign the rights (sell)
•License the rights

26. •Identify, secure, exploit
•Focus on Commercial Opportunity
•Consider Capacity of Owner
•Lay Foundation of a Business Proposition
IP for Commercial Benefit: Not just for the sake of it.
IP Strategy

27. You Can Think Out of The Box

28. So how do you do it?
•Develop an Intellectual Assets policy
•What action is appropriate for your organisation to manage and protect its brand assets?
•IP Registration: protect trade marks, designs rights, copyright
•IA manual to ensure that use of all trade marks, design rights, copyright is consistent.
•Be consistent … across everything
•Creating internal processes and training to ensure that everyone sticks to policy.

30. Summary
•Why intellectual assets?
•Tangible - or - intangible assets
•Intellectual property
•Asset protection
•Asset exploitation

31. Bye Bye