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?