Day 2: IP & SMEs in Europe: Taking your Ideas to Market- Webinar
Day 2: IP & SMEs in Europe: Taking your Ideas to Market- Webinar- Europe’s economy relies heavily on small & medium-sized enterprises (SMEs), which make up 99% of all businesses in the EU region. As these SMEs invest their time, money, and resources in creating products or services to cater to the needs of their customers, it is only natural for these businesses to seek ways to not only protect their creations but also create value from them.
Although SMEs can use numerous IP rights to safeguard and derive value from their assets, most of them are unaware of these assets and the value they hold. Data from the EUIPO shows that in 2019, 38% of the European SMEs did not register their IP rights due to lack of awareness about IP and its importance. The data also suggests that while 25% of medium-sized IPR holders valued their intangible assets professionally, only 20% of small and micro-sized IPR holders did the same. Among SMEs that registered their IP rights during 2019, 54% witnessed a positive impact, including a substantial increase in turnover (39%), enhanced reputation (52%), and ability to enter new markets (37%).
The event is being organized on the sidelines of the World IP Day 2021 on the theme outlined by the World Intellectual Property Office.
Key-points to be covered
- How SMEs can be smarter about their tech transfer needs and offerings?
- What are the key attributes to look for in service providers when sourcing IP services?
- How can SMEs leverage benefits of globally coordinated patent and trademark filings?
Alejandro Sanz – Managing Director, Sagax.tech, The Netherland
Anant Kataria – CEO, Sagacious IP, Canada
Oliver Dannenberger – Partner. Abitz, Germany
Faiz Wahid – Regional Head – Europe, Sagacious IP, The Netherlands
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Faiz Wahid speaking– Hello, everyone, a warm welcome again. My name is Faiz Wahid. I am the Regional Head Europe at Sagacious IP. And, I’m your host for the online conference. It’s on the topic – IP and SMEs in Europe – Taking your ideas to market.
The event, that we started yesterday, and as you may know, this event is hosted on the sidelines of World IP day 2021 which is observed on 26th of April by WIPO. And, Sagacious is a proud partner of WIPO through their WIPO Green Programme.
We make effort every year to host an IP event that will help promote IP awareness in our network. And this event is the first ever dedicated event Sagacious have hosted for the European attendees.
We are delighted that we are supported and joined by distinguished speakers from eminent organisations like Sagax.tech, Abitz, & Sagacious.
I am also glad that Sagacious IP could partner with Hallesius Consulting and House of Knowledge. They have supported the idea of hosting the event from the very inception. Through this event, we are trying to raise awareness about IP knowledge among our audience. And, also with in our partners and share it out with our network.
Yesterday, we started our event with very interesting presentations by eminent speakers on a variety of topic relevant to SME’s. We had Wongel. He is advisor at Sagacious and former director of the EPO. He addressed the question “How can patent intelligence help SME monitor competitor, market and tech trends.
We had Magnus Hakvag who is CEO of House of knowledge. He joined us from Norway. And, he provided his expert’s view on how clear business understanding of IP concepts is critical for building collaboration between business and product and R&D Team.
We also had Hans Hallesius. He is the independent advisor at Hallesius Consulting firm and head of electronics. Hans spoke about how to establish a lean IP function to manage innovation outcomes.
Finally we had the interesting IP leadership tips for SMEs from the director of the IPR Management at Raysearch laboratory, Danielle Lewensohn.
So, after this sort of trailblazing, we have 3 more presentation today. 3 more Key note speakers are there today.
We will start with Alejandro Sanz who is MD of Sagax.tech. And, we have Anant Kataria who is the CEO of Sagacious IP. We have Dr. Oliver Dannenberger who is the partner at Abitz. I will introduce the topics and also the speakers. Before I go into more detail, after these three presentations, we will have the question and answer session.
I request everybody to keep posting their questions using the Go To webinar question on your screen. So that, I can collect those questions and ask our speakers towards the end. We will ask all those questions and after they finish with the Q&A, there is a networking lounge. Where, we will chat about these topics in informally with the speakers and others. That is, I will post the link of it in the chat for everyone. And, I request everyone to join after this session.
So, coming to the topic. The topic is: IP and SMEs in Europe, particularly. And within Europe, we saw, I shared some statistics yesterday, and I want to do that, just for the sake of repetition as well as for resetting the context.
Almost 99% of small businesses in the EU region are SME’s. The EU IPO data, from 2019, shows that almost 38% of the European SMEs did not register their IP rights due to lack of awareness about IP and its importance.
So, what we’re going to talk about today is very critical. And, before we jump into the presentations, I would like to invite quick initial remarks from each of our speakers. To know, what is their view about IP and SMEs in Europe? And, why do we think the IP is critical for them?
So let me start with Oliver and come back to Alex and to Anant after that.
Initial Remarks: Oliver Dannenberger
Oliver speaking- Hello, thank you guys. So, today I will give you a short overview about how the IP can be protected.
So, especially for small and medium enterprises, they are very creative. They create many new ideas. They have ideas, but they often keep forgetting that they should protect their ideas. And, they forget their inventions could be either trademarks or designs or patents from other competitors. SMEs forget to make sure that this is covered correctly with their own rights. This is why I give a short introduction, what possibilities there are, with a focus on worldwide, also in short getting into more details in Europe. Thank you
Faiz Wahid speaking– Thanks, Oliver! Alejandro, what’s your view on IP and SME and why IP is important for SMEs?
Initial Remarks: Alejandro Sanz
Alejandro speaking- I concur with Oliver. I guess it’s a fundamental task of SMEs to protect their own creativity, innovation, before going in and discussing with incumbents.
But, what my talk is going to be on the ways how they can use IP to understand whether it’s a good fit between the innovation and the business or partners or potential business associate in the future.
So, it is the proper way to discuss to exchange information, provides a frame, provides a way to evaluate what is on the table for establishing any type of the collaboration between SMEs and establish complex. It is strategically important for them and it’s used by both the SMEs and the incumbents to assess the quality of the innovation that is proposed.
Faiz Wahid speaking- Thanks. Thanks, Alejandro. Anant, what are your thoughts?
Initial Remarks: Anant Kataria
Anant Kataria speaking: Yeah, Faiz. I think, like Oliver said, and also like Alex concurred that SMEs do innovate. The highest or the majority of businesses in any country or any continent, you’ll see it’s formed by SMEs and start-ups. With various polls that have been conducted it has been identified that the reason SMEs do not tend to focus a lot on IP is because they have certain perceptions about IP being expensive, or IP being time consuming. And, also, IP being mostly for compliance purposes and not specifically adding value to the business.
So I think there is a lot which SMEs can do or benefit from just by getting that mindset which links IP into with business and not getting stopped by these limitations. If they talk to the right people, they will understand that, OK, this doesn’t apply. So my perception was probably wrong, and it’s not very expensive. It is actually adding value to the current products that I’m selling. And, it is creating opportunities for me to sell more, or lead the market. So that’s what I would say that there’s a lot of perception change that can help SMEs make a lot of out of IP.
Scouting and Transferring of Technologies
Faiz Wahid speaking- Great. So, various thoughts from our speakers on that initial question and let me now move on to invite our first speaker for today, Alejandro Sanz managing Director of SagaX.tech. He’s going to speak on the topic scouting and transferring of technologies and particularly addressing the topic of how SMEs can be smarter about their tech transfer needs and offerings so both, you know, inbound and outbound.
And, before Alex starts off with his presentation, I need to give a quick introduction of him.
He’s an innovation excellence strategist, who is passionate about advancing entrepreneurial business rethinking. He has held management positions, particularly innovation management positions in corporate environments of Turbomeca, Danieli, and then SKF. He, currently, is in private practice at SagaX. And, he’s also a guest professor and permanent expert consultant on the Board of Chinese Academy of Industry and Information Technology Integration. It was created by the Chinese Ministry of Industry Information and Beijing Institute of Technology. So, he’s an expert in this space, and continuously consults organizations, and also very active academically. So, over to you, Alex, on this particular topic.
Transferring/ Selling of technology from SMEs
Alex– Thank you very much, Faiz. More than an expert, I would like to formally share a window on how the transferring/selling technologies from an SME could be seen anywhere. So, the structure is basically, based from the point of view an SME having novelty and willing to transfer, selling this novelty to company and incumbent.
So, we’ll be focusing on identifying the targets, the sources of information you may derive. We’ll talk a little bit about the myth of the blank spot. And, I will conclude by using some critical thinking loops in order to identify opportunities. How to yield opportunities in order to identify points where we can make a successful transfer or successful selling of the technology.
An SME looking for a partner. Let’s start looking for a company you should be looking at. By this, I mean, you should be looking for a company that is close to your field of application, close to identifying value what your innovation bringing to them probably not too close to your fear because they can also judge the strength, the weakness of your technology, your protection.
They could potentially become competitors. IP, in that sense, is critical in order to provide real protection.
So, the key in general are for the type of company is different but complementary. Some of you will read the things that are critical. Looking at the modality and that is probably very important for SMEs is to lock at which kind of relationship do you want to establish with a company and incumbent.
Is it a partnership for finishing the development of you have started, for fine tuning you already have, departments like engineering and product prototype are the good entry points.
If your technology is already quite mature, is more plug and play and sell then my advice would be that still further development is an interesting one. Strategic marketing could be another entry point for the company. In general, avoid sales department ( the sudden death) and R&D (the walking dead).
In terms of the venturing part, because everybody has two things, which are not useful for an SME. It has one of the strongest number, invented here, in the company. And, they don’t have normal budget flexibility to come in, help, and invest into the new venture.
General advice would be even those companies local, very homogeneous, they are not. They have history. They can be coming from and managed by, managers by growing, they have geographically specializations, include source of information to identify where, geographically, and keep people you, want to start contacting. So, the fundamental advice is, use that information to know the right doors to knock.
Information Sources- Beyond the Obvious
Intuitional information sources beyond the obvious- patents of course. But beyond simply looking at numbers, classes, trends of what your potential partner is doing locally & the average life. How much are they keeping of the portfolio alive. Which is the average like? How fast are they throwing patent applications, in which sector are they doing so?
Look at the countries where they are applying, look at the interests and locations, look at their behaviour. Are they having organic growth or are they doing same IP they were doing before sector or are they diversifying. A Key source of information I would certainly advice to search is look at the websites in terms of vacancies.
Look at the profiles and the locations. It tells you a lot of companies going in the kind of need and competent launch.
Product launches is important. Two relevant factors, product’s frequency and their relevance. By relevance, I mean the type of innovation that they introduce. Is it product innovation only or is product innovation cross business innovation. Is there service dimension associated with that -yes or No?
Externalization will tell you with whom they are the partners with. And, this information is available in the European level, in national level corporations. In many cases, even the website of companies tells you about partnerships and joint ventures that they have established. It tells you the sectors where the company is ready to go searching for competencies. They are probably sectors where you should be seeking in
Look at the web presence. I strongly advise to look at the branding, what is the brand stands for, the image. Face is very important. If your brand doesn’t have a face then it’s probably a big problem.
Take a look at the yearly results. In general, we want to have a healthy partner. A partner that has retained earning and re-invest in the new technology. He has growth and profitability. In fundamental, we want to partner with not a poor partner, put in this way.
Look at the sector area where you are, in terms of growth, consolidations, the overall trends in the markets. So focus on that.
In a nutshell, if you’re looking for patent information, you may get rapidly, in terms of what patent is, you’ll have the corporate ownership information, that is clear, the countries where they should be considering doing business. You have an initial embodiment of the technology, what you will not have is the limitations, where this really will not work.
What are the limiting conditions for this to work? What are the drawbacks of this type of technology? Patent tends to be in optimistic range design in terms of performance, compositions, range of operations for a given application.
On the other hand, if you want to have that kind of information, look at probably articles, scientific articles that will give you probably more trustable analysis in terms of limits for a given technology. Keep in mind that the legalities in the scientific language do not always match. Two different kinds of thoughtfulness about the same technology can provide very different information. Use it properly.
The Myth of Black Spot
I can see a lot of people talking about the blank spots. Use IP to identify the blank spot, as this was an intrinsic property of IP or an IP representation. I see some of these patent system lives when there is no, lets say, white spot.
My view is simple. There is no such a thing, like a white spot. It is empty space system not representing anything, but the cost. What you get into the screen here is just technology distance between different IPC codes. The graph doesn’t have any co-ordination. You cannot identify where the right spot is. There is no notion of a black spot.
That doesn’t mean that you do not work your data in order to get appropriate information. But, that’s what I call an opportunity to spot. Opportunity spot is constructed. It is made by you, or the companies providing IP services to you. By analyzing data, IP, and market data, into build process technologies for the opportunities in a way that is sector in market – specific.
The same technology into different sectors, maybe strategic, maybe, just a standard technology or not. Its company-specific. The same technology for two companies doesn’t help the same relevance. And that is because this opportunity spot is portfolio specific. By portfolio, I mean, most your previous IP of the company and in the competence you have to develop the technology.
If a company is trying to develop a technology to go to the moon, probably they don’t have the resources to do.
So, just looking at this will tell you how to identify opportunity spot. But, my suggestion is, and there are many ways, work your data, work your IP data, use the valid IP data to map the opportunities. To me, halfway suggesting, you always hear like a competitive position, time, competence, prospect, or cost profit position. Try to map this graph in their own 3D’s or 2D of them and you will have a lot better assessment. Planning opportunity is not on a specific company. Aim on always taking informed decisions.
Guess we all agree that in order to get change in the market, you need to have change from people, markets are requesting things. There are new needs to be fulfilled and that creates an opportunity. That is where an SME can bring its innovation when you can engage the value of that innovation. The point is how to get there. But I’m suggesting that uses a series of loops, extra capabilities, the expertise in some critical thinking.
You will see, basically, a cross checking of information all over before reaching a conclusion. Let’s go for the first one. The first one is the exploring capability that includes your ability to make analytical, extra-ordinal analytics of the data, your interaction with either the internal department, or your customer, or your client. The purpose of the search is how much are you able to understand IP tools, or mutations, or all sources of information? How you can manage them in a proper way?
And I am totally convinced that you need to have this tool, which is basically, to understand the business and business insight. You need to have some technological understanding, some function specialization on the technology you want to analyze.
Now, it is the time to start cross-checking to get into the expertise side. By having your analytical skills in the personal direction, you normally should get company or divisional understanding. Keep in mind that divisions in companies do not always have the same objective. They are not totally divergent or dimension may be in a different sub market than the overall conglomerate. So it’s better to have an understanding for whom are you doing this kind of analysis?
The functional specialization in your business insight will give you a hint and insight about which data, or which evidenceyou are going to collect and how you’re going to be using it. The purpose of the investigation in your professionalism, so your ability to use the different methods, will allow you to select the logic and the analysis methods.
Now, the critical thinking part comes again with a second cross-checking.
Your understanding of the company in the data and evidence will give you credibility of your sources, these sources, the ones that we are collecting, the ones that we’re analysing, are credible and useful. That’s not a value of the data, per se, is based on the understanding and the needs that are requested.
The company, or the traditional understanding, and the methods allow us to create a framing for our recent implementation for our worries, our recent, and is valid to see this framing with that type of recommendation.
One part that I really underline that is important is, when you have the data. When you are collecting your information in the methods that you are using to make that analysis, keep in mind that there are always gaps, there are always assumptions, and they are always hypothesis and that is normal as far as you take them into account and the possible impact that they will have is fine, don’t forget them. Okay, as a conclusion, I would like to say is today’s business is different than what it used to be.
It is a fast evolving, diversifying business, and I see it as a look. I guess it’s a very constructive and very open for innovation. Fortunately, this has been created. You need to understand the logic of how business works. By this, I mean there are new technologies, new needs, new services that are either proposed to companies or requested by society, by our customers. So there are no opportunities for disruption, or evolution, or innovation. It means that the competitive landscape, so the elements are using to differentiate ourselves in the market, to sell our products to the customer is rapidly changing. It is a good thing. We do better understand where and how to capitalize on those opportunities.
At that point, companies and the resources will become globe. The competencies are complementary. That means, in general, that we are facing a professionalism of the creativity management. It is not just a bright idea in isolation. It is a process based on data, interaction with clients, with customers. Internally we look what is happening around the world and is cross functional.
The new relationship is very much based on reciprocal learning both the customers and the companies but also the partners and learning experience and experienced level of interacting with the company. It’s a lot about in that, beyond the business and that is something that is important trend that I will keep on the line in. In that I say it is not only the user experience, it’s the partner experience, and it’s the business sustainability.
This is the loop where we are working, and this is the loop where SMEs will find a very nice ground to sort and prosper. Also stating the obvious I was hesitating about if I should put the slides, but I guess it’s always good to underline some of the key elements. Any critical thinking is only valid if it is based on the right information. The right information or the he right data has to be relevant, has to be accurate, has to be inter-connected, in the right quantity to be processed, and I underline the right quantity.
Too much that is useless as noise, you’ll have a great chance of keeping the iceberg in the ocean. In general, keep in mind that selling is about creating value to your audience, or an SME will want to convey that, because until something is sold nothing really happens. You need to convince them of the value you have and you need to understand them before.
Every Opportunity has a Context
Every opportunity has a context that it’s important to understand. There’s not an absolute value of an opportunity. So, if you see something strange, that looks like an opportunity. That opportunity may have different elements, always a risk-reward balance.
The competence and the resources are required to develop this. There is uniqueness. The Capacity to professionally execute that opportunity, the strategic feat, and the strategic feat has to match both SME and the company.
Keep in mind, that this is not the only element. It’s the context around which you have to take into account. And by this, I mean, you need to understand, which are the business needs and customers that will be benefiting from this information and the timeliness, the competitors and technology, are you alone in this or who else is going to be active.
There’s an old saying in marketing. It is “remember that you could be right but the market could be wrong a lot longer. So, it’s better to identify this earlier. And with that, I just thank you for your attention, and I obviously, welcome any questions you have either now or at the end of the webinars and then the Q&A session. Thank you very much.
Faiz Wahid speaking- Thanks, Alex. I think that’s a pretty comprehensive overview of the topic and the four different aspects of, you know, innovative action. That’s interesting for people to kind of set of framework and in terms of how they can, they can look at the opportunities that they have. I do have questions flowing in and but we will address the questions at the end and I will sort of now move to invite our next speaker, Anant Kataria, who is the CEO and Co-founder of Sagacious IP. He’s also the member of the Forbes Council and is part of the IAM 300 which lists the IP strategists globally. He’s also part of the CNBC young talk.
Sourcing IP Services
He is going to talk today about the sourcing of IP services to manage cost, quality, and timely knowledge. Addressing particularly the question as to what are the key attributes that one should look in service providers when sourcing IP services and that from a SME perspective.
So Anant, let me invite you to kick off your presentation.
Anant Kataria speaking- Thankyou Faiz.
IP Services Ecosystem of Today
So, in the context of an SME. If you are, let’s say, a member of the senior management of an SME. If you’re a CEO, CTO, head of the IP or let’s say, a board member of an SME. You need certain motivation to start focusing on IP. It is not natural. It is not a default function that you will usually focus on. So that motivation is going to come through the goals and objectives that you have in your organization.
For example, your goal could be to protect the innovation that’s being generated in your organization. Or, to build a moat around your business so that you are able to protect your business, your market share from being eroded. It could also be that you have decided that you want to be the leaders in terms of innovation in your industry. So, that is one objective that might lead to bring your focus on IP.
Or, there is some sort of innovation happening in your company, and you see that, OK, these are great things that are happening, My employees are coming up with, you know, new ideas, new solutions, and I should monetize them, beyond just including them in my product, and leaving it out for people to copy or you want to improve your product, the product that you’re already selling in the market.
You want to improve it, and that’s where you might find that, OK, focusing on IP or getting some sort of IP intelligence might help. Or, it could be competition in the market, you want to read the competition, there’s excessive competition. And, you want to create a video to track what they’re doing. You want to be ahead of them. And, you might want to be growing your organization inorganically, that might require acquisition, and that might lead you to focus on IP to evaluate the companies or opportunities that you can acquire or it could be your geographical growth.
So you want to grow from your current countries where you have your business to some new geographies and, and probably that might lead you to focus on IP.
It could be to save tax. Now certain jurisdictions – they allow you to save tax on expenses, or on the revenue that’s generated based on R&D, or based on IP that has been the result of R&D. So, you know, there could be any of these objectives, or any other objective that will bring you to think about IP.
Now, when you do that, that’s when you get introduced or entangled into the IP ecosystem where, today, if you see the overall ecosystem of, let’s say, entities or components involved, that you will interact with when you’re working on any objective that involves IP. It’s going to be your in-house resources, your patent attorneys, trademark attorneys, IP law firms that you’ll work very closely with.
It’s going to be services which are other than the services that are coming from your attorneys and from the law firms. Like, for example, searching services, analytics services and, let’s say, administrative services or those kind of services which can be beyond or on top of what you’re getting from your law firms. And, then there are tools. So in my presentation, the intention is to showcase what is possible with these two components :the IP services and tools. And. then how can you go about creating a solution for yourself, which is best fit for you, using these two components.
IP Service Outsourcing
So, I will start with IP Services first. The amount of work or the objective that you want, you can achieve, you know. They can be facilitated by huge number of services available across the globe right now in different areas. Now, for example, you know, there are, I am going to just touch on these things, not go into detail of these things, but there’s IP searching which can be utilized in various functions.
The IP monetization support, there’s going to be management of what you already have. Your patent portfolio, that you have.
IP portfolio that you build, the new applications that you file support with those, supporting your attorneys on those, trademarks, You know, so, , it’s essentially my intention with showing you this slide is that there’s a ton of services that are available, which can be utilized in the entire life cycle of your innovation, right, from, let’s say, doing a Strategic Landscape Analysis, or, like Alex mentioned, it’s like an opportunity spot, not a blank spot or a white spot, but let’s say an opportunity spot identification.
On top of that, you know, building your own innovation. When you understand what is there in the industry, and you are coming up with new innovations. So protecting that innovation, prosecuting that, taking your invention to other countries where you want to take it to, you know, ensuring that once you have your IP than making money out of IP, ensuring that the products that you bring out, they are free from infringement. They are not infringing any existing IP or threatening any IP?
And in case, you know, unfortunately, if there is a situation where there is a case against you or someone asserts an IP against you, then you can utilize these services , you know, to come to those attacks when that happened against you.
And, and now all these services that I’m listing here, you, as an SME, as someone in the SME, you might be dealing with these services directly, or service providers directly or you might be dealing with an external contact, like your patent attorney or an advisor who is supporting you with your objective and they might be facilitating or connecting with the services and getting them for you. But the bottom line is that there’s a huge amount of, you know, results that can be achieved by leveraging these services efficiently.
Now, in addition to that, most of what I showed you on the previous slide can be done or can be assisted by using IP tools. And that helps in either saving your cost or it helps in making the process efficient. So, we did a landscape at Sagacious -identifying and reviewing all the tools that are there in the market that can facilitate what we do in in the IP life cycle. And, we realize that there are huge a number of tools that have come up in the market, most of them in the last five years.
And, and we will see, again, when we started to categorize them, it also, kind of, came up in a similar taxonomy. There are tons of tools on searching, many on monetization, many on IP management, patent drafting, monitoring and then, you know, allied aspects like trademark and stuff.
So, just show it visually, there are 140, 640, 50 odd tools in the market to facilitate or support on searching analytics. There are around 135 that focus on IP management.
It can sound overwhelming, because there are a lot of tools out there, and, if you’re getting into the IP ecosystem, it’s like the beginning of interacting with the different components here.
And identifying, or, you know, working on solving a problem. It might sound overwhelming when you look at all these number of tools, you’ll not be able to probably directly identify which one is good for me, which one is not. So out of the 146 search tools, which one do you pick?
So, that’s a space that you can be in, but at the same time, when you have right people to support you in-house or externally or advisors that you work with, they have a fair idea of what’s happening in the industry. What these tools are capable of. What will work best for you and when you have these people with you, you know, it’s easy to identify such solutions.
So, just to give you a quick glimpse, I just wanted to showcase certain, you know, again, just to visually highlight that, yeah, there is a lot of support available in IP space.
And all this is essentially helping more for SMEs. It’s more helpful because the more tools that you’re able to use, you are able to plug into your processes, the more cost you’re going to save. So there’s a huge amount of resource available. It’s just about identifying the right resource for you and fitting it into your practice that will help you leverage a lot better.
Now, if your IP challenge that you want to solve is just about, OK, I have this innovation, I want to protect. My team came up with this new idea. We changed the product that that we sell slightly, and it’s now improved version, and we want to change, protect this new innovation. Now, when you have that problem, then it’s a very straightforward problem. You don’t need to do a lot about it. You go to your patent attorney, and then he or she is going to support you end to end and in the process, right there itself.
When you have a larger objective, for example, let’s say your objective, is that ok, in the next four years, I want to make sure that my company is the leader in my product segment. I have strong hold on the IP or new products that I create, or the lead that I create in the industry. I want to make sure that I have the major market share in a certain product segment in my industry. And, how can IP support me in doing that? But when you have that question, again, one of the ways you can do it is to go to your patent attorney, and then they will, you know, work with you to build a solution there.
But in these cases, there’s a lot that you might need and there are many things that you will need to keep in mind when the solution is being prepared for you. For example, in such, bigger objectives, you’ll realize that their long-term and month on month, the kind of activity or expertise you need to keep moving towards your goal is going to vary.
So, for example, in the beginning of achieving this objective of leading the R&D, you might be focusing a lot on landscapes, you know, white space or opportunity space identification. You’ll be focusing a lot on competitive intelligence. You will be focusing a lot on identifying the IP growth, an alternative markets , or, in parallel product segment, something similar to your product segment. For example, if you’re working on NFC, you might want to see what happened with Bluetooth. How did the Bluetooth grow in terms of the IP. What fit different applications came at different stage?
Then you might want to, you know, lead that change in your industry. And as you keep progressing, maybe six months down the line, eight months down the line, your requirements might change. Now, know your team knows everything what I need to work on. So now it’s new inventions coming in. So your focus is now on making sure that the new inventions that are coming in, you need to take them to the proper destination of getting a patent application file. Further, six months down the line, your objective is to look at the amount of innovation coming up, has stabilized.
Now, it’s your patent applications in prosecutions, so the activity that’s more in focus right now is interaction with the patent office, ensuring that you’re responding to those office actions and, and so on and so forth. So, this is important to understand that the requirements will keep changing. Different expertise in different kinds of people will be required to perform those activities over the period of time.
Your budget will vary over time. So your industry is going in a certain direction. Your company is going in a certain direction. Things will change, new laws come into picture, new, let us say, you know, things like covid, you know, anything can happen these days. So you know things change and your budget is varying.
Then, so what I’m trying to highlight is that when you’re beginning to create something in the IP using IP, you’ll realize that investing a lot on the in-house setup, versus, utilizing external advisers’ and external facilities available it’s easier to go lean on the in house setup and focus more on what can, you, know, pick up in bits and pieces from outside and create a solution for you and gradually, when you’re more stable, you can, you can ramp up the in house setup.
So some of the other limitations, you know, I would like to highlight here, for, the in-house capabilities are that it will take time to build. You’ll have to hire, you’ll have to train people to do work on, you, know what, what you need to achieve.
Then it’s difficult to continuously upgrade. As I showed you, there are huge amount of services, and huge amount of tools that are already there. Most of them, Most of the tools, at least came into existence in the last five years.
So the rate of change in which the IP support industry is changing is tremendous right now.
So looking at that, if you have an in house setup and making that, you know, keep up with the change, it’s going to be, it’s challenging.
Less Diverse Expertise
Again, there are a finite number of people, finite number of resources you can have, maybe that would be technically limited to certain areas or they would be functionally limited to certain areas. They have more information or more understanding of FTOs.
They may have less understanding of, you know, strategic landscape analysis or you know, opportunity sculpting or, let us say monetization activities. But you need different services from time to time. So, it’s good to have a good control in house on the overall aspects.
But having expertise plugged in from external sources. And It’s difficult to scale. As I said, over a period of time, the volume of different activities will change. So, maybe, you know, your team became very awesome and innovating and they came up with new innovations. And now you want to scale up your process of screening in which and then filing applications. So, you’ll need support there, I mean, you’ll need your setup to scale accordingly.
And its, with the hiring and training challenges, it can be difficult to have that done in house and it’s more permanent in nature.
Then, the fourth thing we need to understand is that industry is changing rapidly. We have touched upon that earlier as well.
So, when you consider all these points, and, at the, again, putting myself in the shoes of, a senior manager, senior management professional in an SME, I see that, you know, with all these things happening, I have certain objectives that I want to fulfil
It is relevant for me either evaluate all the options that are there, myself. I look at the law firms that I need to work with, may be interview 5, shortlist 2, and work with those two. May be I interview service providers who are there. They are probably 10 and I interview those 10 and shortlist accordingly or I work with someone, maybe my attorneys or maybe another advisor who can support me in identifying the forms and the services and the tools that I can work with.
And in either case, when you go that route of building this up, you know, evaluating the services partner, there are certain things that you’ll have to keep in mind, or advisor that you work that they will keep in mind.
Factors for Evaluating Service Partner
So, these are the factors that come into play at that stage.
The quality of work that your partner is used to delivering, so, it can be measured by the technical expertise that they have in your area. Do they understand your market, your technology? Do they have a past record of delivering good quality? Well, you know, take references from Chrome, from the people, and evaluate it in that way.
But you need to be very assured that you can expect good quality, reliable work from the team that you are working with because it’s an important aspect.
In the end, what you are trying to do is, instead of building an in house, big in house team, you’re trying to have same amount of control and same amount of output, same level of output, but without the limitations of the in-house team. So, you’re trying to do that. So, when you do that, to ensure that the quality and level of control is the same, you need to evaluate your partners in such a fashion.
You need to ensure that the relationship is professional. They have good communication. They’re available to you when you need them, just like an in-house professional in your team would.
Process & Infrastructure
They have good process and infrastructure in place. And, they are not learning on your money, they already have established processes. Also, they have digital security, data security measures in place, when you know certain certifications from third parties also help. So, it essentially gives you a confidence that OK, I’m going in trusted hand, if there is a loophole in my understanding, this, they will fill it, they have done it in the past.
They will come and, you know, bring that expertise here. They have processes to make sure that I achieve what I want to achieve. Then, many a times, as I said, the role or the activities that you need at different stages are going to keep changing and you don’t want to be in a position where, OK, I was working with this very good partner. And they were very wonderful when I was working on the searches. Now that I need support with managing my portfolio, they don’t seem to have that expertise. And now when you rope in another partner to work, there is going to be a lot of knowledge transfer.
Single Point Solution & Other Factors
And you know between these two companies that can be challenging on your work, on your portfolio that’s being billed up, it stays it stays in a single point. And there’s seamlessness there.
So, that’s why having a firm that has all different functional expertise in there helps a lot, Ah, again, reporting, it’s not a very, very it is important, not as important as the other point.
But at times you’ll find that the partners that you work with may have some of the processes they have but they’re more rigid. So that’s like a certain kind of report that they can give you and then you will have to work with that, which works well when your processes are also set and these reports are lined with your processes, but when you are in the initial stages, you’re building stuff. Building that team that can support you.
You will need a lot of changes there. You might need a lot of approvals from, let’s say, your board. So you have to take the stuff to them in the form of a presentation. You have to take this stuff to them in the form of a dashboard or maybe you want a very detailed video output to make things easily understandable with the management.
All those things, you should be able to get that kind of support from the partner that we work and then you want to work with, like I said, things are changing. Tools are changing, so you want, from that, focused ongoing development of people and tools, workload and scaling
Continuous Cost Optmizations
It sounds pretty obvious, but it generally is not. For example, if I look from the perspective of developing countries like India, where you’d see that most of such backend services are getting delivered from, the inflation in such countries is pretty high here. And, yet and the reason is the labor costs are much different from the labor costs in the developed countries. There’s a huge gap to match up to that. And that’s why the things are increasing very rapidly year on year
So, what you would not want to have uncertainty in the cost that you are going to encourage year on year. So there should be some way in which the partner that you work with can ensure that either there are not, you know, these increases all year on year or, if they are, then they are predictable in them as and this firm that your partner, is working on ensuring that, you know, this optimization happens at their end, and so they will, they should have focused on that.
Last, but not the least, is collaboration. It’s the overall arching, you know, aspect of what that, you know, what your partner thinks of you. Is it you’re a customer to them, or are you a partner to them? So that feeling- it falls into each and every aspect of delivery, so it’s not so easy to judge. But it can be judged through references. If you see they’ve done some work in the past with someone. You talk to those people and you realize that. So, these are some of the parameters, I wanted to highlight that one can keep in mind when highlighting or finding your team, let’s say, service partners. And, in conclusion, I would say there are a huge number of services and tools and a lot can be achieved using these.
But, at the same time, it’s important to evaluate the right partners who you work with and taking support from experienced people who’ve been there, done that, who can understand your problems, and who understand the availability in the market and, you know, boil that ocean for you to give you that solution. Taking help from such advisors is going to go a long way in helping you achieve that objective. So with that, I would like to conclude my presentation.
Introduction- Dr. Oliver Dannenberger
Faiz Wahid speaking- Thanks, Anant! I think you’ve covered a lot of ground with respect to services tools, and also the evaluation criteria. I can see some questions on that. So I’m noting that down. And. we’ll come back to you in the Q&A. But. in the meantime let me invite Dr. Oliver Dannenberger to share his thoughts on protecting your innovation within and outside Europe.
So, he’s going to address this topic or the question – How can SMEs leverage benefits of globally co-ordinated patterns and trademark filings? And, in general, how can they protect their innovations within Europe and also globally?
Dr. Oliver Dannenberger is a German patent attorney, a European patent attorney. And, also a European trademark and design attorney. He has studied chemistry at the University of Heidelberg. And he conducts research activities in the field of bioengineering and Biomaterials at the University of Washington, in the US. He also received a scholarship from the German Research Foundation. And he’s a consultant at the Fraunhofer Institute at Stuttgart. So he has conducted several trainings across law firms and he’s a partner at Abitz and Partners since 2009.
He is also the member of the Patent Bar Association, FICPI, EPI & GDCh. And, he is very well entrenched and qualified to speak on this topic. He has been involved in various patent examinations, the European and German patent offices and helping with infringements and legal maintains. This is just a brief of Oliver. It’s much more impressive profile. But will I let him speak and you too experience his thoughts on this topic. So Oliver.
Protecting Your Innovation Within & Outside Europe
Dr. Oliver Dannenberger speaking- Okay. Thank you Faiz. Now that we’ve heard this great talks already. I will do my best to kind of cope with them. So, like Faiz has already mentioned the topic will be about protecting your innovations within and outside Europe. To show and to give an overview for the small and medium enterprises very often do not know how they can protect ideas.
So, the idea of this talk is to give you an overview about what possibilities are there for protecting your new products, whatever new products this may be, against imitations. Hence, there are several aspects of a product, which may be protected by different IP tools.
First one would be for technical innovations or inventions, which would be the possibilities of filing patent applications or trying to receive utility model. If the interest is in a product name, a logo, or something like this, this would be a trademark. And then when the appearance of a new innovation is important, this would be a design.
Patent Utility Model
So coming or starting with the patent utility model. What is a patent -utliity model good for? It’s good for technical inventions, methods, and apparatus. And, for examples, you’ve seen that, you see this robot here, which could be a possibility or in medicine for new vaccines or for better treatments or medical law, or for chemical products. Anything you can think of as long as it is technique.
Usually, it is obtained when you apply for this patent or utility model at the Patent Office. For the utility model, there usually is no substantial examination and only for passing this substantial examination. And this is mainly on the grounds of patent being novel and innovative but this only for obtaining, then, what is the lifetime, the difference for utility model, where there is no examination on that thing. Which makes it cheaper and more easy to get, that lifetime is also reduced to 10 years and for patent, it’s 20 years.
Trademark, or any sign that you can think of, which distinguishes your goods, services, from that of some other entity. When you look at the products, you will see. It’s the name it is written. For all the Coca Cola bottle, you have a cock-cola or cock which is its name then you have the way it’s written. Then you have the bottle itself because it’s also possible to get 3D shapes.
Covered by Trademark and their protection itself is linked to specific types of goods, since there are many classes and services which are little best classes. And so, if it’s not very well known, name, let us say product were not very well known that you could also try to protect this.
If it’s not for closed sets a floor, how important? And how it depends to obtain the trademark?
You have to register that from request. It takes about 1 to 3 months. The examination is only for absolute transfer on refusal of novelty or invention step. There is no examination for existence of older trademarks only if it’s really well known then examine might happen.Anyhow, there is no limits for the lifetime, which are important. So Coca-Cola is there already for more, many, more than 100 years, but you only have to renew it every 10 years.
And now, coming to the designs and what is the design. There are many designs which you can see here.
Anything where the appearance of the product results from the features like the lines, the contours, colours anything you can think of. It should only not be too technical. So if it’s really a tool, and you wanted, this covered and protected by design. This gets difficult. And that’s what is to protect us. It’s really what you see is that what you get for protection. You also have toregister upon request. It takes about four months to get registered. There is no substantive examination. The maximum lifetime is 25 years, and only needs to be renewed every five years.
How do you get obtain a patent or a trademark or design?
They all are very similar.
So, first of all, you have to register it by filing with an office institution, which usually is a national patent office, some other kind of official institution for an application which defines the object which describes it, shows the truths of whatever, depending on this design. or it’s an invention you have to write something so that, the object you want to have protected is clearly described. Institution which then would be, for ex, the national patent office examines whether the application fulfils the formula and depending on what you want to apply for and also substantive requirements.
For patent, they are formal requirement, and also substantive requirement which are novelty and incentive step. And, for trademark, they are absolute and relative ground for refusal.
Now, for example, if you want to protect the bottle and you’ve got the idea, Oh, I want to protect my bottle. And a great idea of my, my trademark is the name bottled water protector bottle, which called part of, this would be a ground for refusal of the application.
But if you want to protect assuring quality products and then there is no examination, whether this same already exists or not. For design, it should be novel and there should be some kind of individual character. And if the application fulfils the reading requirements, a patent or the trademark or design are supported by the official institutes. It’s important that the patents or trademarks or designs only offer protection in the territory for which the granting institutions is competent.
This is usually, come to the unusual cases later, states territory, which would be the National Patent and Trademark Office, or United States or China, or Germany, or Malaysia, or to name it.
Marketing & Manufacturing Strategies Depending on Geographies
So, you have to coordinate geographical location of your marketing and manufacturing strategies. So could it be produced over other big markets for selling?
This is so important. So, when you kind of want to evolve your protection strategy. Then, you have to think about, OK, what is the lifetime of your IP rights. A patent that can be maximum of 20 years, or design maximum for 25 years. So, it’s really important. It will always starts with that filing date or project dates or the effective date from which invention or design whatever’s protected.
Different Lifetimes of Different Innovations
As I mentioned, there are limited different lifetimes of patents which you have to renew every year, after three years, or 10 years maximum and can be a little longer. For trademarks, which is usually 10 years but you can renew it as often if you want so there is no limitation. And for design, well, you usually sell it close for 1 or 2 seasons, and that’s it. So, usually it’s between 5 and 25 years.
But still it’s important to co-ordinate your timing of your commercialization of your product and the protection strategy of IP rights. So, there are several tools which give enterprise many freedom and flexibility in commercial structures. However, if you really want to use all these tools, this, you always have to pay for this increase cost, which are usually, administrative cost, maintenance fees, attorney fees.
And one of these tools would be the right of priority, which is defined in the Paris Convention, which most countries worldwide have accepted, which means your first application, then you have 12 months. In these 12 months, you can decide, whether you want to stay with a single country files, all you want to go worldwide or partially or only regions, whatever.
But this later on filing will have the effect that the later filing will get the same filing or effective date as the first application, called the priority application. This, you can ask for all your inventions, all trademarks and all designs. So this actually allows to extend the protection to other countries but you still maintain the same effective date.
There are international patent and trademark design systems. And these are formulated, by WIPO, World intellectual property organization. And there are international agreements and most countries.
For Patents -Patent Corporation Treaty.
And, for trademarks – The International Trademark System, also called Madrid system.
For design, you have the Hague System
They provide international, centralized filing systems. This is important. It’s not usually granting system but a filing system. But these routes, usually results in national or regional patterns or application., first of all because that is not a unitary, but a global patent or global trademark and you have to get it granted on a national or regional level and also enforce it.
So, as I mentioned, here are the PCT Member States if you want to file a patent. These are all the States. If you file an application by the International PCT application, these are the corners you can go into after 2.5 years. You have to have some time to wait. But then you must decide where do you want to go. Do you want to go to some specific countries,like Spain, or Mexico, or go to regions – Asian regions or America or going to the United States.
This is what you need to decide later on. Similarly, you have the Madrid Member States, in 2020. You can see almost the same countries. Almost everything in blue but a little less, especially in South America – there are not so many countries in Latin America, as well. And also, in Africa, not all countries have joined. And then you have Hague member states, which are even less than the trademark or patent system. Member States, the International Member States for design you can see it’s still the Northern Hemisphere. Yes, and also in Africa – some countries but in South America, not so many.
The PCT system, you can see, usually, you have, getting your file, the national application. If you want to file the patent application, you have to talk once you decide, there’s no need to file the spot if you want to go to the PCT system after months, you have to file the PCT application, which derives priority from national application.
And you Get the information and after 18 months or 1.5 years from the original filing, there is PCT publication and you also receive some written opinion on what the examiner thinks. How inventive, or novel your application is, whether there are other problems. Then after two months and some countries, regions for ex, Brazil’s you have 36 months. You have to decide whether you want to forget about your application, or go to one of countries. There are regions, like European region, and there are national offices like US. You can go to China or United states, or you can go to Germany. Europe is more than European Union. At the regional level or national level, there will be the substantive examination and hopefully for the applicants.
So, depending on budget and commercial strategy, the bar graph, which there is, you have a PCT application, which gives applicants more time to decide what he wants to do. The central filing results from reduced administrative costs and you only have to pay once for the first filing or filings or project application or direct filing or the PCT filing. Then, after 2.5 years, to the 30 months, you have to decide what you want to do. You should start a little earlier, before, because you have to translate it to different languages.
Postpones the Major Cost
Because some of the major costs are secret applications, and they can overall, average, calculate some about €5000 for each national file, only for the filing. There still will be examination, and huge costs, and so on.
So, for trademark, you have national basis trademark then international registration. You still have 12 months, and from this international registration, you can decide where you want to go. It extends to China, Germany, or, subsequently extends protection between states. This is easier if you’re nice and simple. This helps your system. This is the Madrid Protocol but you have to know not all countries are participant.
International Registration of Trademark
And then there is IR Trademark. It is a single application. It’s just reduced administrative costs and efforts. There’s only one language and centralized maintenance fee, however, there is a dependence on the base trademarked within five years of international registration. If you lose your base trademark you lose your complete IR trademark. And you can subsequently designate to adapt to territorial protection.
So, now coming since I said also regional patent possible. Coming to the European Patent Convention one of the most powerful systems. And, you can see this is not only in Europe, but this is also shown as a small part. But, there’s also other countries you can go to from Europe later on but also, the European Patent Convention is also not only linked to European Union, but also links Switzerland, Turkey, and United Kingdom are members. UK is still a member and will be a member of European Patent Convention.
This is actually a multi-tasker reaching, and as I’m not getting this European, the EPC, the European Patent Convention, just defines a single centralized procedure for the grant of patents and establishes some standard rules with respect to the patents which are being granted.
At the moment, you, though, you get a European patent. After it is being granted, you still have to decide which countries. So after five years, three years, or 10 years, you have to decide which of the countries where you want to have your European patent Validate it, which means you still have to say, OK, these countries are on a choose, and then you have to pay your fees.
This national conference, however, that’s a future plan, which followed by take another live because that was the idea of having a unitary European Union patent, which is the part of EPC, European Patent Convention, which are members of European Union. They wanted to have a unitary. European Union passed most of the European Union participants. And then, if this happens, you get granted from the European office or the EPC, you could get a unitary, European Union patent, which is, one patent for all European countries.
However, since Britain left European Union at legal difficulties before some course, it’s not there yet. And then, for Europe, we also have a central registration for a new EU trademark, and the European Union design.
The only problem is that a trademark of new designs which covered United Kingdom, no longer cover after post Brexit United Kingdom. So those, hopefully, everybody had one had already had applied for a single United Kingdom trademark, or design from this EU.
OK, I’ve come to the end of my talk. Thanks a lot. I hope you have learnt something.
Questions & Answers
Faiz Wahid speaking- Thanks, Oliver, Can I also request Anant? Yeah. He is also there.
So yeah, questions are flowing in. We have 10 minutes. So we will try to cover as many of them as possible. There is one thing I didn’t do but let me do it now if possible. And, this is related to Oliver’s topic. I just put a quick poll on the screen seeing if the participants can quickly respond to this as to what challenges do SMEs in Europe face when protecting their innovations globally?
Poll: What challenges do SMEs in Europe face when protecting their innovations globally?
So, only the participants can quickly vote on this. Then I will ask Oliver to start by commenting on the on the poll results that we see. So, I’ll just leave it for another 10 seconds. Okay, let me close the poll now. And share the results. So Oliver, this is your first question. Among other things, the cost seems to be one of the key concerns, which our participants feel that cost considerations stop SMEs from actually taking their innovations globally.
Question: Is this a well -founded view, or do you think that there may be a myth there? Are the costs of filing within, let’s say, Europe, very different from filing in other countries in terms of competitors?
Dr. Oliver Dannenberger speaking- Yeah, it is always difficult to answer this question because it really depends on the country.
So, especially in Europe, you have many countries where you could get it for. The costs are higher than, for example, if you only file in France or Britain. However, the cost for filing in Europe, compared, let’s say, to United States, is, I would say around the same, some you would have to spend on the filing and all the examination procedure. This, this becomes difficult to answer. But the costs are, let’s say, globally for major country’s very similar.
And the filing costs are usually higher, and this is actually why we usually recommend our clients, not to, if they do not know how important their invention, let’s say, for instance, to really go the internationally filing the PCT applications. Because, then you have 2.5 years from the first file to decide what you really want to do. Whether going to many countries, or whether you prefer, say, only locally, or nationally, go to the United Kingdom, Spain, and, let’s say, Canada, for example, and not go to United States or China or Japan.
Faiz Wahid speaking- Interesting. Let me, again, launch another poll. This one is for Anant. Anant talked about selection of Service Providers so if our participants could quickly vote on this poll, and this would be the first question for Anant to kind of comment on the findings that we see here. So, Yeah, please, I’ll keep it for another 15 seconds.
Poll 2: For an SME in Europe, what is likely the most important factor when choosing external service providers of Intellectual Property?
Okay, let me stop and show the results here. So this is a little bit more colorful than before. But affordability still seems to be the primary concern, and, you know, technical know-how and local presence. So what has been your experience? You know, what is your comment on this. Do you agree to this or do you see some other parameters, which the SME should keep in mind when choosing external service providers based on your experience.
Anant Kataria speaking – Yeah, I think actually all four of the parameters that we will record there in the poll there, all of them are important. Although, kind of the answers reflect what generally people value more. In my understanding, or in my experience, what I’ve seen is that people value the technical know-how in their domain at least as equal as affordability. So, it’s, that’s the start. If that is not there, the affordability doesn’t come into picture. So, and I also recommend the same. It’s more about the value of it. Cost is definitely an evaluation factor.
It’s an important evaluation factor as well. But, it is, cannot be a primary evaluation factor. It has to be what you want. And there, technical know-how takes precedence. If I had to rank them, that would be my first, cost would be second or equal to that, in terms of rating, and then, there would be quick turnaround and local presence, I would club them into communication, prompt communication, and professional support. So, I would kind of rate it that equally
Faiz Wahid speaking- OK, so, great, Alex, for you. There is a specific question on, you know talked about, in your presentation about IP Opportunism or IP opportunity instead of, I think, the blank spot. So, what is that? And how can an organization use it in analysis to come up with some strategies for themselves in technology transfer?
Question: What is the blank spot. How can an organization use it in analysis to come up with some strategies for themselves in technology transfer?
Alejandro Sanz speaking- Thanks for your question. I guess the probably the best way is to give an example. One client of ours, working with awesome median company, having a portfolio of IP. They were working with very large, incumbent companies. So they were protecting their innovations before discussing with them. So, on until there, they were doing all the right steps, and getting any discussions off topics that were already protected.
The problem was or is that many SMEs is that, either, that opportunity translates into commercial opportunity you know for short-term, or they will abandon that IP. And that is a problem, because, if the incumbent is looking at that behaviour, it will basically say, OK, if I can wait, I can get probably this innovation for free. Because, once it is of the public domain innovation, that is abandoned, is not any longer protected.
So, my advice is on the opportunism, is look at how fast companies get, read all of IP. Also for an SME, if they need to have a long-term collaboration, an SME that is focusing on very short terms, even for their IP is probably not the right partner. That’s what we call the IP opportunism.
Faiz Wahid speaking- Yeah. And Oliver, this question is for you. We talked about the PCT Patent co-operation Treaty. So, the question is, for trademarks and designs, are there any specific treaties as well, or just the two systems that you talked about? Or they are equivalent to a treaty.
Question: For trademarks and designs, are there any specific treaties as well or just the two systems that you talked about? Or they are equivalent to a treaty?
Dr. Oliver Dannenberger speaking- OK, you can, you should be able to see probably I was putting too much focus on this. But there are actually three different systems which are international systems. One is the Patent co-operation Treaty, which is really for patents and then they have the Madrid System which is the international trademark system and then you have a system which is an international design system. And also, when you compare, let’s see, so here are the PCT, which are patents member States, You also have the same, which is international, treaty for the Madrid Member State, or Madrid protocol for trademark.
You can see these are also the conference you can go to for international protection and protection of two sides. This International Treaty, which The Hague Treaty, where you can go to for the design which can use to internationally register your design and then later on, half your, national design.
Faiz Wahid speaking- And Oliver, just staying with you on this additional question, you’ve talked about the organization going to the PCT route, if they want to kind of buy more time before they can decide which countries they want to further protect the innovation of the factors that you would suggest.
Question: What factors are important to consider, in the PCT system, if anyone wants to have more time before deciding countries for innovation protection?
Dr. Oliver Dannenberger– So usually, the best thing you can do is to contact a patent attorney before you start filing, or even better before. When you have made an invention, let’s say for patent, it’s always the best, because, to get some, at least, some advice on how to, if you really think this is a good invention or great invention, how to best protect, not only your small parts you might have seen, but also everything around.
Because it’s not so difficult to protect the great idea, but, to also keep others from imitating.
Similarly, the good idea is to start nationally. To also get, for example, if you file nationally a patent in Germany, you would even get examination report – the first examination report within the first half, year, eight months. So you can decide. Do I want to follow this route or do you want to go somewhere else or Do you want to see who else have already protected this. And then you can always decide, OK.
Now, for example, if you file internationally, let’s say Germany, and then you get an examination report which is rather negative, you don’t want to have anybody read this. All you see, oh, my application. I still have to put it more time, more effort.
I just withdraw it and nobody will read or hear as I am putting effort in these fields. So, it’s always good before you start anything to consider what possibilities are there. This helps to evolve, show others what all you’re interested in already before being able to protect.
Faiz Wahid speaking- OK, and In some of the statistics that we have seen, you know, there are certain you can say patterns, where you will see that people who mostly filed in the US, also Filed in Japan and Europe, or, you know, some other ways around. So, in your experience, have you seen SMEs who are globally trying to protect their patents, do they generally follow a certain set of countries, or is it really driven by the business needs?
Question: Have you seen SMEs who are globally trying to protect their patents, following a certain set of countries? Or, business needs drive it?
Dr. Oliver Dannenberger- That’s usually business needs. But generally, you can say, most have been filing in Europe, United States, Japan. The last few years, it’s also China. India is also coming.
It takes a little longer, but you also have Indian patent filings.
And also, depending on the technology of South Korea, it really depends on what your interests are. But, also, sometimes, you have filings in South America and in Europe. But, not in the United States.
This really depends on what you want to protect. But generally, you can say it’s, it would be in the United States, China, Japan, and Europe. But this then depends really on, and you see how easy it is to get the patent or not. In some countries, it’s, for one part is easier that the other countries. Sometime, you get your patent, but not a European one or the other way round. This really happens quite often.
Faiz Wahid speaking- Thanks for your views and Anant coming to you. You talked about the IP tools and services in your experience for SMEs just starting to get into IP space. Do you see any of these coming first into the organization? Do you see that? It is preferred depending on your experience. Maybe, that organizations choose to bring in tools first, and then services, or services first and tools. Or is it like a mix?
Question: In your experience, SMEs come to the organizations first or they bring in tools first? Or, it’s a mix?
Anant – I think to start with, it is going to be services. And, people who are providing them the services use the tools. So, essentially understanding what the tools can do for you. Is this going to take time? And, also, overall, to run any function, to achieve any objective, having just one tool is not going to help. So, I think, in the beginning, it would be services first. Whereas, you would want that the service provider has the right tools. Whether, it’s a search tool, or a dash analytics tool, or whatever tools you needed for a company’s objective to be met. Service providers should have all those tools.
And, as, they move further into, building their IP function, then, probably one or two of those tools, especially on portfolio management, might be the first ones, too, to be integrated into their organization.
Faiz Wahid speaking- OK, that just one question to you, and then a final question to Alex before we close. So you talked quickly on the criteria of evaluation. And, then you mentioned about the single point of service, or like an organization providing a wider set of services. But we also know that sometimes organizations would want to put their eggs in different baskets, you know. So there is a multi supplier kind of possibility. Like yesterday we had Danielle Lewensohn. She’s the director of IPR at the RaySearch Group.
And she thought that she just went ahead and sign up all the law firms in Stockholm. This, to ensure that no competitor was getting access to them. So, is there a choice for an SME to keep a tab on multiple providers and stay that way? Or, they really go ahead and put all the eggs in the same basket. That’s because there will be some future benefits that they can accrue.
Question: Is there a choice for an SME to keep a tab on multiple providers and stay that way? Or, they go ahead and put all the eggs in the same basket in order to get benefits in future?
Anant Kataria speaking– My understanding is that, for now, I’m talking specifically in the context of an SME. I think with them, experimentation, and, so a, the volume of work is not that high for an SME. So having two providers and keeping both of them occupied or utilized is going to be a challenge, that’s one.
Second, the people of the in-house team, is not going to be very big. It’s going to be probably one person, one head of IP. Or, maybe it’s the head of R&D who’s also doubling as the head of IP.
So for them to manage multiple, people are spending time in managing multiple people, multiple vendors. It’s like, you have to make them understand what you need. So, that gets duplicated. You have to understand what they’ve done, reviewing all that work, so building that context. You know, that consumes a lot of time. So, in, for an SME, it’s more like not thinking of having multiple vendors to ensure that you’re getting the best out of the book. It is a good objective to have, but not for an SME.
What takes precedence over this is to build up one setup which can replicate their own in house setup. It can be an alternative to an own in house setup. So, for that, I believe it’s preferred. It is preferred for at least for the first couple of years. In order to set up stuff with one organization that has multiple capabilities.
Faiz Wahid speaking- And, maybe that also gives them the experience. If they are able to, then, if they need more than they can still replicate once they set up the process with one of the partners.
Anant Kataria speaking- Yes yes.
Faiz Wahid speaking- Great. Finally Alex, to you. I have a question. You talked about knocking the right doors. And so, how do you, how does an SME know which doors to knock, you know? Do you have any examples to share on this?
Question: How does an SME know which doors to knock? Do you have any examples to share on this?
Alejandro Sanz speaking – Absolutely. Yes. It is a good question. We have worked with a company that’s developing smart 3D gear boxes. GPS systems which is basically a system that, besides the 2-D mapping of the road. I saw it and optimize the gear shift for ensuring that they don’t have to have a year down while they are claiming. And, just saving fuel on the long run, so they identify different, potential false flag endorsed one of the owners.
IP analysis show very clear specialization of the tool, companies. Man has a certain know-how and focus on engines, that is, their core business. Well or, better connectivity and Gearboxes far more specialized in that area.
Also asking for that kind of application, you were coming to Sweden as a modified this. But, they did have a more fruitful discussion with them. So, it can help you money, time, and effort. And, just knocking the right door and having the right partners on the side of the table.
Faiz Wahid speaking- Great! Thanks, Alex. I take that as a concluding remark from each one of you. You have already crossed about 12 minutes beyond our time. So, let me take this opportunity to thank all the eminent speakers who are able to join us today. Thank you, Oliver. Alex, and Anant . And let me also thank all the participants who joined us yesterday as well us s today.
Thank you so much for being part of this initiative. We hope to stay in touch with all of you. And, there is a link to that through Google Space. So, if you’d like to chat about what discussions we had today, then please join us on that link. And, we can continue the discussion for sometime there, as well. So, thank you, all.