www.iprhelpdesk.eu

European IPR Helpdesk

Fact Sheet

Cost-effective IP tools

July 20151

Introduction .......................................................................................................... 1

1. Management of IPR ...................................................................................... 2

1.1. Patent system opportunities ....................................................................... 2

1.2. Trade marks ............................................................................................. 5

1.3. Unregistered and registered designs ............................................................ 6

1.4. Copyright ................................................................................................. 8

2. Other IP management methods ...................................................................... 8

2.1. Competitive analysis .................................................................................. 9

2.2. Licensing or selling ...................................................................................10

2.3. Secrecy ...................................................................................................10

2.4. Key employees ........................................................................................11

2.5. Publishing ...............................................................................................11

2.6. Alternatives to litigation ............................................................................12

Useful Resources ..................................................................................................12

Introduction

Different studies show that small businesses face several difficulties in using the

intellectual property (IP) system. Among them, costs related to the acquisition,

maintenance and enforcement of IP are perceived as the greatest barriers.

Overall, IP costs are often considered by SMEs as greater than the potential

economic return obtained from the right granted, taking into account that most

of the time these costs are incurred before any commercialisation of the product

where the IP is embedded. So the perception that small businesses often have of

1 This fact sheet was initially published in September 2013 and revised in July 2015.

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IP is that it is costly and time consuming and somewhat irrelevant for their

business activity.

This fact sheet highlights some low-cost strategies that SMEs2 could adopt to

exploit their intangible assets and therefore reap the benefits of the IP system. It

is important to note that there is no single best way to manage intangible assets

and that the choice of the different tools certainly depends on the business

strategy of the enterprise. Most importantly, for a business plan to be successful

and fruitful, strategic decisions should be jointly taken with managers, lawyers,

employers/creators and intellectual assets consultants3.

1. Management of IPR

IP rights (IPR) play a fundamental role for the competitiveness of any innovative

business model, and their proper management is deemed to:

Prevent others from copying or using their innovations and creations;

Create a strong brand identity;

Obtain valuable competitive intelligence;

Increase their commercial value;

Obtain financing and raise funding.

Although perceived as an expensive exercise, IPR are an essential element for

SMEs to thrive in their business activity and solve some of their problems. For

example, a patent application can attract venture capital; a search in a patent

database can lead to new technology partners and customers; a registered trade

mark can increase brand visibility and therefore market share.

1.1. Patent system opportunities

Concerning the patent system, the costs of protection can be considerable:

application preparation and prosecution fees, translation costs and patent

attorneys' services can easily reach tens of thousands of Euros when trying to

get patents granted in more than ten major European countries. Costs would rise

considerably for litigation, where a court proceeding may run up to millions of

Euros.

However, patents are indeed more than a legal right and their worth is more

related to the market than to the IP system. First and foremost, if a new product

or process solves a technical problem, this does not mean that it needs to be

immediately patented. While the new solution could pass the patent examiners’

2 Although this fact sheet is more focused on SME activity, such tools are definitely useful to any organisation involved in the management of intangible assets. 3 The UK Intellectual Property Office (UKIPO) has issued a booklet designed to help you become an informed consumer of the IP Adviser services. You can find it at: https://www.gov.uk/government/publications/ip-for-business-advisers-and-support.

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evaluation, it could well find some commercialisation difficulties simply because

people do not want it.

Since a granted patent is never a guarantee of commercial success, the decision

to patent something should be based upon the “market wants" and not on the

“novelty of the invention”. The latter determines if something could be patented,

but market demand dictates if something should be patented.

Hence, taking advantage of the patent system does not necessarily match with

patent ownership, since there are others ways in which the system can be used

to create commercial advantage, without necessarily filing patents. In all of these

cases you will be able to create an alternative strategy likely to provide

competitive advantage at low cost4.

SMEs often create a large variety of innovations that may lack inventive steps.

This often amounts to the development of less technically complex devices

and/or modification and adaptation of already existing technologies.

For this kind of innovation and more specifically for products having a short

commercial life, Utility Model protection5 might be a good alternative to patents.

The registration procedure is much cheaper and faster, but not all EU countries

provide such protection6. Therefore, a preliminary check with national patent

offices is needed to ascertain whether this form of IP is a viable solution.

Although the conditions to obtain protection are similar to those for patents,

utility model rights are generally granted without prior examination of novelty

and inventiveness. This would entail:

4 See also, d’Erme, R. and Philpott, J., “Effective and Economical Patent Strategies for Small and

Medium-Sized Enterprises”, European IPR Helpdesk Bulletin N°5, April – June 2012, available in our library. 5 This type of protection can be provided under different names in different countries, e.g. Belgium

(Brevet de courte durée/Octrooi van korte duur), Netherlands (Zesjarig octrooi) and Ireland offer short-term patents, while France offers a utility certificate (certificat d’utilité). Sometimes they are also referred to as “petty patents”. On the utility models features see, d’Erme, R., “Utility Models: A useful alternative to patents for small businesses”, European IPR Helpdesk Bulletin N°8, January – March 2013, available in our library. 6 In the EU there is no Community Utility Model, nor harmonisation of Member States laws, but there is a different usage in 17 EU countries.

Utility models4

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Lower costs: the absence of examination and professional consulting

dramatically lowers the registration costs, reducing them up to 50% compared

to national patents;

Quicker protection: it normally takes on average 6 months to grant a utility

model, compared to the much longer process needed to deliver patents

(between 2 and 5 years). This would strengthen the SMEs’ competitiveness, as

they often aim at making their products available on the market as soon as

possible, to recover their investments.

Patent databases are a valuable source of technical knowledge and their

monitoring should be part of any company’s IP management7.

Two of the most comprehensive online patent databases are:

Espacenet

PATENTSCOPE

Many of the patent applications published in the databases are not "in force",

because of the applications' failure, withdrawal or expiry. This means that the

technology described therein is free to use.

Patents include both technical and legal information and can also be used to:

Guide the definition of an organisation’s IP strategy (identifying, for

example, any barriers to developing an IP strategy, the avoidance of

obstacles, etc.);

Define a state of the art (to find out what already exists, to check

novelty, to improve the quality of a patent application, to understand

the IP landscape surrounding your projects and IP);

Check for freedom to operate (to check if you do not infringe someone

else‘s rights, to search for validity of third parties’ IP);

Check if someone is not in a position of infringing your rights

(infringement stills needs to be proved);

Keep track on who’s doing what (continuous monitoring of patent

applications filing).

Apart from technical information, patent applications are goldmines of

commercial intelligence. That is, by examining those documents related to a

7 To learn how to carry out patent information research, see the European IPR Helpdesk fact sheet on “How to search for patent information”, available in our library.

Technical information

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particular technology and discerning who owns the associated patents, you can

learn a lot about the activities of other companies. Some of these could be your

next customers, or suppliers, or rivals or partners.

Filing a single national patent application need not be very expensive8. Once a

patent is filed, applicants have 12 months at their disposal to study the market

and evaluate whether to continue with the patent application and extend

protection to the countries of interest for commercialising the technology.

A patent application is normally published at 18 months from the earliest filing

date (priority date). Once published, it will appear in patent databases, which

could be useful in attracting partners, customers and even investors who are

using the patent information as part of a commercial intelligence search.

Even if the application is abandoned to save costs, it will remain in the database

as a signpost to the entire market that your company is active in that area9.

Moreover, the patenting process can be used to publish technology – without

acquiring patent – to obstruct the later patenting ambitions of competitors.

1.2. Trade marks

Indeed, trade mark (TM) protection is not very expensive. The national fees are

only a few hundred of Euros10 and a registration at EU level for a Community

TM11 is cost-effective if protection is sought in more than a few countries, with

the application handled in a single language.

Having a strong TM may increase brand visibility and boost profits, especially

when supported by a tailored marketing campaign. IP rights convey quality,

stability, certainty etc. to customers, any of them usable for marketing purposes

and business building. They play an essential role in increasing a company’s

market share and bringing higher value business opportunities.

Before applying for a new TM it is important to check TM databases to make sure

that it is free to use, meaning that it should not be similar or identical to any TM

8 In the EU Member States, costs for filing a patent application are estimated between 107 € (Latvia) and 450 € (Finland). 9 See below paragraph 2.1. 10 This varies according to national rules. For more info on TM fees applied by national IP offices in the EU, visit http://www.innovaccess.eu/ 11 The authority granting protection for trade marks in the EU is the Office for Harmonization in the Internal Market (OHIM), based in Alicante, Spain. Trade mark applications can also be submitted online at: https://oami.europa.eu/ohimportal/en/web/guest/apply-now The minimum cost of registering one Community trade mark is 900 Euros to file online (e-filing) or 1,050 Euros if you use the paper form, and covers all the EU member states. This cost will vary according to the number of classes of goods and services included in the application.

Patent application

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already existing (registered or undergoing the filing process) for the classes of

products or services to which the new TM applies12.

To search for all types of TM present in the official databases of most of

the EU Trade Mark Offices, the use of TMview is suggested;

The Global Brand Database allows users to search TM registered at

international level, simultaneously from different data collections.

Once a TM is registered13, it is also important to regularly consult TM databases

in order to check if similar or identical TMs for similar or identical products and

services are being applied for registration or registered within the relevant

territories. Conducting searches helps to avoid oppositions and also reduces the

possibility of infringement of the rights of prior owners.

Furthermore, such databases are an excellent source of business information. In

fact, knowing the TM filed by a competitor can give you some insight into its

commercial strategy, i.e. what kind of product or service is or will arrive on the

market and in which territories it is intended to be marketed.

1.3. Unregistered and registered designs

As with TM, designs and packaging are crucial to maximise product

differentiation and enhance recognition of companies’ products among

consumers. Overall, industrial design rights protect the appearance of products.

Furniture, fashion articles, packages, software, devices are, among others,

examples of products whose design features can be protected. Design rights are

even more affordable than TM ones.

In the EU, industrial designs can be protected even without registration.

Unregistered community design (UCD) arises automatically once the product is

put onto the market, namely disclosed14, and is directly enforceable in all the EU

Member States.

12 The European IPR Helpdesk fact sheet on “How to search for trade marks”, available in the

library, explains how to perform a TM search. 13 Note that, although not mandatory, it is important to show the symbol ® alongside the registered TM. In so doing people are aware that the TM is owned by a certain company. While the application is pending the symbols ™, and SM for service marks, can be used. 14 The date and means of disclosure are essential: it creates an unregistered Community design right but can conversely destroy the novelty of a registered design if the latter is not applied for within 12 months of the disclosure. To create an unregistered Community design right, disclosure

Unregistered designs

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Protection is free of cost and lasts 3 years from the moment when design was

made available to the public, as long as the design is new and has individual

character. In many activity sectors, such as the fashion industry, this short time

of protection is often enough given the rapid rate of change of the market.

However, infringements of UCD are more likely as this latter confers on its holder

a right to prevent only the deliberate copying. Consequently, if the design has

been created independently by a second designer, without the knowledge of a

pre-existing design, there is no infringement.

Nevertheless, within the first 12 months following disclosure of your design15,

you may still apply for a registered Community design (RCD) to increase the

level of your protection.

RCD provides a longer period of protection (i.e. up to 25 years16) and is easier to

assert against infringers, since the title shows evidence of ownership. Businesses

should therefore consider the importance of having their designs registered for a

stronger and longer protection17.

At national level, registered designs are particularly affordable18, but also an EU

wide protection is not expensive19.

Before applying for a RCD, it is however important to search in design databases

the originality of the design for which the registration is sought. This would avoid

the waste of time and money likely to be caused by infringement of a third

party’s rights.

must take place within the territory of the EU. To keep track of the disclosure date, it is possible to

formally record the unregistered design through the same means used for registering copyrighted works. See paragraph 1.4 below. 15 The so-called grace period. 16 An RCD initially has a life of 5 years from the date of filing and can be renewed in periods of 5 years up to a maximum of 25 years. 17 The RCD gives an exclusive right to use and prevent making, offering, putting on the market, importing, exporting, using or stocking for such purposes, products incorporating the design. 18 See note 8 above. 19 See note 9 above. In the case of a single application (one design), the applicant will need to pay a registration fee of 230 Euros and a publication fee of 120 Euros, which totals 350 Euros.

Registered design

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Registered design information held by most of the EU national IP offices

can be accessed via DesignView.

1.4. Copyright

Copyright protection arises automatically upon the work’s creation. Hence,

copyright owners do not have to spend money to enjoy protection. Nevertheless,

there are some measures that copyright owners may take with the purpose of

informing others of the existence of copyright. This can reduce the likelihood of

being copied.

The most common used measure is to include within the copyrighted work the

symbol ©, followed by the owner’s name and year of the work‘s creation.

Although not a requirement for protection, a certificate of registration20 can

prove to be useful as evidence that the creation is protected by copyright and the

person registered is the owner. It can be used in court as proof of ownership. It

may also prevent misappropriation of information in negotiations with potential

partners, since it shows that such information had already been created.

Registering copyright is easy, straightforward and extremely low-priced and can

be done in different ways:

Through private services21;

Via IP offices22;

By sending to yourself a copy of the original work by means of

registered postal delivery leaving the envelope sealed until when or if

it is needed;

By lodging the work with a lawyer or notary.

2. Other IP management methods

IP assets can also be protected and/or managed by other informal and “softer”

methods. These alternative IP management methods can be economical to use

and, to some extent, embedded in the normal working routines.

20 See the article “What does ‘copyright registered’ mean?”, European IPR Helpdesk Bulletin N°3, October – December 2011, available in the library. 21 Creative Barcode, IP Lab and IDDN are only few of such private services. 22 Examples of registration services are i-DEPOT, offered by the Benelux Office for Intellectual Property (BOIP), and the Enveloppe Soleau, provided by the French National Industrial Property Institute (INPI). Other EU national IP offices are likely to offer similar registration systems.

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What is important for any enterprise is to understand their position in the market

and be objective about their business planning. What market do I want to reach

in the next few years? Which technology do I need to get there? How have

competitors attained their market position? All this does not necessarily mean

owing or creating IP. Answering those and other similar questions can show that,

to access and maintain dominance over certain business sectors, other

approaches than the usual registration of IPR are possible.

Before setting business strategies, companies should therefore have a thorough

understanding of their IP assets. An IP audit can reveal all of it and can provide a

quantitative and qualitative valuation of a company’s business assets23. This

exercise is normally performed by professionals. Yet there exist some low-cost

tools helping SME make a diagnosis of their IP portfolio and facilitate the

identification and evaluation of their IP assets. Some of these on-line free-of-

charge tools are:

Intellectual Property Explorer

IP Healthcheck

IPscore

IP Response

2.1. Competitive analysis

A starting point for a low cost strategy is to analyse a rival company’s products

or services to discover what IP they are using, and what role IP plays in their

business.

If no IP is apparent, and still they maintain dominance over a market niche (e.g.

a service sector innovation), it should be considered how else they might have

done this; perhaps through "First-Mover Advantage"24, closed networks of

suppliers or specialist trade secrets. If they are successful without owing patents

and gained market advantage through this strategy, then consider carefully

before taking a different approach.

Where patents are their strength, it is suggested to investigate their technology

in a patent database and use the information recovered to invent around and

develop a competitive alternative to their products or services.

23 IP valuation is a complicated and technical issue. To have a first sight of the different types of valuation, you can read the European IPR Helpdesk fact sheet about “Intellectual Property Valuation”, available in our library. 24 First-Mover Advantage (FMA) is the advantage gained by the first significant occupant of a market sector. It is commonly seen with service innovations (which are generally not patentable in Europe).

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2.2. Licensing25 or selling26

A new technology developed by a small entity could be just one of dozens of

equivalent or incremental developments in that particular area27. As a

consequence, it may be easy to invent-around, have numerous functional

alternatives or quickly become obsolete. An appraisal should thus be made on

whether obtaining a patent would really be cost effective for the company, also

taking into account the costs to bring the invention to the market.

Such an assessment may show that commercial success rather lies in selling IP

or licensing it out. Moreover, licensing-out technology to competitors can

transform them into business partners and help to strengthen a company

position in cross-licensing negotiations. In this latter case, a business partner can

use your technology in return for giving you access to their technology.

Another action to take when addressing a new technical problem is to calculate

how much the solution of that problem will cost if developed by you. Often

licensing-in could be a cheaper route and also gives you the opportunity to

create partnerships or strategic alliances with other players in your area.

Furthermore, if you were to develop an improvement to the product or process

you are licensing from them, you might just be able to patent that too and

license it back to them.

2.3. Secrecy

Know-how, trade secrets, confidential business information, also called soft-IP,

are all valuable business assets too. They cannot be registered, so there are no

fees to pay, but they are all critical to small businesses. Accordingly, deliberate

actions should be taken to protect them, because once they leak their

commercial advantage is gone forever.

If these intellectual assets are properly managed, companies will be able to gain

value without spending much money28.

Mainly for innovation processes, think twice before filing a patent application. In

fact the risk of reverse engineering is much less present for processes, the end

product of which is conventional and gives no clues about the process innovation.

In this case it might be preferable to keep that as a trade secret rather than

publish the details in a patent application to be read by everyone. If published in

a patent, competitors might buy a licence, but others might be inspired to

investigate other improvements and develop their own solutions by “inventing

25 Hints on licence agreements can be found in the European IPR Helpdesk fact sheet “Commercialising Intellectual Property: Licence Agreements”, available in our library. 26 IP assignment is the subject of another European IPR Helpdesk fact sheet on “Commercialising Intellectual Property: Assignment Agreements”, available in our library. 27 It has been suggested that over 90% of all inventions fall in this category. 28 An in depth analysis on the management of these IP assets is carried out in the European IPR Helpdesk fact sheet “Confidential business information”, available in our library.

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around” your patent. Keeping the product or process as a trade secret, however,

is reliant on as few staff as possible knowing the details and keeping the secret

even if they leave to work for competitors29.

2.4. Key employees

Employees are a source of expertise (i.e. knowledge, skills, and experience)

acquired therein. When key employees leave the company, non-compete

agreements should be signed. This would ensure that trade secrets acquired

during their duties are safeguarded for a certain period of time after their

departure30. More precisely, these agreements would require a former employee

not to work for a direct competitor up to the time when the secret information

loses its inherent value to the business31.

It is also highly recommended that strong contractual provisions be foreseen on

confidentiality issues. This is the case of non-disclosure clauses within

employment contracts that oblige employees not to use trade secrets acquired in

the course of the employment both during the contractual period and later when

they leave the enterprise.

Confidentiality clauses should clearly state:

The business information to which the obligations apply;

The specific obligations and restrictions imposed on the recipient;

The consequences of breach of confidentiality;

The obligations to be applied after termination of their employment

with the organisation

2.5. Publishing

If the company’s strategy does not aim at having a monopoly in a given sector,

but to lock some larger rival out from getting exclusive patent rights, then

publishing technology specifications – without acquiring patent – is an effective

strategy to ruin the later patenting ambitions of competitors.

An invention's technical details can be published quickly in an academic or

technical journal, but patent application are more suitable to have the best

chance that a patent examiner finds it to cite in the research report against

applications from rivals.

29 Note that trade secrets and confidential know-how can be licensed too and then provide revenues without public disclosure. Nevertheless, it is recommended that the contracts be drafted by an expert. 30 This can be done also in the form of non-compete clauses to be included within employment contracts. 31 Depending on the value of the information, the terms of a non-compete agreement should be reasonable. The common practice is generally a one-year time restriction.

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Even an early publication can be requested if this would help as a spoiler for

competitors, and then the application abandoned to save costs. This so-called

"prophylactic disclosure" protects companies from being subject to someone

else's later patent because the earlier disclosure destroys the alleged novelty of

later patent applications for the same invention.

2.6. Alternatives to litigation

Once a patent has been granted, facing infringement can prove to be extremely

expensive. For those wishing to stay out of the courts there are cost effective

alternatives to recover lost market share, even if they do not result in "justice"

for the offence.

Litigation insurance is not cheap, but could persuade aspiring infringers to buy a

licence instead, or to pick on someone else. With insurance on a company's side,

infringers cannot hope they will abandon a court case because of shortage of

funds.

In any licence agreement, suitable dispute resolution clauses should be included,

e.g. which law will apply, and where disputes would be heard (i.e. forum

selection). It is suggested to choose lower-cost and confidential mediation and

arbitration processes32, and then make the conditions for litigation with licensees

less attractive by proposing an inconvenient forum and/or legal system for

disputes.

If a dispute arises, licensing to the infringer – even at a discount – could bring

more market share, if they have access to larger markets. Turning infringers into

partners could be more profitable than suing them.

Useful Resources

For further information on the topic please also see:

d’Erme, R. and Philpott, J., “Effective and Economical Patent Strategies for

Small and Medium-Sized Enterprises”, European IPR Helpdesk Bulletin

N°5, April – June 2012:

www.iprhelpdesk.eu/bulletin_issue_5

d’Erme, R., “Utility Models: A useful alternative to patents for small

businesses”, European IPR Helpdesk Bulletin N°8, January – March 2013:

www.iprhelpdesk.eu/bulletin_issue_8

32 For a more comprehensive view on Mediation and Arbitration mechanisms, see Schallnau, J., “Efficient Resolution of Disputes in Research & Development Collaborations and Related Commercial Agreements”, European IPR Helpdesk Bulletin N°4, January - March 2012, available in our library.

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Fact sheet on “How to search for patent information”:

http://www.iprhelpdesk.eu/Fact-Sheet-How-to-Search-for-Patent-

Information

Fact sheet on “How to search for trade marks”:

http://www.iprhelpdesk.eu/Fact-Sheet-How-to-Search-for-Trade-Marks

d’Araujo, C., “What does ‘copyright registered’ mean?”, European IPR

Helpdesk Bulletin N°3, October – December 2011:

www.iprhelpdesk.eu/bulletin_issue_3

Fact sheet on “Intellectual Property Valuation”:

http://www.iprhelpdesk.eu/Fact-Sheet-IP-Valuation

Fact sheet on “Commercialising Intellectual Property: Assignment

Agreements”:

http://www.iprhelpdesk.eu/Fact-Sheet-Commercialising-IP-Assignment-

Agreements

Fact sheet on “Confidential business information”:

http://www.iprhelpdesk.eu/Fact-Sheet-How-to-Manage-Confidential-

Business-Information

GET IN TOUCH

For comments, suggestions or further information, please contact

European IPR Helpdesk c/o infeurope S.A. 62, rue Charles Martel L-2134, Luxembourg

Email: service@iprhelpdesk.eu

Phone: +352 25 22 33 - 333

Fax: +352 25 22 33 – 334

ABOUT THE EUROPEAN IPR HELPDESK

The European IPR Helpdesk aims at raising awareness of Intellectual Property (IP) and Intellectual Property Rights (IPR) by providing information, direct advice and training on IP and IPR matters to current and potential participants of EU funded projects. In addition, the European IPR Helpdesk provides IP support to EU SMEs negotiating or concluding transnational partnership agreements, especially through the Enterprise Europe Network. All services provided are free of charge.

Helpline: The Helpline service answers your IP queries within three working days. Please contact us via registration on our website – www.iprhelpdesk.eu – phone or fax.

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Training: We have designed a training catalogue consisting of nine different modules. If you are interested in planning a session with us, simply send us an email at training@iprhelpdesk.eu.

©istockphoto.com/Dave White

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DISCLAIMER

This Fact Sheet has been initially developed under a previous edition of the European IPR Helpdesk (2011-2014). At that time the European IPR Helpdesk operated under a service contract with the European Commission.

From 2015 the European IPR Helpdesk operates as a project receiving funding from the European Union’s Horizon 2020 research and innovation programme under Grant Agreement No 641474. It is managed by the European Commission’s Executive Agency for Small and Medium-sized Enterprises (EASME), with policy guidance provided by the European Commission’s Internal Market, Industry, Entrepreneurship and SMEs Directorate-General.

Even though this Fact Sheet has been developed with the financial support of the EU, the positions expressed are those of the authors and do not necessarily reflect the official opinion of EASME or the European Commission. Neither EASME nor the European Commission nor any person acting on behalf of the EASME or the European Commission is responsible for the use which might be made of this information.

Although the European IPR Helpdesk endeavours to deliver a high level service, no guarantee can be given on the correctness or completeness of the content of this Fact Sheet and neither the European Commission nor the European IPR Helpdesk consortium members are responsible or may be held accountable for any loss suffered as a result of reliance upon the content of this Fact Sheet.

Our complete disclaimer is available at www.iprhelpdesk.eu.

© European Union (2015)