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The Role and Function of an IP Department/IP Focal Point

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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
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Overall Mission of IP
Department/IP Focal Point
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Translation of the concept: “IP as a
power tool for economic growth”
into “a power tool for each
enterprise’s growth”
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Ensure that business strategy and IP
strategy are aligned
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IP Department/IP Focal Point is
the Driving Force to...
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(1) Spur creativity, inventions
and innovation
(2) Identify, protect and maintain
IPRs
(3) Monitor and Exploit IPRs
(4) Audit IP assets
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No One-Size-Fits-All Structure for
an In-house IP Department (1)
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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
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Number of staff: Very variable
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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.
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No One-Size-Fits-ALL Structure
for an In-house IP Department (2)
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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
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The trademark function, however,
is usually a separate unit
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IP Department/IP Focal Point
Cannot do Everything
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External support invariably needed even
by an IP department of a large enterprise
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For quality control purposes, assignments
handled by in-house attorneys/agents may
be reviewed by outside attorneys/agents
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Outsourcing may also provide salutary
exposure of in-house IP staff to private IP
service providers
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IP Department in an SME versus IP
Department of a Large Enterprise
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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
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General Measures to Overcome
Disadvantages in SMEs
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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
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Outsourcing Versus Integration (1)
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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
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Outsourcing Versus Integration
(2)
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Public services/tools (free or
less expensive)
– Governments, typically IP
Offices
– Nongovernmental
organizations (NGOs)
– WIPO
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Local IP Service Providers or
Support Institutions
Of special relevance to SMEs
(because of proximity) are:
пЃ® Local governments
пЃ® Local universities
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Type of Services
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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
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Contracts with those
providing individual services
(Example: KIPO provides free
patent management services
in cooperation with
professional patent agents)
Retired engineers, IP
specialists
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Roles and Functions of IP
Department or Focal Point
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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
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In-house Awareness Raising and
Capacity Building
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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
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Making rules on employee’s
inventions or instituting an
commendation or reward system
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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
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attractive to engineers
State-of-the-Art/Patent
Search (1)
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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
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rights of others.
State-of-the-Art/Patent
Search(2)
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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);
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PATLIB Network(EPO)
Spotting Inventions Early
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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 from19
Documentation of Inventions;
Recording of R & D Activities
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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
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Management of Confidentiality or
Trade Secrets
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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
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IP Acquisition
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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
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to public IP services provider
Commercialization, Marketing and
Branding Building
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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.
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Exploitation, Assessment and
Valuation of IP Assets
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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
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(DKPTO)
Utilization of External Intellectual
Resources (1)
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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)
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Examples of external specialist services
contd.:
Assistance in licensing in/out using international
IP commercialization experts (IP WalesВ®);
Extension and technology advisory services
(NOTAP); Technology transfer from university
to SMEs (UNAM); TechMart(HKPC); Tecma
(AWS); Tecnet (AWS); INSTI-Innovation
Market (INSTI); SurfIP (IPOS); The
Circulating/Internet/Standing Patent Technology
Markets(KIPO)
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International IP Management
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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 )
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Raising Business Finance (1)
Subsidies/grants by (local)
government
пЃ® Loans from banks
пЃ® Business angels/venture
capitalists
пЃ® Trust or Securitization
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Raising Business Finance (2)
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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 WalesВ®)
Financial assistance to inexperienced SME; iВІIdeas
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Finding Ways to Minimize Cost
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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)
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Other Functions (1)
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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
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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)
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Other Functions (3)
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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.
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Conclusions
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Message to SMEs:
“Capacity Building and
Efficiency”
Message to Policy Makers:
“More Public Services”
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