The innovation handbook how to profit rrom your ideas

i  the Innovati c n handbook Times may be challenging But through innovation, businesses can gain competitive advantage, benefit from new markets and prepare for the upturn How can the Technology Strategy Board help? By being a catalyst By providing leadership By connecting partners and investing in new ideas Our vision: a world where the UK is an innovation leader and a magnet for innovative businesses Find out more at www.innovateuk.org www.innovateuk.org iii  the Innovati c n 2nd Edition handbook How to profit from your ideas, intellectual property and market knowledge Consultant editor: adam Jolly  iv  Publisher’s note Every possible effort has been made to ensure that the information contained in this book is accurate at the time of going to press, and the publishers and authors cannot accept responsibility for any errors or omissions, however caused No responsibility for loss or damage occasioned to any person acting, or refraining from action, as a result of the material in this publication can be accepted by the editor, the publisher or any of the authors First published in Great Britain and the United States in 2008 by Kogan Page Limited Second edition, 2010 Apart from any fair dealing for the purposes of research or private study, or criticism or review, as permitted under the Copyright, Designs and Patents Act 1988, this publication may only be reproduced, stored or transmitted, in any form or by any means, with the prior permission in writing of the publishers, or in the case of reprographic reproduction in accordance with the terms and licences issued by the CLA Enquiries concerning reproduction outside these terms should be sent to the publishers at the undermentioned addresses: 120 Pentonville Road 525 South 4th Street, #241 London N1 9JN Philadelphia PA 19147 United Kingdom USA www.koganpage.com 4737/23 Ansari Road Daryaganj New Delhi 110002 India © Kogan Page and individual contributors, 2008, 2010 The right of Kogan Page and the individual contributors to be identified as the authors of this work has been asserted by them in accordance with the Copyright, Designs and Patents Act 1988 ISBN 978 7494 5687 E-ISBN 978 7494 5920 British Library Cataloguing-in-Publication Data A CIP record for this book is available from the British Library Library of Congress Cataloging-in-Publication Data The innovation handbook : how to profit from your ideas, intellectual property and market knowledge / [edited by] Adam Jolly 2nd ed        p cm   Includes bibliographical references and index   ISBN 978-0-7494-5687-0 ISBN 978-0-7494-5920-8 (e-bk)  1.  Creative ability in business-Management 2.  Technological innovations Management 3.  Industrial property Management.  I Jolly, Adam   HD53.I564 2010   658.4'063 dc22                                                             2010002757 Typeset by Saxon Graphics Ltd, Derby Printed and bound in Great Britain by MPG Books Ltd, Bodmin, Cornwall v  100 years of Intellectual Property management From our offices in London, Cambridge, Reading, Manchester, and York we provide our clients with comprehensive Intellectual Property management including Patents, Trade Marks and Design rights throughout the UK, Europe and around the globe Founded in 1910 we are proud to have over 100 years of experience in the protection and commercialisation of all aspects of Intellectual Property rights and we continue to lead the field with our consistent strategic insight, innovation and quality For a free initial consultation on how we can assist you to use IP to boost profits and gain competitive advantage contact us: T: +44 (0)20 7830 000 E: mail@mathys-squire.com MATHYS & SQUIRE LLP, 120 Holborn, London, EC1N 2SQ, United Kingdom +44 (0)20 7830 000 mail@mathys-squire.com www.mathys-squire.com Times may be challenging But through innovation, businesses can gain competitive advantage, benefit from new markets and prepare for the upturn How can the Technology Strategy Board help? By being a catalyst By providing leadership By connecting partners and investing in new ideas Our vision: a world where the UK is an innovation leader and a magnet for innovative businesses Find out more at www.innovateuk.org www.innovateuk.org Your Full-Service IP Partner Patents, Trademarks, Designs • IP Strategy Development • Portfolio Management • Due Diligence • IP Audits • IP Litigation Johan de Wittlaan P.O Box 87930 2508 DH The Hague The Netherlands Telephone +31 70 416 67 11 Fax +31 70 416 67 99 patent@vereenigde.com trademark@vereenigde.com legal@vereenigde.com www.vereenigde.com The Hague • Munich vii  Contents Foreword by Robin Webb, IPO PART The innovation premium xvii 1.1 How innovation drives growth Jonathan Kestenbaum, NESTA The bottom line 3; Where innovation happens 4; Measuring innovation 4; Forging links 5; Getting it right 1.2 Opening up innovation Tim Nicol, Make Innovation Happen Rationale 8; Definition 9; Benefits of OI 10; Issues 11; Consequences 12; Conclusion 12 1.3 Innovation support Phill Allen, Welsh Assembly Government Maximizing your intellectual property 15; Good design is good business 16; Supporting manufacturing 17; Increasing opportunities for commercial success 17; Summary 18 15 1.4 Intellectual property for innovators Miles Rees, Intellectual Property Office The national and international IP systems 20; IP rights for business 20 19  viii Contents  1.5 Realize what you have Ian Wilkinson, Invest Northern Ireland How should you start? 27; What can go wrong? 27; Things can go right! 28; Is IA management expensive? 28; Conclusion 29 26 1.6 How to maximize the value of your intellectual property John Pryor, CPA Global Realizing value 34; Value structures 34; Conclusion 35 31 PART Move up the value chain 37 2.1 Technology as an accelerator for growth Allyson Reed, Technology Strategy Board Connections 40; Partnerships 40 39 2.2 Partnerships for innovation Clare O’Neill and Cathy Garner, Manchester: Knowledge Capital When two worlds collide 44; How universities can support business innovation 44; Examples in Manchester 45 43 2.3 The power of design Clare O’Neill and Cathy Garner, Manchester: Knowledge Capital 47 2.4 Brand innovation Peter Matthews, Nucleus Branding innovation 53; Protecting innovation 53; Funding innovation 53 52 2.5 IP as a profit centre Ben Goodger, Rouse Legal Your IP strategy as part of your overall business strategy 57; Look ahead 58; Know what you’ve got 59; Get it right from creation 59; Manage your portfolio efficiently 60; Leverage your IP to make it into a profit centre 60; Be prepared to enforce – intelligently 61; Conclusion 61 57 PART Forms of innovation 63 3.1 Breakthroughs versus improvements David Fry, Agile IP LLP 65 3.2 Broad versus narrow Ilya Kazi, Mathys & Squire 69  302 When You Are Copied  and counterfeiting and piracy represent the utmost challenge to the fulfilment of the knowledge economy The assessment of the counterfeiting phenomenon usually considers only the directly affected businesses with no regard for those that suffer from an indirect – yet considerable – impact It is mainly SMEs that are put on the market the same class of merchandise of products and prices of counterfeited goods and are therefore affected by the illegal competition and diversion of demand from legal to counterfeited products Businesses can counter this phenomenon in two ways: 1) they can enhance investments in quality and innovation by fully exploiting the opportunities that industrial property rights offer to foster customers’ loyalty to the original products and make it difficult for counterfeiters to manufacture illegal goods; and 2) they can monitor the market using the new technologies allowing the traceability of those products that fluctuate within one market or among different ones In order to face this challenge, businesses are required to timely meet with knowledge and management related costs to fill the gap as to the competence in the economic exploitation of IPRs and their protection However, businesses are not left alone Institutions may play a significant role by creating favourable market conditions for property rights, enabling businesses to protect themselves from counterfeiting actions Italy boasts important achievements in this field A group of measures concerns the certainty and enforcement of IPRs, which are aimed at strengthening IPRs upstream and ensuring a more efficient definition of judicial proceedings on IP matters downstream: Upstream The IP law has been reviewed and rationalized, and a new IP code was zz issued in 2005 It substitutes for about 40 previous laws overlapping across the years since 1939 Among innovations provided for under the new IP code in order to raise the quality of the Italian IP system, there are three that attention should be drawn to One concerns the introduction of searches for granting patents Another concerns the improvement in the damage calculations for IPR holders The third refers to the seizure of counterfeit goods The preservation of two samples of goods infringing the law is enough for judicial uses; the others can be destroyed, with a simplified procedure within 60 days Downstream From July 2003 in Italy 12 specialized IP sections have been zz established at the courts and courts of appeal of Bari, Bologna, Catania, Florence, Genoa, Milan, Naples, Palermo, Rome, Turin, Trieste and Venice The specialized sections have jurisdiction in disputes regarding patent, utility model, trademark, new plant variety, design and copyright infringement or validity, as well as unfair competition affecting the protection of industrial and intellectual property The actions are heard by a panel of three judges In the actions related to IPR disputes the new legal provisions are aimed at ‘stabilizing’ the provisional measure making optional the case on the merits Furthermore, thanks to a strong partnership with enterprises, some IP awareness services have been implemented: organization of roving seminars on enforcement _ Meet the Challenge of Counterfeiting and Piracy 303  aimed at SMEs set up with the support of communitarian or international IP institutions; the creation of a network of 13 IPR desks located in markets sensitive for Italian enterprises (China, Taiwan, India, Vietnam, the Republic of Korea, Turkey, the Russian Federation, Brazil and the United States) Each desk provides information on how the local IP system works (registration procedures for each IPR and enforcement procedures in the event of infringement), and there might also be special legal assistance if the solution to an infringement case represents a pilot case to open the market Besides a new online service called FiloDiretto (Direct Line) is dedicated to assisting businesses and consumers in cases of infringements of IPRs.4 These information services are accompanied by a series of communication activities targeted at consumers, whose role remains crucial It is of the utmost importance that civil societies learn to share the value of IPR Only in a market where trademarks, patents, designs and copyrights are considered an advantage for all will it be possible to safeguard transactions relating to intangible property and the full accomplishment of the knowledge economy Communication activities include IP training and awareness campaigns in primary and secondary schools, and traditional and new media campaigns against illegal downloading targeted at an age range from 15 to 35, as well as consumer-particulars initiatives enabling the damage done to consumers to be highlighted but also identifying their active role in fostering the counterfeiting phenomenon A new law, the Development Law (Legge Sviluppo 99/2009), introduced harsher punishment for counterfeiters in Italian penal law, new investigation tools such as undercover police operations, and a penalty clampdown for knowing consumers of counterfeit goods However, no strategy can prove successful against counterfeiting without the active support of citizens and businesses Our experience shows the crucial role played by the cooperation between private and public sector in both creating and implementing new measures and services Public awareness in this sector has its origins in the interest shown by private individuals reporting damage and negative repercussions not only for themselves but for the community as a whole This dialogue is absolutely necessary Businesses must collaborate in implementing these measures, for instance with the tool customs made available (FALSTAFF) for businesses to communicate the arrival sites of their merchandise to enable an efficient activity of targeted random sampling control In fact, the creation in itself of stable working table between public and private institutions established by the Directorate-General for the Fight against Counterfeiting – UIBM – to support the National Council for the Fight against Counterfeiting stems from the awareness that necessary rules must be shared and studied in detail together with those who must counter it every day, as to ensure improved efficiency right in the implementation phase But more than anything there is the need for a society able to share the value of the rules that lie at the foundation of economic growth A successful model of partnership between private and public sector has been achieved by the pharmaceutical sector through the automated tracing system promoted by the health ministry and carried out thanks to the collaboration between Ipzs and Area SpA This experience turned Italy into a world standard in the fight against drug  304 When You Are Copied  counterfeiting and led experts to hold that, to date, it is impossible to circulate counterfeited drugs into the official distribution channels The traceability system is based on the exploitation of an optical recognition unique identification label, enabling the monitoring of all product life cycles within a centralized database On the basis of this positive experience, the ministry for economic development has recently signed a memorandum of understanding with CATTID (Centre for e-Learning Techniques and Television Applications of the University of Rome La Sapienza) for the development of specific innovation solutions aimed at the technological protection of IPRs and ‘Made in Italy’.2 This protocol will allow awareness initiatives targeted at smaller businesses relating to the exploitation, in the fight against counterfeiting, of technological tools such as radio frequency identification (RFID), a sort of ‘digital stamp’ to be applied to a single product to guarantee the production cycle’s transparency and safety, in terms of product traceability and availability, as well as an immediate benefit to the consumer An international pilot project managed by the United Nations Interregional Crime and Justice Research Institute, UNICRI,3 stems from this Italian best practice The International Permanent Observatory on Counterfeiting (IPO/c) project consists of an extensive monitoring programme to provide easily accessible and reliable data and information covering both the scope and the scale of counterfeiting The project has two main goals: the creation of a World Trade Traceability Bank (WTTB) that will allow the origin of traded goods to be established; and the development of guidelines for law enforcement agencies on awareness raising and investigation in counterfeiting cases Both of them will be implemented on the basis of protocols with Italian private and public institutions, the former with ARES SpA and the latter with the Italian National Anti-Mafia Bureau, the Anti-Mafia Investigative Directorate, the Italian Customs Agency, and the Italian Economic Police (Guardia di Finanza), as well as Europol Notes 1  The figures reported here come from a recent study on counterfeiting and piracy carried out in Italy by Censis and Area SpA in April 2009 Censis, the social investments study centre, is a socioeconomic research institute founded in 1964, while Area SpA is a company specializing in highly innovative and compatible environmental impact commodities and ecological systems’ traceability 2  The ‘Made in Italy’ sectors include food and wines, fashion, furniture, marble, stone and ceramic tiles, metal products, machinery and domestic appliances, motorcycles, bicycles and yachts They represent the sectors where competition is strongest 3  UNICRI was created in 1968 to assist intergovernmental, governmental and non-governmental organizations in formulating and implementing improved policies in the field of crime prevention and criminal justice 4  It is possible to phone the call centre (+39 (0)6 47055437), open from 8.30 to 17.30 Monday to Friday (excluding holidays), send a fax (+39 (0)6 47055390) or an e-mail (anticontraffazione@ sviluppoeconomico.gov.it) to the DGLC-UIBM Further information is available on the DGLCUIBM website (www.uibm.gov.it) in the section Lotta alla contraffazione _ Meet the Challenge of Counterfeiting and Piracy 305  About the author This chapter was written by Daniela A R Carosi on behalf of the Italian Patent and Trademark Office (DGLC-UIBM), with the support of Claudia Panichelli for the English version Further information is available on the DGLC-UIBM website (www uibm.gov.it) in the section ‘Lotta alla contraffazione’, subsection ‘Assistenza alle imprese all’estero’, or by e-mail (dglc-uibm.iprdesk@sviluppoeconomico.gov.it) The media campaigns are available on the website, www.noalfalso.it, also accessible through the DGLC-UIBM website (www.uibm.gov.it)  306 Index NB: page numbers in italic indicate figures or tables adding value to early-stage IP  131–34 Centre for Therapeutics Discovery (MRCT)  134 CTD model for early-stage drug discovery  132–34 current capability of CTD  133 examples  134 Airport Collaborative Decision Making (A-CDM) software  Apple iPhone/iPod  91, 143, 152 Bahn, S  117 benchmarking tool (EU): IMP3rove  93 Biofuels for Heating  122 brand innovation  52–55 and brand reputation  53 case study: sQuid  54–55 funding  53–54 protecting  53  breakthroughs versus improvements  see patent(s) British Venture Capital Association (BVCA)  121 broad versus narrow  see patent(s) Buffett, W  67 business improvement (and/by)  90–93 see also Open Innovation benchmarking/EU IMP3rove tool  93 challenging how and why  90 changing markets  91 concentrating on core business  92 focus on R&D and innovation  92 innovation as state of mind  92 production and distribution  91–92 Business, Innovation and Skills, Department of  82 and Interact Partnership  127 Business Innovation  17, 18 business spin-out/spin-off  198–99 business start-up  198 Carbon Connections projects  122–23 Carbon Trust  121 case studies Computer Design Marine (CDM)  295, 297–98 INCAT  295, 297–98 life sciences – Psynova Neurotech Ltd  117 CATTID (Centre for e-learning Techniques and Television Applications of the University of Rome La Sapienza)  304 challenges  81–84 see also public challenges building an innovation infrastructure  82–83  Index 307  of counterfeiting and piracy  see counterfeiting and piracy, countermeasures for innovation platform development  83–84 Chesbrough, H  8, 163 China (and) low carbon technologies  121–22 State Intellectual Property Office  31 synthetic chemistry  117 co-creation  95 collaborative learning environments (CLEs)  144 collaborative ventures (and)  170–74 agreement on rights  172 boundaries and rights  173 considerations for  171 funding and management of rights  173 inventor remuneration/staff departures  173 joint ownership of patents  172 management of  171–72 ownership of IP/organization capabilities  171 ownership of/rights over resulting IP  172–73 research/research grants  170–71 success of  173 commercial options  197–200 business start-up  198 spin-out or spin-off  198 licensing  199–200 Community Innovation Survey (CIS) 2007  complex programme management  143 contracts, negotiating  259–62 approaches to  260, 260 follow-up to  262 and form of transaction  259–60 planning and preparation for  260–61 process for  261 disclosure, know-how and territoriality  261 copying  see IP litigation copyright  22–23, 225, 272, 279 and proof of copying  293 protection  106 secondary infringement of  293 core business, concentrating on  92 Corporate Connections programme  McLaren and NATS collaboration  cost–benefit analysis  157–58 Counterfeiting, Directorate-General for the Fight against  303 Counterfeiting, The International Permanent Observatory on (IPO/c)  304 Counterfeiting, National Council for the Fight against  303 counterfeiting and piracy, countermeasures for  301–05 CATTID  304 see also main entry creation of World Trade Traceability Bank (WTTB)  304 IP awareness/information services  302–03 Development Law (Legg Sviluppo 99/2009)  303 downstream  302 FALSTAFF tool  303 guidelines for law enforcement agencies  304 in Italy  301–04 upstream  302 customer insights (and)  94–97 innovative sources of  95–96 co-creation  95 data streams/data mining  95–96 limits of user engagement  97 relevant innovation  94–95 social sources of  96 traditional sources of  96 quantitative research  96 data streams/data mining  95–96 definition(s) of business start-up  198 innovation  155–56 licensing  199–200 patent  176 spin-out/spin-off  198–99 design  21–22, 47–50, 272 expertise  48–49 and the innovation process  48 as good for business  16 as a process  49 registered community design (RCD)  22 registrations  221 design rights  221, 225, 293 and proof of copying  293 secondary infringement of  293 design organisations British Design Innovation  48  308 Index  Design Business Association  48 Design Council  48 domain names  225 Drucker, P  273 early-stage investors  see pitching to an early-stage investor Economic Co-operation and Development, Organization for  301 European Commission  114 European Community/ies  114 design registration  106 Trade Marks and Designs Office  20 European Federation of Pharmaceutical Industries and Associations (EFPIA)  114 European Patent Convention (and)  20 software  74–76 European Patent Office (EPO)  20, 31, 107, 177, 220–22, 243 case law of  76 and EP patents  220– and mechanics, electronics and software  75–76 and VICOM (1986)  76 European Regional Development Fund (ERDF)  121 European Union  43 Framework R&D programme  114 and IMP3rove tool  93 regulations on genetically modified crops  113 evaluating ideas  see ideas evolution Darwin’s concept of  150 of organizations  150–51 fast IP (and)  220–23 design registrations  221 express speed in Germany  223 extra speed via utility models  222 fast enforcement of IP rights  222–23 general aspects of  220 patent protection  221 speed and the EPO  222 speed and the PCT system  222 Swedish Patent Office (PRV)  221 validity of IP rights  221 figures funding  269 inventions/patents: priority date  181 IP life cycle  216 shares  270 valuation: the three Cs  254 firm-based strategies for protecting innovation  294–99 impede application  296 impede identification  296 impede transmission  296 impede understanding  296 and IP strategies of CDM and INCAT  296–97 fit for innovation (and)  150–53 achieving harmony  152–53 evolution of organizations  150–51 fitness of innovations: bird animal analogies  151–52 freedom to produce  see definition(s) of and patents French national law and patent filing  243, 246 Germany and IP litigation  222–23, 223 global dimensions (and)  201–05 common themes  204–05 enforcement  204 established multinational businesses  202 expanding international businesses  202–03 managing IP internationally  201 outsourcing  203–04 Global Remix: The fight for competitive advantage  91, 93 growth and innovation (and)  3–6 see also NESTA and research forging links  impact on economy  5–6 measuring innovation/Innovation Index  relationships and linkages  research and development (R&D)  HallMark IP  53, 54 Harmonization in the Internal Market, Office for (OHIM)  21, 22 hardware versus software  74–77 see also patent(s) and software Health Protection Agency (HPA) (and)  126–29 governance of external relationships  128  Index 309  intellectual property rights from research  127–28 public health challenges to innovation  128 health sector  126–29 open innovation/health outcomes in  127 and threats to health/lifestyle diseases  126 ideas (and)  187–91 into business propositions  188 categories of – incremental, disruptive, revolutionary  188 developing  190 expertise  189–90 factors to be considered  188–90 for making money  187 origin of  187 proceeding to the next step  190 types of opportunity  188 valuing  see valuation of ideas India and synthetic chemistry  117 infringement(s)  279–80, 281 of intellectual assets  27–28 of patents  67 secondary  293 of trade secrets  279 innovation (and)  163–68 see also open innovation and Open Innovation (OI) challenging the how and why  90 cost–benefit analysis  157–58 defining  155–56 infrastructures  82–83 innovative culture  155–59 designing product portfolio  158 matching market needs to technology  157 innovative environment, creating an  see main entry leading for  see leading for innovation measuring  whole company approach to  see whole-company innovation Innovation Index  innovation platform development (and)  83–84 see also United Kingdom (UK) Assisted Living Innovation Platform  83 current innovation platforms  84 Low Carbon Vehicles Innovation Platform  83 innovation protection  see firm-based strategies for protecting innovations innovation support (and)  15–18 see also design and intellectual property (IP) commercial success  17 manufacturing  17 innovation-seeking tools  164–67 see also websites free search engines  165 Google/Yahoo alerts  164 halfbakery  165 knowledge transfer networks (KTNs)  167 Knowledge Vine, The  165 technology portals  165, 167, 166–67 innovative environment, creating an  155–57 with experimentation by employees  156–57 with reward systems  156 Innovative Medicines Initiative (IMI)  114, 116 intellectual assets (IA)  26–29 benefits of  28 costs of  28 and free websites for patent searches  28 and identifying IA by audit  27  infringements of  27–28 intellectual property (IP)  11, 31, 294 see also adding value to early-stage IP and IP assets fast  see fast IP freedom-to-operate issues  108 in Indian pharmaceutical industry  235–36 for innovators (and)  19–24 national and international IP systems  20 rights for business  see intellectual property rights and Lambert Collaboration Toolkit  24 licensing  24 life cycle  216–17, 216 in life sciences  112, 115–16 management systems  217–18 managing international  201–03 see also global dimensions maximizing  15–16 valuing/valuation checklist  24  310 Index  maximizing value of  31–35 realizing value  34 value structures  34–35 needs of organization  70 ownership of  170 and pharmaceutical industry  131–32 portfolio management  see main entry as profit centre  see IP as profit centre protection of  105–09, 276 recognition of value of  109 value-for-money  see value-for-money IP  Intellectual Property Office (IPO)  20–22, 23, 28, 121, 211 IP Healthcheck (online diagnostic tool)  23 intellectual property rights (and)  20, 127–28, 209–11, 225–30, 272, 294 see also portfolio management copyright  22–23 designs  21–22 examples of needs and problems  227–29 additional individual IPR needs  227–29 common needs  227 geographical limitation/extent  226, 229 law governing ownership of  210 legal monopolies legislation for  294 licensing  see licensing your intellectual property rights non-enforceable  290 patents  20–21, 226 protection of  294–95 registered  211, 225–26 securing  209 territorial  211 trademarks  21, 226–27 unregistered  225, 226, 279 utility model  226 International Bureau of the World Intellectual Property Organization  20 IP asset valuation  272–76 considerations of methods for  275 identification of IP asset  275 purpose of valuation  275 target audience 275 exploitation options for  273–74 accessing capital through IP asset-based loans and securitization  274 sale, licensing and joint exploitation  273 through partnerships and joint ventures  273–74 methods/approaches for  274–75 cost-based  274 income-based  275 market-based  274–75 non-monetary value indicatorbased  275 and steps for releasing locked-up value  276 IP assets: exploitation, identification and protection of  276 IP in the new economic powers (and)  235–39 establishing IP base  237 identifying/knowledge of competitors  237 Indian pharmaceutical industry example  235–36 innovation  238 lobbying  237–38 networking  238 research into and understanding of IP landscape  236 use of local knowledge  236–37 IP litigation, special cases in  290–93 see also IP litigation anti-trust litigation  290–91 copyright and design right  293 and proof of copying  293 secondary infringement of  293 and English Patents Court  292 pharmaceutical patents  292 standards litigation  291 and FRAND terms  291 trademarks – survey evidence  292–93 IP litigation (and)  279–83 see also low-cost litigation strategies Chancery Practice Guide  280 Civil Procedure Rules (CPR)  280 commencement of proceedings  280 discovery (disclosure)  281–82 establishing infringement in patent cases – product description  281 experts  282 factual evidence  282 in Germany  222–23, 223  Index 311  infringement  279–80 judgment  283 order for directions  281 pleadings stage  280–81 pretrial preparation  282 trial  282–83 IP portfolios  272 see also portfolio management value of  272 IP as profit centre  see IP strategy IP for SMEs (and)  232–34 see also small and medium-sized enterprises (SMEs) copying by competitors  232–33 insurance for  233 investors/business partners  234 patent applications  233–34 IP strategy (and)  57–61, 70 awareness of assets  59  choice of brand name  59 copyright  59 efficient portfolio management  60 enforcement of rights  61  licensing/selling for profit  60–61 patent claims  69–72 step plan for  57–58 thinking ahead  58–59 Japanese Patent Office  31 Keeley, L  32 Knowledge Transfer Networks/ Partnerships  82 knowledge exchange  43–46 difficulties in  44 and Manchester: Knowledge Capital (M:KC)  45–46 see also main entry between universities and business  44–45 knowledge transfer programmes  93 leading for innovation  137–41 active interest and allies for  140–41 case study for  137–38 meaning of  138–39 and modelling role of leadership  137–38 and provision of guidance  139 Lego: Design by Me  10 licensing  199–200 licensing intellectual property rights (and)  192–95 benefits from/reasons for  193 definition of licensing  192–93 gaining a licensing agreement  194 terms and conditions of agreements  193 life sciences  111–18 and application engines  116 business model for  114–15 case study for  117 commercial limitations on realising potential of  111–12 business model  112 funding  111 intellectual property  112 management  112 funding for  113–14 and intellectual property (IP)  115 and open-source innovation  116 and single-programme-focused companies  116–17 technical limitations on realising potential of  112–13 clear pathway to regulatory approval  113 declining R&D productivity  112 fit for purpose  112–13 need for partnerships  112 Low Carbon Innovation Centre (LCIC)  123 and CHP biomass gasifier (UEA)  123 low-carbon technologies (and)  120–24 see also China Biofuels for Heating  122 collaborative projects: Carbon Connections  122 combined heat and power and biochar  123 construction  123 DeltaStream  122 Intellectual Property Office (IPO)  121 Low Carbon Innovation Centre (LCIC)  123 public funding schemes for innovation  120–21 role of venture capital (VC)/business angels  121 low-cost litigation strategies  285–89 after-the-event (ATE) insurance  286, 287, 288  312 Index  conditional fee agreements (CFAs)  286–87, 288 Patent County Court or IP County Court  288 third-party funding  286, 288 Lowe, C  117 making money by licensing your IP  see licensing your intellectual property rights managing the portfolio  see portfolio management  Manchester: Knowledge Capital (M:KC) (and)  45–46 Design for Sustainability (D4S)  45 Innovation Manchester Network  45 MIMIT  45 Omega  45 market demographics  91 market needs: matching to technology  157 Medical Research Council (MRC)  132 and Centre for Therapeutics Discovery (CTD)  132 Medical Research Council Technology (MRCT)  132 Mehrabian, A  138 merger and acquisition (M&A)  33 National Endowment for Science, Technology and the Arts (NESTA)  3–6, 121 and the Innovation Gap  Innovation Index  research  3, 121 Nintendo Wii  99–100, 101 non-disclosure agreements (NDAs)  85, 88, 105 Nucleus  53–55 online tools/videoconferencing  145 open innovation  163–68, 166–67 see also innovation-seeking tools and websites for large companies  163–64 for smaller companies  164 Open Innovation (OI)  8–13, 92–93, 99 benefits of  10–11 more and better ideas  10 risk reduction  11 speed  10–11 wider networks  11 consequences  11 changing relationship with corporates  11 role of intermediaries  11 strategic approach  11 definition of  9–10 Facilitated  100 and FMCG companies  issues with  11 culture and personalities  11 intellectual property  11 internal resistance  11 in life sciences  116 rationale for  8–9 Proctor & Gamble example  Open Innovation: Researching a new paradigm  163 organizations  see evolution and fit for innovation outsourcing and IP  203–04 Paris Convention (1883)  180 passing off  279 Patent Cooperation Treaty  20 patent(s)  20–21, 225, 226, 272, 279–80, 295 see also IP strategy; patent filings; patent protection and software agents  86 applications, international  211–12 ‘breakthrough’  65–66, 68 broad claims for  69, 71 definition of  176 English Patents Court  292 European system of  75–77, 242 freedom to produce  176–79 assessment  177–78 negative assessment  178 improvement  66–68 legal and commercial perspectives on  66–67 value of  66 infringement of  67 marketing, resources for  68 for mechanics, electronics and software  75–76 and monopolies  290 multinational  202 as negative right  176 Ocean Tomo 300® Patent Index  32  Index 313  and patentability assessment  176–77 pharmaceutical  292 priority dates  211 rights  34 and portfolio audit  34 scope of claims for  69–72 and utility models (UMs)  221, 222 patent filing strategy  240–49 exceptions to filing in the United States  246–47 reasons for filing first in the United States  242–46 ability to file in any language  244 ease of monetizing  244 enforcement and litigation costs  245 low filing fee  244 minimum translation costs  245–46 non-rejection of application  246 obtaining broadest possible US patent  242–43 secrecy of application  246 stringent filing requirements  245 US priority filing and the EPO  243 in the United States  240–41 patent filings  180–83 and enablement  182 French national law on  243, 246 and lessons to be learnt  182–83 priority system for  180–81 strategy for  see patent filing strategy US provisional applications for  182 and validity of your priority  181–82, 181 patent protection  74–77, 85, 107–08 see also European Patent Office (EPO) business case for  77 conditions for  76 coverage of  76 and European Patent Convention  74–75 for mechanics, electronics and software  74–76 Pepsico  10 pharmaceutical industry  131–34 and drug counterfeiting  303–04 and intellectual property (IP)  131 and patents  292 R&D productivity  131 as risk-averse  131–32 pitching to an early-stage investor (and)  265–71 content and cover of pitch  268–70, 269, 270 investors’ view  267–68 mistakes to avoid  270 purpose of first pitch  266 reason for  266 selecting potential VCs  267 timing for  266–67 valuation  268 portfolio management (by/through)  214–18 collaboration  217 decision-making  215–16 IP life cycle  216–17, 216 IP management systems  217–18 protecting/extracting value from ideas  214–15  Proctor & Gamble  12 Connect and Develop  9, 10 product portfolio  158 product segmentation  158 public challenges  126–9 see also health sector governance of external relationships  128 and open innovation/health outcomes  127 and public health challenges to innovation  128–29 stimulating open innovation culture  127–28 Regional Development Agencies  29 research (on)  conveying of meaning  138 designer skills, thinking and perspective  49 and innovation  216 quantitative  96 relationships with suppliers (CBI)  UK angel investments (NESTA/British Business Angels Association)  267 research and development (R&D) (and)  4, 43, 112, 113, 163, 266 acquisition  35 and innovation  92 Magstim  10 research grants, obtaining  170–71 reverse engineering  106  314 Index  rights  see intellectual property rights  Scase, R  91, 93 senior citizen market demographic  91 Shire Pharmaceuticals  34–35 small and medium-sized enterprises (SMEs) (and)  39, 163, 170, 193, 294–95 IP for  see IP for SMEs knowledge transfer programmes  93 litigation  287–88 patent system  295 tax incentives for  89 Small Business Research Initiative (SBRI)  84, 114 and Retrofit for the Future  84 social networking sites  96 Facebook  96 Twitter  96 software (and)  74–77, 105–09 confidential information  105–06 copyright protection  106 and European Patent Convention (EPC)  74–75 IP freedom-to-operate issues  108 non-disclosure agreements (NDAs)  105 patent applications  107–08 patent protection  107–08 piracy rates (2007) in UK, USA and Australia  294 pirated  294 registered design protection  106–07 trademarks  108 surveys/studies (of) Community Innovation Survey (CIS) 2007  government-backed venture capital schemes  121 importance of IP in business  32 State of the IP Industry Survey (2009) (CPA Global/IP Review)  32–33 tables innovation-related negotiations  260 technology portals  166–67 times and costs of enforcement  223 tax incentives for innovation  89 technology as accelerator for growth  39–41 connections  40 partnerships  40–41 Technology Strategy Board  41, 82, 83 and knowledge transfer programmes  93 technology tools FALSTAFF  303 radio frequency identification (RFID)  304 Trade-Related Aspects of Intellectual Property  298 trademarks  21, 108, 210, 225, 226–27, 272, 279–80 attorneys: HallMark IP  53 survey evidence  292–93 Unilever  10 and Marmite  96 United Kingdom (UK)  81–84 see also Intellectual Property Office (IPO) Higher Education Innovation Fund (HEIF)  86 innovation infrastructure in  82–84 Low Carbon Transition Plan  121 Low Carbon Vehicles Innovation Platform  83 Low Impact Buildings Innovation Platform  83 Research Excellence Framework (REF)  86 Technology Strategy Board  41, 82, 83, 93 United States of America (USA) copyright protection in  106 IP value of  31 Patent and Trademark Office  31 patents in  242–46 regulations on genetically modified crops  113 universities, working with  85–89 and licensing/assignment of university IP  87–88 non-disclosure agreements (NDAs)  85, 88 by revenue sharing  87 for research  86 and tax incentives for innovation  89 universities/higher education (and)  93 business start-up  198 ideas  197 licensing  199–200 spin-out/spin-off  198–99  Index 315  University of Manchester Intellectual Property Ltd (UMIP Ltd)  168 unregistered rights  see copyright; infringement; intellectual property rights and passing-off utility models (UMs)  221, 222, 225, 226 valuation of ideas (and)  253–57, 254 balancing anticipated risks/ rewards  253–54 communication  256 content  255–56 context  254–55 royalties  256–57 value-for-money IP (and)  209–12 how and where of protection  210–11 international patent applications  211–12 key assets  209–10 ownership of key assets  210 spreading the cost 211 strategies for  211, 212 value innovation (and)  99–102 Blue Ocean theories for (Kim and Mauborgne)  100–101 and Facilitated Open Innovation  100–101 process for  101 co-visioning  101 ecosystem building  102 enablement modelling  102 idea creation and divergence  101 validation, selection and convergence  101–02 value structures  34–35 venture capital  113, 267 see also NESTA British Venture Capital Association (BVCA)  121 and business angels  121 Giza’s Ofek Program (Israel)  115 ViiV Healthcare (GlaxoSmithKline and Pfizer)  115 Voice over Internet Protocol (VOIP)  91 Wallage, Dr Z  123 watch your priorities  see patent filings Watson, T  14, 16 websites  Academia search engine: www.academiasearch.info  165 Dell Ideastorm.com  95 European Patent Office (EPO): www.epo.gov.uk  20 halfbakery: www.halfbakery.com  165 Innovation Park Search Engine: www.innovationparksearch.info  165 Intellectual Property Office (IPO): www.ipo.gov.uk  20 knowledge transfer networks/KTNs: www.ktnetworks.co.uk  167 Knowledge Vine: www.theknowledgevine.net  165 Lambert Toolkit/model agreements www.innovation.gov.uk/ lambertagreements  24 litigation: www.justice.gov.uk/civil/ procrules_fin/index.htm  280 Low Carbon Transition Plan: www.decc.gov.uk  121 MyStarbucksIdea  95 open innovation: www.openninnovation.net  163 for patent searches  28 and technology portals  166–67 Volkswagen co.uk  95 World Intellectual Property Organization (WIPO): www.wipo.int  20 whole company innovation (through) 142–8 collaborative learning environments (CLEs)  144 flexibility and communication in value web (by/with) 146–48 empowerment  147 incentives and measures  147 rapid iterations/feedback cycles  147 sensitivity to programme phase  147 as group sport  143–44 physical environments for creative work  144–45 prototyping, simulation and play  145–46 virtual knowledge environment  145 Wikipedia  95 Witty, A  115 Woolworths  90  316 Index of advertisers Agile IP LLP  64 Alta Innovations Ltd  186 Brann AB  224 CPA Global  30 Forsyth Simpson  284 GN ReSound  154 Hargreaves Elsworth  169 Health Protection Agency  125 Highbury Ltd  252, 258 Holme Patent A/S  231 Hynell Patenttjänst AB  219 Invest Northern Ireland  25 Italian Patent & Trademark Office  300 Ithaka Life Sciences Ltd  110 Latham & Watkins LLP  278 Manchester: Knowledge Capital  42 Manchester Metropolitan University  196 Mathys & Squire LLP  v Mewburn Ellis LLP  208 MIH Centre Ltd  Moetteli & Associés Sàrl  xi MRC Technology  130 Nederlandsch Octrooibureau  73 Northern Ireland Science Park  264 Nucleus  51 Pera  98 Rouse Legal  56 R T Coopers  xix Serravalle sas  175 Strathclyde Business School  149 Technology Strategy Board  ii Thomson IP Management Services  213 University of East Anglia  119 University of Manchester  162 Vereenigde  vi Welsh Assembly Government  14 www.agile-ip.co.uk www.alta.bham.ac.uk www.brann.se www.cpaglobal.com www.forsythsimpson.com www.gnresound.com www.heip.co.uk www.hpa.org.uk www.highburyltd.com www.holmepatent.dk www.hynell.se www.investni.com www.uibm.gov.it www.ithaka.co.uk www.lw.com www.manchesterknowledge.com www.mmu.ac.uk/studentships www.mathys-squire.com www.mewburn.com www.mihcentre.co.uk www.moetteli.com www.mrctechnology.org www.octrooibureau.nl www.nisp.co.uk www.hallmark-ip.com www.pera.com www.iprights.com www.rtcoopersitlaw.com www.serravalle.eu www.strath.ac.uk/business www.innovateuk.org www.thomsonipmanagement.com www.lcic.com www.theintellectualproperty.net www.vereenigde.com www.business-support-wales.gov.uk ... invest in the right kinds of innovations will be the ones driving not only their own bottom lines but the economic prosperity of the UK The bottom line Those companies concerned about their bottom... Robin Webb Director of Innovation, IPO  xx  1  PART The innovation premium  2 3  1.1 How innovation drives growth Jonathan Kestenbaum, CEO of NESTA, shows how innovation leads to company growth,... early-stage investor Alan Watts, Halo, the NI Business Angel Network Why pitch? 266; What’s the purpose of the first pitch? 266; When to pitch? 266; Who to pitch to? 267; How does the investor see things?