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Protecting and Using IP

1. Intellectual Property 101

1.1 What is Intellectual Property?

» William Cullen, 1708

Powered Flight

» Nikola Tesla, 1886

Importance of IP

Every single technology, product, improvement to our lives began as an idea (intellectual property).

Refrigeration

» Wright Brothers, 1903

Alternating Current» Joseph Lister, 1867Antiseptics

» Larry Page, Sergey Brin, 1998Google» Salvino d’Armate, 1284Optical Glasses

» Johann Guttenberg, 1439Printing Press

» Alexander Bell, 1875Telephone

We all have “products of the human intellect”

Ideas The way we do things Experience Skills Wisdom Knowledge

These things are not necessarily “intellectual property”

Intangible Assets vs Intellectual Property

Intangible Assets (“ideas”): skills, expertise, wisdom, experience and knowledge of you and your people.

Intellectual Property (IP): the protected form of an intangible asset ie. patent, copyright, trade secret, trademark.

Intangible Assets

Intellectual Property

Intangible Assets Intellectual Property

Problem with intangible assets - difficult to: define what the particular intangible asset actually is protect or use b/c once publicly disclosed vulnerable to loss / theft.

Over time concept of “intellectual property” developed -once an intangible asset converted into IP then it is like any other form of property e.g. a vehicle you can define what it is it has an owner it can be sold, leased (licensed), abandoned or given away owner can take legal action to protect it if someone steals, damages or

misuses it

How do I convert Intangible Assets into IP?

An intangible asset becomes a piece of “intellectual property” when it is converted into one of the recognised classes of intellectual property:

patent registered trademark registered design plant variety domain name unregistered trademark

confidential information trade secret know how copyright integrated circuit layouts embedded secrecy

Characteristics of IP Classes (1)

Owner has exclusive rights to IP owner can use it, sell it, dispose of it owner can stop others doing things with IP BUT cannot compel

people to DO things with the IP

Owner has option to enforce these rights where rights have been breached can ask court to enforce

Rights are territorial law relating to IP varies from country to country in case of registered rights need to apply in each country

Easy to lose certain actions can invalidate types of IP

Publication vs Secrecy

What defines each class of IP is how it protects the underlying idea ie. patents protect one way, trademarks protect in another.

The different classes of IP can be grouped into two protection methods:

Protection by Publication By making the idea public

the owner acquires certain legal rights e.g. a patent

Protection by Secrecy Provided the owner keeps

the idea secret they acquire certain legal rights and while the idea remains secret it cannot be copied.

Classes of Intellectual Property (1)

1. Protection via Publication patent registered trademark registered designs plant varieties unregistered trademark copyright domain names

2. Protection via Secrecy confidential information trade secret know how embedded secrecy copyright

Registered vs Unregistered Rights

Protection via Publication Registered Rights

patent registered trademark registered designs plant varieties domain names

Unregistered Rights unregistered trademark copyright

Apply to government for legal protection and if criteria are met a (temporary) monopoly may be granted over idea in return for making the idea public.

Protection arises over time (TM) or automatically on creation (©) – no application necessary.

1. Intellectual Property 101

1.2 Myth Busting: “IP Protection”

Myth Busting: “IP Protection”

IP Protection = Patents = Patent Attorneys

IP Classes

Trade Secret / Confidential Info Copyright Unregistered trademarks Registered trademarks Patents Design Rights Domain Names Plant Variety Rights ICLs

IP Protection =

IP Classes in terms of volume & value

Trade Secret / Confidential Info

Copyright Unregistered trademarks Registered TMs

Patents

Design Rights

Domain names

Plant Variety Rights

ICLs

IP Protection =

Not free

Free

Myth Busting: “Patents must be valuable”

“Patents are difficult to get so they must valuable & useful – right?”

Patents not always a silver bullet

Getting a granted patent is surprisingly easy – you can patent just about anything.

However getting a commercially useful patent (broad and defendable) is a lot more challenging.

For patent to be commercially useful must be completely new, 2) not obvious in light of all publicly available technology anywhere in the world & 3) must cover all effective means of achieving desired end result.

Patents like any other tool: used appropriately can be extremely valuable but can also cause a lot of damage / cost.

(Some) Patented Violin Support Mechanisms...

Each IP class has strengths & weaknesses

Easy to become distracted “sexy” end of IP (patents etc) without realising value of critical but mundane things in front of your nose (confidential info / know how)

Asset Strength Weakness

Patent Protects independent invention Requires publication; costly; time limited

Copyright Long duration; low to zero cost Does not protect independent invention

TM Protects brand equity, essentially permanent

Low value if underlying brand does not have any value.

IP needs a “horses for courses” approach

All IP classes have role to play. Reliance on single class is risky & results in sub-optimal commercialisation outcomes.

Be cautious of providers who push a focus on narrow class of IP assets or who give superficial attention to non-registered rights.

Most powerful IP approach is an integrated strategy which combines strengths and

weaknesses of different classes (public & secrecy).

2. Commercialising IP

2.1 Myth Busting: “IP Commercialisation”

Defining: “IP Commercialisation”

IP Protection = IP Commercialisation “If I’ve protected it, I’ve commercialised it”

Myth Busting: “IP Commercialisation”

IP assets like any other asset - need to do something with them beyond protection to generate value.

IP CommercialisationRegistered IP Protection

All IP Protection

Registered IP Protection

All IP Protection

Most IP never commercialised

2004 study by Siemens estimated 90+% of all EPO patents never commercialised.

2002 P&G identified that 92% of its patents had “no business value of any kind to P&G”.

1. Knowing chuckle: situation similar to own experience

2. Look of shock: no one ever thought to ask: how much IP do we have / create? is it being used or are we just protecting it & moving on? what is our actual ROI in IP protection?

What is “IP Commercialisation”

Identification Assessment Development Protection Exploitation

IPC =

“Generating economic or strategic value from IP or technology assets via product development, licensing or

IP sale processes”

Defining: “IP Commercialisation”

Identification Assessment

Development Protection

Exploitation

IPC =

In terms of relative effort required and value contributed:

EverEdgeIP Ltd

Questions?

Dean PrebbleCEO

EverEdgeIP Ltd+64 21 829 424+ 64 9 489 2331

d.prebble@everedgeip.comwww.everedgeip.com