LINKING

INNOVATION AND
INDUSTRIAL PROPERTY

This guide is published with the help of the European Commission.

"Linking Innovation and Industrial Property" is a project supported by the European Commission,
DG Enterprise, co-financed within the fifth framework programme of the European Community
as part of the Innovation and SMEs programme.
Acknowledgements to
The authors of this guide want to thank,
Mr. Paul Schwander, European Patent Office,
Mr. Anthony Howard, DG Internal Market European Commission,
Mr. Diego de Biasio and Mr. David Frew, CRP Henri Tudor,
Mr Adel Adamou, Double A Technologies,
Mr. Thierry Gille, Cybercultus,
for their comments and suggestions having contributed to the enhancement
of the quality of this good practice guide.

The authors also thank the companies for their participation in the case studies.

■ DISCLAIMER

The European Commission or any other person acting in its name accepts no legal responsibility for the use
that can be done to the information included in this publication. The information provided in this guide
should not be quoted as or considered to be a legal authority. It may become obsolete in whole or in part at
any time without notice.
It should also be noted that intellectual property rights are country specific and limited by territory; they exist
and can be exercised only within the jurisdiction of the state or states under whose laws they are granted.
The intellectual property rights discussed in this guide are country specific and limited to Greece, Ireland, Italy,
Luxembourg and Spain. Information about IP rights in other countries should be obtained from their national
industrial property office.

© The European Commission, Centre de Recherche Public Henri Tudor, Luxembourg Ministry of Economics,
Oficina Española de Patentes y Marcas, Fundacion Observatorio de Prospectiva Technológica Industrial,
Hellenic Industrial Property Organisation, EDAP S.A., TTP/MDC S.A., Irish Patent Office, Enterprise Ireland,
Italian Ministry of Production Activities, ABCnet Servizi per l’Impresa s.r.l., 2003

ISBN 2-9599776-3-7
 GOOD PRACTICE GUIDE

■ FOREWORD

by Anthony Howard,
European Commission,
DG Internal Market

Far from its image as a dusty and even arcane For small and medium sized enterprises, effective
branch of the law, the system of intellectual use of the IPR system can provide the means to
property rights (IPRs) is dynamic and modern. At stand up to much bigger players, but the task can
the Community and international level, the be daunting. The "toolkit" provided in this guide
European Commission strives to keep it up-to-date includes practical information about IPR both at the
and relevant to the latest technologies. To pick just general and country specific levels, as well as
two examples, we have seen recent legislative auditing tools which are designed to help in
initiatives aimed at clarification of the law on evaluation of IPR practices and identification of
biotechnological and software inventions. possible subject-matter for protection. It has been
Moreover, the Community patent, which will soon assembled carefully by experts from several
be a reality, represents the fulfilment of a dream European countries and is presented in an
going back to the beginning of the Community accessible, easy-to-follow way. An old proverb says
itself to have a single continental-scale patent. that the wise learn from the experience of others.
Smaller companies especially will benefit from the That is what this guide offers the opportunity to
possibility for the first time to get coverage across do. I commend it to all, but especially to smaller
the soon-to-be 25 Member States with a single companies, and urge them to seize that
patent. opportunity.

Anybody doing business who thinks IPRs are not

relevant or can just be ignored is playing a
dangerous game. Almost all serious businesses will
have some valuable property worth protecting
through one or other of the different types of right
available. But even those who choose not to do
anything about their own interests still need to be
aware of the rights of others. The biggest enemy of
all is ignorance. It can lead to loss of valuable
rights, expensive litigation, or both. The cost of
mistakes can be large, even crippling. Nobody in
their right mind would try to run a business without
taking due account of the tax or employment laws,
so why do so many think it is OK to do just that
with the IPR system?

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 INTELLECTUAL PROPERTY

■ INTRODUCTION

Linking Innovation and Industrial Property (LIIP) is a Who should use this Guide?
project financed by the European Commission, This Guide is mainly directed at SMEs, which
which pursues the development of a European develop products as part of their manufacturing or
network of contact points for the promotion of service producing activities. Nevertheless, this
innovation around industrial property. One of the brochure will be of particular interest to any person
major objectives of this project is to increase or institution whose work is related to R&D,
awareness and knowledge on Industrial Property technology trend analysis, technology promotion,
issues and the patent-system by the creation of technology evaluation and technology transfer.
dedicated material targeted to Small and Medium
Enterprises (SMEs), research centres, universities, What does this Guide contain?
independent inventors, professional associations This Guide contains a set of 10 pragmatic good
and organisations active in innovation support. For practice recommendations for companies,
this purpose, two specific tools have been especially SMEs, aimed at highlighting the
developed in the framework of the LIIP project: a importance of intellectual property (IP) to
Good Practice Guide and an IP-Multimedia companies’ business strategy. The recommen-
Toolbox. This brochure is the Good Practice Guide. dations are complemented by 5 case studies, which
illustrate different situations related to IP rights,
that SMEs may encounter. Finally, the annexes
contain useful reference information about IP
issues.

Why is it important to read this Guide?

Reading this Guide will provide useful insights
about IP concepts, benefits of IP rights, patent
procedures and patent information. In other
words, this Guide is intended to show the
enormous potential that IP offers to SMEs in terms
of legal protection, technical information and
market research. Readers of the guide should note
that IP legislation varies from country to country.

Multimedia Toolbox.
The content of this Guide is further developed in a
multimedia toolbox, which includes general IP
information, country specific information about IP
rights and an interactive auditing tool which will
assist you in evaluating the IP practices of your
organisation.

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 GOOD PRACTICE GUIDE

B E AWA R E O F Y O U R I N T E L L E C T U A L C A P I TA L !

What are your organisation’s sources of value?

Until the 1990’s, an organisation’s assets were These intangible assets form the intellectual capital
usually classified as physical capital such as real of your organisation. They are non-material factors
estate, goods, manufacturing facilities, equipment that exist in your organisation and that contribute
and financial capital. However, in recent years to the performance of your business. They are
there has been an increased awareness of the embedded in the organisational design of your
existence of another type of property asset – the organisation in form of structural capital, in your
intangible asset. Intangible assets are different from employees in form of human capital and in the
real assets in so far as these assets come from relationships with your suppliers, customers and
human creativity, thought, and inventiveness. partners in form of market capital.1

Recognising the value of your intellectual capital

can benefit your organisation through better
management of its assets and lead to improved
performance.

S TRUCTURAL M ARKET
H UMAN C APITAL
C APITAL C APITAL
I NTELLECTUAL Knowledge that the

CAPITAL
= employee takes with + Everything that + External relationships
remains in your
him when he leaves of your organisation.
organisation at the
the organisation.
end of the workday.

■ H OW TO IDENTIFY YOUR
INTELLECTUAL CAPITAL

Knowledge, know-how and innovativeness are the In the following a step-by-step approach will help
essence of your intellectual capital, the most you to better identify your intellectual capital:
valuable assets of your organisation. In order to • Take a few minutes to think about the
transform hidden or possibly underused intellectual intellectual capital which may exist in your
capital into tangible profits, you need to identify organisation. Below is a short checklist in order to
those assets. You can draw up a preliminary list help you identify some intangible assets which
yourself. However, a further investigation by a make up that intellectual capital.
specialist (your accountant or financial advisor) in • Adapt this list to the business activity of your
order to obtain a detailed inventory should be organisation! The following list is not exhaustive,
considered. but serves as a help to identify your core
intangible assets. The checklist is structured in
three main categories in order to help you in
discovering the hidden intellectual capital of your
organisation. Each category is divided into
different asset types. The items listed below are
rather general and need to be specified
according to your business.
1
The threefold classification structure: MERITUM Project
(European project) – Guidelines for managing and reporting on
intangibles (2002)

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 INTELLECTUAL PROPERTY

B E AWA R E O F Y O U R I N T E L L E C T U A L C A P I TA L !

■ CHECKLIST

Make a first inventory of the intellectual capital of your company by writing your most important intangible
assets under each of the three categories (Human, Structural and Market capital) in the form listed below.
For each type of asset (e.g. know-how, competencies, intellectual property, etc.) you should seek to
determine if your firm possesses such a type of intangible asset and then enumerate those assets which
significantly add value to your business.

HUMAN CAPITAL
Knowledge and Know-how yes no I do not know
if yes, which ones:

Competencies: yes no I do not know

if yes, which ones:

Skills, education, experience and training yes no I do not know

if yes, which ones:

STRUCTURAL CAPITAL
Intellectual Property: yes no I do not know
Patents, Trade marks, Designs, Copyright if yes, which ones:

Trade secrets yes no I do not know

if yes, which ones:

Licences and franchises yes no I do not know

if yes, which ones:

Inventions made by the organisation yes no I do not know

if yes, which ones:

In-house databases yes no I do not know

if yes, which ones:

Software developed in-house yes no I do not know

if yes, which ones:

Work documents: yes no I do not know

Manuals, processes, procedures, if yes, which ones:
documents related to R&D activity…

External publications yes no I do not know

if yes, which ones:

MARKET CAPITAL
Collaborations, partnerships and networks yes no I do not know
if yes, which ones:

Customer list yes no I do not know

Product Certifications yes no I do not know

if yes, which ones:

Brand and Goodwill yes no I do not know

if yes, which ones:

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 GOOD PRACTICE GUIDE

B E AWA R E O F Y O U R I N T E L L E C T U A L C A P I TA L !

Some of your intangible assets may be protected Placing a value on your intellectual capital
by intellectual property rights. More information Intellectual capital –often in the form of intellectual
about these rights is contained in part 2 "Know property rights- is now recognised as being
what Intellectual Property is”. amongst the most important assets of many of the
world’s largest and most powerful organisations: it
After having made a first assessment of your can be the foundation for market dominance and
organisation’s intellectual capital, you may wish to continuing profitability.
have a more comprehensive and detailed analysis
carried out. More and more consultancy firms • The list of intangible assets shown above may
provide intellectual capital audits. A range of have made you realise that your organisation has
different identification and evaluation intellectual property of value. You should know
methodologies exist. Each of these methodologies the value of the intellectual property held by
takes and pulls a range of indicators together in your organisation for the same reason as it is
order to produce an aggregate picture of the level necessary for you to know the underlying value
and type of intellectual capital in your organisation. of all tangible assets. Ask your accountant or
financial consultant to provide you with a
By being able to understand, identify, manage and valuation.
develop your firm’s intangible assets you will be
able to unlock its full potential. This approach can • Make your intellectual capital tangible by
benefit your firm for example, in yielding new areas documenting and managing your intangible
of business and profit, in raising development assets.
finance and in identifying collaborators or new
partners, - all with the aim of making your firm • Create more awareness of your organisation’s
more competitive. intellectual property through improving the
information flow and knowledge sharing
between your employees (e.g. intranet). Make
IP an item for discussion at planning meetings.

• Make one or more of your employees respon-

sible for intellectual property strategy.

Be aware of your intellectual capital! Do not

ignore or underestimate its value!

Intangible assets can often be the most

valuable business assets of your organisation.
In order to fully exploit these assets, you must
firstly identify your organisation’s intellectual
capital and then evaluate it. You will then be in
a good position to protect and exploit your
intellectual property assets.

Failure to fully recognise and exploit

intellectual property can mean that an
important source of revenue is lost to your
organisation.

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 INTELLECTUAL PROPERTY

K N O W W H AT I N T E L L E C T U A L P R O P E RT Y I S

WHAT IS INTELLECTUAL PROPERTY? THE MAIN INTELLECTUAL PROPERTY RIGHTS

National and international laws and conventions ■ PATENTS relate to inventions producing a
recognise the product of a person’s mental efforts technical result - improved and new products,
as an intellectual property right. Intellectual processes, and uses.
property rights provide means of protecting some
of the intangible assets of your company. What is a patent?
A patent is a title providing the inventor and/or the
Statutory intellectual property rights may be applicant with the right to prevent others from
divided into: exploiting the invention mentioned in the patent.
The monopoly is granted for maximum 20 years by
the state in return for a full disclosure of the
invention.
I NDUSTRIAL
P ROPERTY : What are the requirements for obtaining a patent?
C OPYRIGHT AND
• PATENTS + RELATED RIGHTS
Patents are concerned with the functional and
technical aspects of products, processes, and uses.
• T RADE MARKS
• I NDUSTRIAL To qualify for patent protection:
D ESIGNS ❏ Your invention must be a patentable matter:
Some matters are excluded from patent
protection. Most European countries patent laws
Legal systems recognise that dissemination of follow the European Patent Convention (EPC) in
creative endeavours can benefit society and providing that a patent can not be obtained for:
stimulate further creative activity. IPRs therefore • discoveries, scientific theories and mathematical
allow the originators to control access by others to methods,
the products of their creativity and thus to benefit • artistic creations,
from it. These systems recognise that many types • schemes, rules and methods for performing
of products and services can be created. Therefore mental acts, playing games or doing business
various types of Intellectual Property Rights have and programs for computers,
been developed. • presentations of information,
• methods for medical treatment of humans and
animals (as opposed to medical products)
• plant or animal varieties or essentially biological
processes for the production of plants or animals.

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 GOOD PRACTICE GUIDE

K N O W W H AT I N T E L L E C T U A L P R O P E RT Y I S

❏ Your invention must be novel: Your application Short Term Patents3 are in some respects similar to
may fail due to the novelty criteria if utility models. They have been created as an
- an identical product or process or use has already alternative to full term patents.
been disclosed They were devised in the interests of the smaller
- details of your invention have been publicly inventor who may find that a 20-year patent is
disseminated by written or oral means or the unnecessary for his or her particular invention. The
invention has been used in public where people period of protection of a short term patent is a
could see how it works. Discussing your maximum of ten years which should suit less
invention with your immediate fellow technologically complex inventions or inventions not
researchers, business partners and professional having very long life cycles. A short term patent can be
advisers would normally be regarded as implicitly granted without prior examination of the patentability
confidential and would not prejudice a criteria relating to novelty and usefulness and
subsequent patent application. However as a consequently it can be faster and easier to obtain and
precaution you should draw up and sign a cheaper to maintain compared with full term patents.
confidentiality agreement.
❏ Your invention must include an inventive step: Supplementary Protection Certificates For
This criterion implies that the solution your Medicinal Products And Plant Protection Products
invention gives to a specific problem is not (SPCs) allow for the extension of the duration of
obvious to a person with average knowledge of the exclusive patent right, (solely in respect of the
the technical field. product covered by the authorisation to place the
❏ Your invention must be susceptible of industrial corresponding medicinal or plant protection
application: Industrial application means that the product on the market), for up to a maximum of 5
invention cannot be purely theoretical, but it years following the expiry of the term of the basic
must be possible to apply the invention for patent. This extension of protection is intended to
practical purposes. Industrial application includes make up for the time that has elapsed between the
agriculture. date of the patent application and the issuing of
❏ Your invention must not be contrary to public the authorisation to market the product.
order and morality.
Certificates Of Registration For Topographies Of
Specific kinds of patents Semiconductors4 are concerned with semicon-
Utility Models2 provide an inventor with an ductor products being the final or intermediate
exclusive right granted for an invention, which form of any product that consists of a body of
allows the right holder to prevent others from material which includes a layer of semi conducting
commercially using the protected invention, material and
without his or her authorization, for a limited - having one or more layers composed of
period of time. Though similar to a patent, there conducting, insulating or semi conducting
are two major differences: material and
1. To obtain a utility model for your invention, the - intended to perform an electronic function.
technological progress demanded is less than for
a patent.
2. The maximum duration of protection is shorter
than for patents.

Utility models are a more flexible and less costly

way of protection than patents. In that respect this
type of protection is particularly suited to certain 2
Not available in Ireland and Luxembourg
types of innovations. 3
Not available in Spain, Italy, Greece
4
Not issued in Ireland

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 INTELLECTUAL PROPERTY

K N O W W H AT I N T E L L E C T U A L P R O P E RT Y I S

■ DESIGNS are concerned with the appearance of ■ TRADE MARKS are concerned with brand
a product – features of e.g. shape, configuration, identity – they can be distinctive words, marks or
texture or materials not dictated by functional other features, the purpose of which is to connect,
considerations. in the mind of the customer, a link between the
particular products or services and the company.
What is a design?
A design means the appearance of part or of the What is a trade mark?
whole product. It may consist of two-dimensional A trade mark is a sign by which a business identifies
features, such as patterns, lines or colour or of its products or services and distinguishes them from
three-dimensional features, such as shape, texture those supplied by competitors.
or surface of an article.
What can be registered?
What can be registered? Any sign capable of being represented graphically.
Essentially any features, which relate purely to the Thus marks may be one or a combination of words
appearance of the article and is not dictated by the (including slogans), letters, and numerals. They
way the article is required to function, fit into or may consist of drawings, symbols, three-
match other components of a larger article. The dimensional signs such as shape and packaging of
maximum duration of design protection varies goods, audible signs such as music or vocal sounds,
from country to country from 5 up to 25 years. fragrances, or colours. Generally, trade marks are
protected for specific classes of products and
What are the requirements for registering a services for periods of 10 years, renewable
design? indefinitely.
• The design must be new. Details of it must not
have been publicly disclosed prior to filing the What are the requirements for registering a trade
application unless a grace period is permitted. mark?
• The design must have individual character i.e. an • Your trade mark must be distinctive meaning
informed observer would readily form the overall that a customer seeing the mark can immediately
impression that it can be distinguished from link the goods or services to a particular manu-
earlier designs. facturer/supplier. Thus commonly used words
are generally not acceptable except in a slogan.
Unregistered designs • Your trade mark must not be deceptive. It must
Some countries in their national legislation and the not be such that it would deceive the public as to
EU Directive provide a short-term form of the geographical origin or to the nature, quality,
copyright protection for industrial designs. or other characteristics of the product or service.
Registration is not required and protection is • Your trade mark must not be descriptive. It
deemed to start when the product is placed on the cannot describe the product or service.
market. In comparison to registered design, • Your trade mark must not belong to the
copying of spare parts of unregistered design for exclusions provided by the law e.g. photo-
e.g. repair purposes does not infringe such rights. graphs, drawings or names of people or places
So good practice suggests registering your design unless they can be shown to be particularly
in order to benefit from a stronger protection. distinctive.
• Your trade mark must be in conformity with
public order and morality.

Remember that registration of a company name, a

business name or a domain name is not the same
as registering a trade mark. The requirements are
different.

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 GOOD PRACTICE GUIDE

K N O W W H AT I N T E L L E C T U A L P R O P E RT Y I S

Special kinds of trade marks. intellectual effort by the author. Ownership

In addition to trade marks identifying the normally rests with the creator but there can be
commercial source of products or services, several situations e.g. employment contracts etc. which
other categories exist which may be acquired and affect this. In general, copyright protection lasts
used to indicate membership of a particular until 70 years after the death of the owner.
association or products/services complying with
certain internationally recognised standards. Related Rights to copyright.
Certification marks concern the geographical origin, A field of rights related to copyright has rapidly
material, mode of manufacture, quality or other developed over the last 50 years. These related
common characteristics of products or services of rights grew up around copyrighted works. They
different companies using the collective mark. provide similar, although often more limited and of
shorter duration. They cover a range of rights,
Well-known trade marks which have been derived from copyright principles
In common law countries it is possible to acquire and are granted to e.g. performing artists,
some legal rights to a mark simply through usage. producers of sound recordings, broadcasting
A trade mark, which is well known benefits from organizations in their radio and television
some kind of protection even if it is not registered. programmes, and creators/owners of databases.
This protection does not only refer to similar
products or services, but also dissimilar ones. To OTHER INTELLECTUAL PROPERTY TYPES
benefit from that kind of protection, you have to ■ KNOW-HOW concerns practice knowledge
prove the reputation of your trade mark. Good acquired by experience.
practice, however, requires that a trade mark is
registered which provides you with a better and ■ CONFIDENTIAL INFORMATION concerns
stronger protection. business information you do not want to share
with your customers or competitors or other
persons outside your company.
■ COPYRIGHT is concerned with original literary,
musical or artistic works. These include computer ■ TRADE SECRETS concern secret or proprietary
software; any drawing, map, chart or plan; information of commercial value. These are not
photographs and films; architectural works; covered by specific statutory provisions as other
sculptures; sound recordings; TV and radio types of IP are, although there could be aspects of
broadcasts etc.. e.g. contract law, employment law that might be
relevant in a particular case. The level of protection
What is copyright? conferred to trade secrets varies significantly from
Copyright is about the right to copy. Copyright is a country to country.
legal term describing rights given to creators for
their original literary and artistic works which allow
them to control their subsequent use. It is
important to recognise that copyright is not a
monopoly. Two people could completely
independently create identical items. Provided
there is no copying, there is no infringement and
both can hold copyright in their respective works.

How do I obtain copyright protection?

The creators of such works automatically acquire
rights, which mean that they can control their
further use. The only absolute requirement is that
the work is original, i.e. not copied from
somewhere else and has required original

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 INTELLECTUAL PROPERTY

An intellectual property strategy adopted by a sceptical SME

■ C ASE S TUDY T MG S.A.

COMPANY DETAILS
Firm TMG S.A.
Location Spain
Business sector Metallurgic Industry; Metal Fixing Elements
Activities Design and production of wire and metal bands
Number of employees 24
Annual turnover 1.932.000 € (2001)

NARRATIVE

Barcelona has a thriving metropolitan area, which Metal fixing is a very specialised sub-sector, which
encompasses Spain’s number one industrial demands highly qualified labour and requires
agglomeration. In the outskirts of this urban area, is important investments in technology. In Spain, this
located TMG, a small company specialising in sub-sector is dominated by SMEs, which generally
manufacturing metal fixing elements. Usually, this have around ten employees. In this respect, TMG
type of company works as subcontractor to bigger is considered one of the leading companies in this
firms in the automotive, electronics and construction sub-sector in terms of production as well as
industries. In particular, TMG specialises in the innovation. TMG has a specific budget for R&D
illumination sector, which accounts for 95% of its purposes and a full-time engineer dedicated to it.
production. TMG’s basic role is either to develop its
own products or to manufacture specific designs Since its foundation forty years ago, TMG has had
requested by its clients. continuous experience with IP issues. The firm has
registered several utility models with European
The dynamism of the technological environment in coverage thanks to the work of its own technical
which TMG operates can be evaluated from two staff and the assistance of a legal firm. Furthermore,
different perspectives: the technology providers TMG makes extensive use of technological watch
and the company’s major clients. The machine tool services to monitor competitors’ products and the
sector is characterised by long-cycle innovations market environment. The Spanish Patent Office
because its technology is evolving in an provides it with periodic information about the
incremental way, while illumination manufacturing major technological developments in the industry,
companies operate under short-cycle innovations and TMG’s personnel undertake regular field
due to the changing fashion trends when it comes technological surveillance by attending industrial
to housing and office decoration. fairs and professional meetings.

Consequently, TMG is constantly pressured by its Regarding IP, TMG has mixed feelings. On the one
clients to produce new and improved fixing hand, it recognises the need to protect inventions
elements for all kind of illumination artefacts. This because it blocks potential competitor copying and it
constant need to adapt to changing market offers clear advantages as a marketing tool. But on
requirements is well reflected by the fact that, the other hand, TMG has serious doubts about the
during 2002, TMG developed around 500 effectiveness of IP protection in an industrial sector
prototypes. Therefore, most TMG innovations are where copying is an easy task and is a frequent
product oriented. practice among competitors. In fact, when TMG
develops a prototype for a major client, it has hardly
any control over it, leaving itself exposed to any
competitor who may wish to copy it without
infringing the law by introducing small changes in
the original design.

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 GOOD PRACTICE GUIDE

An Intellectual Property Strategy adopted by a sceptical SME

The company perceives that IP protection is This case study illustrates the situation in some
ineffective for two reasons. Firstly, IP administrative industrial sectors where the technological cycles
procedures in the European Patent Office are can force small companies to act expediently when
extremely long and expensive, so by the time you it comes to IP protection. Consequently, official
obtain a granted patent, your market opportunity statistics do not reflect the real R&D efforts
may be gone. Secondly, legal actions are slow and incurred by these small companies because they
very expensive, so by the time you get a court perceive too many risks in using IP protection as an
decision backing your rights, your competitor may up-front strategy. Nevertheless, SMEs should be
have already copied your product and gained a aware that costs are not excessively high during the
market position thanks to a substantial price first stages of IP protection, and that initiating the
reduction. IP process can give them priority to apply for
protection in other countries.
Given this situation, TMG has opted for a two-tier
strategy regarding IP issues. The first strategy
takes place when the firm develops its own
products; in this case it is beneficial to initiate the IP
protection process straight away so as to gain
protection from any rival. The second strategy is
more complicated, since it tries to protect IP when
TMG acts as a supplier of a big manufacturing firm.
In this case, they first test their ideas and designs
with their clients so that they get a real market
feedback. Once a product shows commercial
acceptance, they initiate the IP protection process.

The basic problem with the second approach is that

the company unveils its products before it has
effective legal protection, so it runs a high risk of
being copied illegally. Common sense dictates that
it is following a risky strategy, but it consistently
defends its position: on the one hand, it is argued
that it would be foolish to register IP before
evaluating commercial acceptance; on the other
hand, it is felt that the industry’s dynamism makes
it inevitable that sooner or later competitors will
copy their innovations.

Despite its scepticism, TMG has also had some

positive results from its IP experience.
Occasionally, it has taken competitors to court
because of copying of its products and it has been
able to reach agreements for granting production
rights in exchange for royalty payments. This
solution usually works favourably when the market
demand is so strong that TMG is not able to satisfy
it by itself. Moreover, these agreements allow
TMG to keep a closer control of competitors’
movements in the market.

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 INTELLECTUAL PROPERTY

P R O T E C T Y O U R I N TA N G I B L E A S S E T S

Why use intellectual property rights ? Why register trade marks?

New products, brands and designs resulting from In some common law countries one can acquire
continuous human innovation appear regularly on certain rights to a trade mark simply by usage.
the market . Individual entrepreneurs and small and Registration however is an official record of the
medium sized entreprises (SMEs) are often the rights that an owner is claiming in a trade mark. A
driving force behind such innovations and have trade mark registration also grants a statutory right,
often made substantial financial investments in subject to certain conditions, to prevent others from
order to develop intellectual property in the form of using a trade mark without the registered
a new product, process, brand etc. proprietor’s permission- i.e. to prevent infringement.

Protecting your intellectual property can allow you Your trade mark can be a valuable business asset.
to fully capture the return on your investment and Trade marks have come to represent not only
prevent others from benefiting from your hard actual goods and services, but also the reputation
work. Obtaining relevant intellectual property of the business. Some companies spend millions
rights and maintaining them in force can assist in nurturing their corporate identities. Did you know
deterring potential infringers and in turning ideas that?
into business assets with a real market value.
• Companies like Michelin, Levi Strauss and Intel
IPRs can also provide a vehicle for exploiting IP consider their trade marks their most valuable
assets in a variety of ways, sometimes by outright assets?5
sale or assignment but also through joint ventures
or licensing agreements with companies in your • The President of Coca-Cola stated that the
own country or abroad. corporation's buildings, machinery, equipment,
vehicles and physical property could all be
Even if you have not applied to register any IP destroyed, but that the business would have no
rights, there are a number of automatic rights such trouble getting back on its feet, provided the
as copyright, unregistered design rights, rights in trade mark survived.6
performance and database rights which may apply
to your business even though you may not be Why register a design?
aware of them. For example promotional and The design right resulting from registration confers
marketing material developed by you can on the proprietor (for a limited time) the exclusive
automatically attract copyright protection as can right to use the design and to authorise others to
the creation of a database. use it. It also includes the right to make, offer, put
on the market, import, export, or use a product in
Why patent inventions? which the design is incorporated or to which it is
The inventor or the applicant does not need a applied, or to stock such a product for those
patent in order to exploit his or her invention; but purposes.
without a patent the inventor or the applicant
would not be able to prevent others from copying
the invention.

5
According to an article in Financial World, August 2, 1994
6
Jean-Pierre De Chalain, The South African Institute of
Intellectual Property Law, Newsletter No. 53, 12/1995

14
 GOOD PRACTICE GUIDE

P R O T E C T Y O U R I N TA N G I B L E A S S E T S

Why use copyright? The risk of non-protection

Copyright protection provides benefits in the form Companies who recognise the value of their IP and
of economic rights which entitle the creators to dedicate time and resources to protecting their IP
control use of their literary and artistic material in a assets as part of their business strategy, can
number of ways, such as by making copies, issuing increase their competitiveness in a variety of ways
copies to the public, performing in public, and in certain cases can be propelled to a leading
broadcasting and use on-line and to obtain an role within a particular industry. Indecision and lack
appropriate economic reward. Copyright also gives of positive protective action in the field of
moral rights to be identified as the creator of intellectual property can also produce the opposite
certain kinds of material, and to object to distortion undesirable business result.
or mutilation of it. Without copyright protection, it
would often be very easy for others to exploit Ignoring the intellectual property inherent in your
material without paying the creator. business opens up the possibility of competitors
taking advantage of your technical innovations,
business ideas, goodwill and reputation in the
market. Many infringers and counterfeiters will
seek to quickly establish just how serious their
victims are in protecting their rights. If a victim
company is persistent and relentless in enforcing its
rights, the chances are that a competitor, infringer
or counterfeiter will decide to look for a softer
target elsewhere. The possession of intellectual
property rights and the threat of court action may
be sufficient to deter infringers or place a company
in an advantageous position in which to do a deal.

If you have not taken steps to protect your firm’s

intellectual property then you may lose the
opportunity to forge business alliances, your
negotiating strategy may be weakened, the
possibility of arranging profitable licensing deals
may be considerably reduced and your ability to
obtain capital or investment finance may be
eroded.

Whatever the nature of your business you are

likely to have some form of intellectual
property.

What is most important is that you make the

principle of deciding on the need for
intellectual property protection a fundamental
part of your company’s business strategy.

15
 INTELLECTUAL PROPERTY

CHOOSE THE BEST PROTECTION FOR YOUR

INTELLECTUAL ASSETS

Different IP rights provide protection in different ■ TRADE MARK

ways. Some, like patents, trade marks and You should protect your trade marks if it is
registered designs need to be applied for. important to you that your customers are able to
Protection is automatic in the case of copyright and identify your products and services from those of
unregistered design right. You should check your competitors.
carefully what protection you may already have
and what protection you could apply for. Where IP Trade mark registration is relatively inexpensive and
has to be applied for, it is advisable to do this at an can be indefinitely renewed.
early stage. Remember also that once the right has
been granted it has to be maintained in force by Furthermore, trade mark registration can provide
the payment of renewal fees. you with a legal recourse against cybersquatting. A
registered trade mark asserts your rights to a similar
Take some time to evaluate costs and benefits of domain name on the Internet.
obtaining and maintaining the different intellectual
property rights with respect to your business goals A successful registered trade mark can become a
and the markets you wish to target. source of revenue through licensing or franchising.

In a competitive market a monopoly for limited A registered trade mark used in conjunction with a
period of time can give you a strong competitive patented product or registered design can be of
advantage. significant value to a business in terms of goodwill
and brand recognition, once that patent or design
■ COPYRIGHT registration expires.
As the owner of the copyright in a work such as
literature, art, music, sound recordings, films and Trade mark protection is not expensive and it
broadcasts etc. you will be able to control the use can preserve the asset value of your products
of your material in a number of ways; such as by and services.
making copies, issuing copies to the public,
performing in public, broadcasting and use on-line.
Copyright also gives moral rights to be identified as
the creator of certain kinds of material and to
object to distortion or mutilation of it.

Copyright protected work can become a source of

revenue as it entitles you to ask royalties for the
exploitation of your work.

Copyright protection is automatic. You may

have a source of income that you were not
aware of.

16
 GOOD PRACTICE GUIDE

CHOOSE THE BEST PROTECTION FOR YOUR

INTELLECTUAL ASSETS

■ INDUSTRIAL DESIGN ■ PATENT

Registering your design may be appropriate if the Obtaining patent protection can be a relatively
visual aspect of your product is a selling point or costly exercise. However, the potential profits,
part of the image of your product. As it is the case which can be generated by the monopoly right
for trade marks, it may be important for marketing granted to a successful invention may also be
purposes to preserve the visual uniqueness that will substantial.
serve to identify your product from those of your
competitors. The choice to patent or not to patent requires
careful strategic, technical and financial consi-
In some cases, copyright protection may be derations. You should always seek professional
sufficient for your purposes. However, you can not advice from a qualified registered patent attorney.
rely on copyright protection to prevent someone
from copying elements of your design. Design To patent or not to patent
registration provides stronger protection. It
provides an exclusive right to make, import, export, If your invention is embedded in a product or
use or stock any product to which the design has related to a manufacturing process then you should
been applied or is incorporated, or to let others use consider applying for a patent.
the design only with your agreement.
• Perhaps you have developed a new manu-
It gives you the right to take legal action against facturing process that allows you to reduce
others who might be infringing your design and to production costs or improve the quality of your
claim damages and thus may more readily deter product. If the final product shows that there has
potential infringers. been a novel invention in the manufacturing
process, then patenting should be carefully
In some countries and in the European Community, considered.
your design is protected automatically by an
unregistered design right. This protection lasts only However, if the product does not reveal the
3 years in comparison to a registered design which existence of a new manufacturing process, then
is protected initially for 5 years and renewable up it may be more appropriate to protect your
to 25 years. As there is no registration formality for investment by way of a trade secret. To preserve
an unregistered design right, it can be more the confidentiality of a trade secret you should
difficult to prove ownership. An unregistered only make disclosures to parties who formally
design right may not prevent others from copying agree to be bound by strict terms of a
elements of your design. confidentiality agreement.

Obtaining design registration can be relatively • You think your invention will lead to a new
inexpensive and it can provide you with an product.
asset which could increase in value over time. If an expert can understand and learn what your
invention is by analysing the product, then a
trade secret will not be the appropriate
protection mode. If your invention is capable of
being reverse engineered (finding out how an
invention works by taking it apart) then it should
be protected by a patent.

17
 INTELLECTUAL PROPERTY

CHOOSE THE BEST PROTECTION FOR YOUR

INTELLECTUAL ASSETS

• The cost of patenting will vary depending on • If the expected life cycle of your invention is
such things as the type of patent being registered short, applying for a full 20 year patent may not
and the number of countries in which you intend be appropriate because of costs and length of the
to register your patent. However, the initial step granting procedure. You should consider other
of filing a national patent application is relatively possibilities such as applying for a utility model/
inexpensive. short term patent which is cheaper, can be
granted in a shorter time and may be more suited
• You should evaluate the potential life cycle of to the product you have developed. To prevent
your invention. If the expected life cycle of your anyone else patenting your invention and thereby
invention is long, then obtaining a patent should preventing you from exploiting your invention
be carefully considered in order to protect a you can also adopt a defensive publication
potential substantial and long term revenue flow. strategy. By publishing your invention, - perhaps
Your invention may also have applications other in a well-known scientific or technical journal, you
than those readily apparent to you. However, disclose your invention to the public and thus
before making investment, production and prevent anyone else obtaining a patent on it. It is
marketing decisions you may first want to test possible that publishing details of your invention
the reaction of the market. will make a name for your company among the
experts in your field and this might lead to new
• You should file a patent application before partnerships.
launching a product on the market in a test
phase and thereby disclosing your invention to To patent or not to patent is a decision that
the public. Filing a patent application will secure needs careful consideration. Obtaining a patent
a priority date (i.e. the date by which your can be a complex and costly procedure. Proper
invention is assessed for novelty and inventive drafting of your patent specification is critical
step and the date from which your patent right to the success of your patent application and
will run and exclude others who may have you should obtain professional help from a
invented later). It will also give you some time to registered patent attorney.
consider your options.

• You will have 12 months from the priority date of

filing of your original application to decide if you
wish to file for patent protection abroad.

• You will have 18 months from the filing

date/priority date of your application before it is
published (details made available to the public).
You may decide to withdraw your application
before it is published in which case it remains
secret.

18
 GOOD PRACTICE GUIDE

CHOOSE THE BEST PROTECTION FOR YOUR

INTELLECTUAL ASSETS

■ COMBINE DIFFERENT PROTECTION MODES

It is important to realise that more than one type of For example, when used in conjunction with
intellectual property may apply to the same patents, which do protect the functionality of
creation. Have you thought about combining products, a registered design can be an effective
different intellectual property rights? way of safeguarding the appearance of your
products. The design of a product can be
The name and the logo
synonymous with the branding and image of a
The technical invention
can be registered as a incorporated in this company which can become an asset with a
TRADEMARK machine can be protect
NAME
by a PATENT monetary value that could increase.
or by TRADE SECRET

Note that different forms of IP may be used to

The shape, the colors,
the design of this The logo and protect the same feature; – for example the familiar
machine may be the design
registered as is protected shape of a Coke bottle is protected by design and
INDUSTRIAL DESIGN by COPYRIGHT trade mark registrations.

Seek to strengthen your IP rights by combining

Consider and evaluate all your options. An different protection types!
effective protection strategy for your business may
involve a range of different IP options. Using
several IP protection measures can give you layers
of protection for your investment and strengthen
your position in the market

Choose the right geographic coverage Create an intellectual property committee within
The cost of obtaining IP rights will vary depending your company
on the geographic coverage of the protection you Choose one or more persons, working in different
require. In general, the more countries in which you fields, to be responsible for the intellectual property
apply for protection, the higher the costs will be. strategy of your company. There might be for
example an engineer, the marketing manager and
Different procedures exist which may help to reduce the person in charge of the finance matters. The
costs . Cost differences may be substantial depending objective of this committee is to examine, discuss
on whether you apply for protection in each country and take appropriate decisions in IP matters.
or you choose an international (PCT) or a European
procedure for patents or a European Community Evaluate your IP protection requirements on a
protection for trade marks and designs. Inform case-by-case basis and choose the protection
yourself about the costs of the different procedures option that best meets your needs! Be aware
and compare them having regard to the expected that you can combine different protection
market of your product or service. modes.

Before registering your IP rights, you should also

look at the IP culture and legislation of the different
countries. Differences can exist which may be
important to you. For example, United States law
will consider patent applications on a "first to
invent“ basis while European countries operate on
a "first to file” basis.

Consult an expert to obtain more precise infor-

mation on the law and practice in different countries.

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 INTELLECTUAL PROPERTY

Recognition of the importance of Intellectual Property by a

start-up business manager

■ CASE STUDY ENTERPRISE S7

COMPANY DETAILS
Firm Enterprise S.
Location Luxembourg
Business sector Software and Internet
Activities Software management systems and web solutions
Number of employees 7
Annual turnover 40,000 € (2002), 150,000 € (forecast for 2003)

NARRATIVE

Enterprise S. is a young start-up company from So the company owner protects his know-how by
Luxembourg. Its activities are focused on the concluding non-disclosure agreements with future
software and the Internet business. It develops, employees, clients and partners before any
implements and distributes software management information is exchanged. He also ensures that all
systems in the field of accounting, logistics, process the company’s documents have a confidential
tracking, communication, human resources and notice. Furthermore a copyright notice is placed on
customer relation management. Enterprise S. also all the documents, software and web pages
offers web solutions including application provider, produced by the company. Finally the registration
web hosting, web and application development of his products’ trademarks remains on his list of
services. next things to do.

The owner of Enterprise S. learnt about intellectual Being aware of intellectual property issues for his
property issues by attending seminars and business, the Enterprise S. owner also takes care to
conferences for future company managers. There integrate intellectual property in the business plans.
he became aware of the value of his intangible He admits that the time it took him to include IP
assets and of the importance of protecting them. considerations in his business plans is not wasted as
So he began to seek information about how to best it helps him in his business activities today.
protect them, by consulting IP experts.
Regarding intellectual property protection, the
As some IP protection tools require financial company manager has adopted a defensive
resources that a start-up company may not strategy, because he does not think that his
necessarily have, the company owner finally competitors are going to copy the company’s
adopted a 2-level strategy, which consists of using products. Nevertheless he wants to be able to
as much as possible of the free-of-charge assert his rights in case a competitor copies him.
protection tools such as copyright and secrecy and
of making a cost benefit analysis in respect to his He also made use of IP as an information source by
finance regarding trade mark and patent asking the Luxembourg Technology Watch Center
protection. "Why not make use of the free-of- for searches on trade marks and patents.
charge intellectual property rights as they give you
a legal tool to defend your rights in case of
infringement by third parties”, is one of his
principles.

7
The company name is fictive in order to preserve its identity.

20
 GOOD PRACTICE GUIDE

Recognition of the importance of Intellectual Property by a start-

up business manager

Intellectual property issues are managed by him

alone. IP questions are dealt with as problems arise
by seeking help from IP experts.

Planning to diversify his business activities, the

company owner wants to develop a new
innovative service based on a patented system. An
exclusive licence agreement has been signed
between the company and the patent holders.
During the negotiation of the contract it was
agreed to extend patent protection to more
territories, but they missed the deadline of 1 year,
which is given to the patent holder to seek
protection in other countries without failing the
novelty criteria. As a matter of fact the company
now faces the problem that they can be freely
copied and competed in some of their relevant
markets.

The company owner considers intellectual property

protection as a very important issue for small high-
tech firms as it attracts investors and protects one’s
intangible assets from competitors.

21
 INTELLECTUAL PROPERTY

O B TA I N P R O T E C T I O N

The competent offices, the time limits and the You will need to file a separate application for each
documents needed for the registration of your IP invention.
vary from country to country. Some general
aspects set out below will assist in a better Once you have submitted your application, you
understanding of the system. have an 18-month time period to withdraw your
application before it is published. This publication
Obtaining a patent releases details of how the invention works to the
Applying for a national patent, utility model or general public. Before that date, each patent office
short term patent has held the information in confidence. Experts
The first step that people usually take in applying working for the national patent office will check
for a patent is to file a preliminary application in your application to determine if it fulfils all the
their own country. When the application is filed, patentability criteria. In order to verify if your
the date of application is recorded and this is called invention is novel and includes an inventive step a
the "priority date”. Most countries are signatories search report will need to be compiled. The search
to an international convention (The Paris report will list published documents considered
Convention) which guarantees that the priority relevant in assessing whether the claimed invention
date of an invention filed in one country will be is new and not an obvious development of what is
respected in other countries, provided an already known.
application is filed in the other countries within 12
months of the date of filing of the first application. Once the patent office has satisfied itself that the
invention is novel and the claims made for the
Details of how to apply for a patent together with patent are allowable notice of the allowance of the
the application form and information about other patent will be issued and the patent will be
documents needed can be obtained from the granted.
national patent office of your country. The
application form must be completed and submitted Shorter and less complex procedures apply in the
along with the other requested documents to the case of applications for utility models and short
national patent office. term patents.

In general, an application for a patent must be For more detailed information on all aspects of
accompanied by that following: applying for patent protection consult your
- a specification containing a detailed description national patent office. Addresses, contact numbers
of the invention, one or more claims, any and websites are listed in Annex A.
drawings referred to in the description or claims
and an abstract (a brief description of the
invention)
- the required filing fee.

Patent law and practice and the drafting of a

patent specification describing an invention in
words which will have legal effect, are complex
matters for which the help of a patent attorney is
very advisable. You should remember that the
contents of the specification determine whether a
patent can be granted as well as the scope (set out
in the claims) and validity of the granted patent.

22
 GOOD PRACTICE GUIDE

O B TA I N P R O T E C T I O N

Applying for foreign protection Outside Europe

If you think that you should obtain patent The Patent Cooperation Treaty (PCT) is a
protection outside your own country, you have two worldwide agreement to simplify the filing and
possibilities, either filing a patent application for processing of patent applications. Approximately
each country you wish to obtain protection, or 115 countries, including most industrial countries,
using a procedure which allows you to obtain are party to the treaty. Through a single
protection in a number of countries by filing only international application you can apply for a patent
one application form. in all the countries party to the treaty.

Europe You must indicate those PCT contracting states in

A European patent application procedure allows which your international application is to have
you to obtain protection in those European effect ("designated States"). The effect of the
countries which are members of the European international application in each designated State is
Patent Organization. the same as if a national patent application had
European patent applications may be filed at: been filed with the national patent office of that
• The national patent offices; State. Where a designated State is party to the
• European Patent Office (EPO), at its Munich, European Patent Convention, the applicant may-
The Hague or Berlin branches. and, in the case of Belgium, Cyprus, France,
Greece, Ireland, Italy, Monaco and the
The grant procedure is based on a single application, Netherlands, must- opt for the effect of a European
filed in one of the official languages of the European (rather than a national) patent application.
Patent Office: English, French or German. The EPO
will deal with the application in the language chosen PCT applications may be submitted to your
and this postpones translation costs until such time national patent office and, if there are no national
as the patent is granted. You must designate the security constraints, to WIPO in Geneva or to the
countries in which final patent protection is sought. European Patent Office in either The Hague or
After examination, the EPO grants a European Munich. For further information consult the
patent which has the effect of a national patent in website of the World Intellectual Property
each of the countries designated. Once the patent Organisation (http://www.wipo.int).
has been granted you can decide to maintain it in
force in some or all of the designated states. If the Costs and procedures involved in obtaining
language of the patent is not an official language of patent protection abroad are important factors
the designated State, a translation into the language when considering any potential export markets
of that State must be filed, failing which the patent you wish to target. Before significant business
will not be valid in that State. For further information decisions are made, including deciding to file a
consult the website of the European Patent Office national, European or PCT patent application,
(http://www.european-patent-office.org). you would be well advised to obtain
professional advice.
In future you will have the possibility to apply for a
Community Patent which will apply in all the
member states of the European Community.

23
 INTELLECTUAL PROPERTY

O B TA I N P R O T E C T I O N

Registering a trade mark

How to register a trade mark nationally The European Community
If you use or propose to use a trade mark in your If you do business in Europe then you should
business you can apply to register that mark. You consider applying to the Office for Harmonisation
can apply to register your mark either before you in the Internal Market (OHIM), for the registration
start to use it or afterwards. Generally speaking you of a Community Trade Mark. Community Trade
should apply to register a mark as soon as possible Marks are legally enforceable and enjoy uniform
to ensure that no one else applies to register the protection throughout the territory of the
same or similar mark before you do. You must file European Union. Applications should be made on
an application for registration with the appropriate the form drawn up by OHIM. The single filing may
national or regional trade mark office. The be made at the OHIM, located in Alicante, Spain;
application must contain a clear reproduction of by post, courier or fax, and can also be filed at the
the mark filed for registration, including any national trade mark office. OHIM is responsible for
colours, forms, or three-dimensional features. The examining the applications (http://oami.eu.int/).
application must also contain a list of goods or
services to which the mark would apply. Outside the European Community
Upon receipt of the application in the national If you are the owner of a trade mark and wish to
office a filing date will be assigned and the consider obtaining trade mark protection inter-
application will then be examined as to its nationally, the Madrid system of international
registrability. registration of trade marks gives you the possibility
to have your trade mark protected in several
Claiming priority countries by simply filing one application with a
It is possible to claim priority of an application single Office, in one language, with one set of fees
made in the preceding six months in one of the in one currency (Swiss francs). An international
States party to the Paris Convention. This prevents registration produces the same effects as an
third parties applying to register your trade mark application for registration of the mark made in
within these six months. each of the countries designated by the applicant.
To apply for a registration of an international trade
Using your trade mark mark it is necessary to be owner of a registered
Registrations can be cancelled if the holder is not trade mark or to have filed a request for an
using a mark. It is important therefore to indicate identical national trade mark. For further
on goods or services that the mark is a registered information concerning the Madrid System, consult
one. The symbols ® or TM are normally used in the WIPO website (http://www.wipo.int/).
association with the mark to show this.
Registering your trade mark documents your
You should contact your national office which right to a particular trade mark and makes is
handles applications for trade mark registrations in easier to prevent others from using it. The
order to obtain an application form and details of trade marks you use for your goods and
the precise requirements, procedures and fees services are usually the result of considerable
applicable in your country. A list of these offices is investment of time and money. They may be
at Annex A. amongst your most valuable assets so it is
important to protect them!
Foreign trade mark applications
A national trade mark registration may be sufficient
if your business is focused on the domestic market.
However, if you do business in Europe or elsewhere
in the world there are other ways of obtaining
trade mark protection which may suit your
circumstances.

24
 GOOD PRACTICE GUIDE

O B TA I N P R O T E C T I O N

Registering a design
How to register a design nationally The European Community
Applying for a national design registration is If your market is limited to the European
generally a straightforward process. An application Community, you should consider acquiring design
will have to meet certain minimum requirements. protection across all EU member states with a
• The applicant must be the proprietor i.e. the single application to OHIM.
owner of the design. The proprietor can be the
author of the design or the employer of the Outside the European Community
person who created the design if this was done If your market is outside the European community,
in the course of the employment (subject to any you should be aware of the existence of an
contract or agreement to the contrary). international design application procedure, created
• Any number of representations of the design by the Treaty of The Hague. By filing a single
may be submitted but must be suitable for international application to WIPO in Geneva you
reproduction. may be able to obtain the protection in several
• One application may include more than one signatory States to the Treaty of The Hague.
design, provided that they are intended to be
incorporated in objects included in the same class Usually a registered design is published on
of the international design classification. registration. However, it may be to your advantage
to seek to defer publication of your design. For
You should contact your national office which example applications for Community Design
handles applications for design registrations in registration can be delayed for up to 30 months and
order to obtain an application form and details of your creation remains confidential until you are
the precise requirements, procedures and fees ready to disclose it. Your national office will be able
applicable in your country. A list of these offices is to provide detailed information.
at Annex A.

Claiming priority
It is possible to claim priority of an application
made in the preceding six months in one of the
States party to the Paris Convention.

Obtain design protection in foreign countries

Find out about the possibilities of obtaining
industrial design protection outside of your country
in Europe and elsewhere.

25
 INTELLECTUAL PROPERTY

O B TA I N P R O T E C T I O N

Copyright

Obtaining copyright protection Using material already covered by copyright

Basically the act of creating a work also creates the Your work may be a development of the works of
copyright, which then subsists in the physical others. You may need to obtain permission
expression of the work. There is no formal therefore to use copyright material. This is normally
registration process required in order to obtain done by approaching the copyright owner.
protection. However, some national laws allow for However, there are a number of organisations that
registration of works and in certain countries act collectively for groups of copyright owners in
registration can serve as prima facie evidence in respect of particular rights and which may offer
court in case of infringement. You should therefore licences to users for a tariff. A performing rights
check with the competent office in your country. A society is a collective that deals with musical works,
list is at Annex A. collecting royalties on behalf of composers,
lyricists, songwriters and music publishers for the
Claiming protection public performance or broadcasting of their music.
You should be aware that it is important to show Further information is available directly from these
that copyright is claimed in a work. You should organisations.
mark the work clearly to indicate who the
copyright owner is and the date from which
copyright its claimed. The internationally
recognised symbol © is normally used.

Transfer of ownership
Remember that a transfer of ownership may cover
all or only some of the rights to which a copyright
owner is entitled. First or subsequent copyright
owners can choose to license others to use their
works whilst retaining ownership themselves.

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O B TA I N P R O T E C T I O N

As the originator of a work it is most important

that you can show subsequently when the work
and the consequential copyright were created.
One way of doing this is to deposit a copy of
the work with an acknowledged representative,
who may be a bank, solicitor or notary in such
a way as the date and time of the deposit are
recorded. Alternatively one may send a copy of
the work to oneself by registered post (which
gives a clear date stamp on the envelope),
leaving the envelope unopened on its return
thus establishing that the work existed at that
date and time.

27
 INTELLECTUAL PROPERTY

I N T E G R AT E I P I N Y O U R S T R AT E G Y

Basic issues In developing an IP strategy

• What intangible assets does your organisation own?

• Are they adequately protected?
• Which intangible assets have value, and therefore need to be protected, and which do not?

The importance of an IP strategy is to focus initially on one or more "crown-jewel

The significance of an IP strategy for a company patents”. In order to do this, a company should
can be considerable and long-lasting. Properly work with experts to identify the key innovative
implemented, such a strategy could be worth elements of the company’s products or services.
hundreds of millions and could cost a relatively Choices can then be made as to the appropriate
modest amount. On the other hand, errors in this forms of IP to be used in protecting these, taking
area, such as the failure to protect a significant into account development costs, product lifetime,
innovation, can be incredibly expensive. competitors strategies etc.

An organisation’s R&D strategy cannot be dictated The basic principles for developing an effective IP
solely by scientific considerations. Each strategy are to put in place a mechanism to identify
organisation has different goals and therefore the elements of the companies’ assets that can be
strategies must be formulated in a way to facilitate protected, to examine the potential types of
the achievement of these goals. The importance of protection and to put protection in place where
IP to the competitive advantage of an organisation appropriate.
depends on its sector of activity, business strategy
and interactions with the strategies of its
competitors. Patents may be essential in areas Best practices for IP strategy
where inventions are easy to copy. In other cases, • Create awareness in your organisation for the
other approaches such as secrecy and lead-time importance of IP strategy.
advantages can be effective. • Preserve confidentiality of new technology until
professional advice has been sought.
Properly protecting innovation that leads to new • Ensure that IP strategy is a lead element of
products or services provides a company not only business strategy.
with protection against competitors but with a • Use IP to add value to your products and services
vehicle that can be used to license the IP in • Capture all your current and potential IP.
territories or markets that the company does not • Systematically review your IP portfolio to
itself wish to address. maintain protection on current technology and
drop protection on obsolete technology.
IP strategies will therefore vary from one • Gather market intelligence and analyse your
organization to another and there is no optimum to competitors IP so as to avoid infringement and to
be followed. Large enterprises that have significant challenge, if appropriate.
financial resources often pursue a strategy of • Defend your position in case of infringement.
procuring and maintaining a large quantity of
patents. In contrast, for most start-up companies,
developing and building a comprehensive patent
portfolio can be prohibitively expensive. However,
by the understanding of some basic principles of IP
strategies and early planning, a start-up company
can establish a cost effective strategy and a
valuable IP portfolio. The key for a small company

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 GOOD PRACTICE GUIDE

I N T E G R AT E I P I N Y O U R S T R AT E G Y

The importance of an IP portfolio

A strong IP position is not only important in
achieving success in the marketplace, but is also an
important asset in the valuation of a company.

Best practice in creating a valuable patent portfolio

• Keep records • Secure assignment of rights

It is advisable to maintain proper invention records Have clear policies and procedures in place to
for all research activities. All supportive data and determine the ownership and to deal with
conceptual ideas should be included in these assignment of rights. Contracts with employees or
records. This information should be entered at the external consultants should have clear provisions
time that the work is carried out, not later. on IP ownership. Research institutions, for
Permanent ink should be used and each entry example, should also have clear policies and
should be signed, dated and witnessed by an agreements in place regarding researchers as well
individual who is not directly involved in this as students on ownership of IP generated during
research. This evidence may be used to support your their course of study, research and training.
priority over another invention or in infringement
proceedings or to invalidate a competitor’s patent. • File promptly
File patent applications in a timely manner to
• Disclose inventions ensure proper protection. Inventions should be
Establish a policy of having achievements described identified at an early stage (see above records) so
by employees in an "Invention Disclosure Form”. patent applications can be prepared and filed
This form requests details about the invention, how before any disclosures are made at conferences,
it is made, the people involved and its potential trade shows or in the scientific literature.
uses and applications.
• Review portfolio regularly and critically
• Technology watch Ensure that funds are not wasted by maintaining IP,
Ensure that the company is kept abreast of when the products/services covered no longer
developments in its fields of interest. A thorough need such protection.
search of IP in an area will enable the company to
determine whether or not there is sufficient room
to pursue a particular line of research. Also
Watching Services are available so that companies
can monitor the activities of their competitors on
an ongoing basis.

29
 INTELLECTUAL PROPERTY

The benefits of patent protection in a very competitive market

■ C ASE S TUDY H ELMED S PINE I MPLANTS S.A.

COMPANY DETAILS
Firm HELMED SPINE IMPLANTS S.A.
Location Greece
Business sector Medical materials/Spine Implants
Activities Spine Implants & neurosurgical items distribution
Number of employees 7
Annual turnover 2.500.000 €

NARRATIVE

Helmed was founded in 1992 by two scientists in The firm employs 7 people, 4 of whom are
Thessaloniki, Hellas. The firm’s mission was to meet University degree holders and 1 is responsible for
the future needs of the growing market in spinal R&D activities. Helmed does not use any
implants, a high technology business sector. At that predefined IP management procedure such as a
time in Greece, this business move was quite standard IP strategy. Neither does it have special
innovative as Helmed was the first Greek firm in contracts with its personnel, or require that any
this rather unknown and risky sector. However, due special laboratory protocols should be followed
to several scientific breakthroughs in the area of during the product development process.
new materials and the continuous increase in R&D Furthermore, the firm’s executives to date have not
spending, the market potential brought many used any business tools to evaluate the strategic or
companies both from Greece and abroad into the economic value of the firm’s patents or any other
spinal implants sector. protection tools while developing new products. As
with most SMEs, Helmed faces great difficulties in
Helmed has developed several implant types, most marketing their products, and in implementing a
of them protected by patents but its main current market survey before launching new products, due
activities are still in third party product distribution to budgetary constraints.
rather than in - house mass production of its own
patented implants. However, this latter area is one One key characteristic of the spinal implants sector
of the company’s main strategic aims. in Greece is the big differences in size of the
companies involved. This has created a strong
During the last three years, the financial statements competitive environment and moreover, places
of Helmed have shown a good business Helmed among the weaker firms, although its
performance with a yearly average increase in total market share which is almost 10%, amounts to
turnover of more than 15%. One key issue that more than 350.000 €. Copying a competitor’s
should be taken into serious consideration is the product is one of the common practices in this
overall dependency of the firm on the spinal business sector and Helmed is aware that its
implants area as it represents more than 90% of products have been copied at least four times by
the total turnover. both Greek and international firms (Germany,
France, USA). Helmed executives do believe that
the patent system alone can provide the
technology owner with the necessary protection.
Sometimes more financial resources and an
integrated business strategy must be used in order
to fully benefit from the protection that can be
obtained from patents.

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 GOOD PRACTICE GUIDE

The benefits of patent protection in a very competitive market

Helmed has recently won a legal dispute with a Copying a competitor’s product is one of the
German company who copied one of the firm’s common practices in the medical implant sector. In
patents and this company’s Greek commercial order to get its product to market quickly and to
representative has already stopped selling the save money, the firm’s executives have changed its
copied product. However, Helmed managers have IP policy and decided to keep its new product
realised that in the situation where many other development activities secret and to proceed with
companies from abroad might copy Helmed patent protection just before the stage of releasing
patents, the company would not be able to afford the product on the market.
the necessary amount of money to take legal
action against infringers. The main conclusion is that a strong competitive
environment between competitors who are
During the patenting procedure, and in order to characterized by big differences in size is a very
draft the patent claims, the firm has had very good difficult field even for SMEs with products which
cooperation with the Hellenic Industrial Property have IP protection. SMEs operating in such fields
Organisation, although it would prefer shorter could improve their business by integrating their IP
procedures as, in its opinion, time delays are an policy with their innovation strategy and by
inborn weakness of all patent systems. carefully selecting and using the available tools and
financial resources. Some of these tools are
Helmed executives believe that one of the most provided in this guide.
difficult tasks in managing its IP is the monitoring
of all the critical deadlines during the whole
patenting procedure as well as the deadlines for
the payment of annual patent renewal fees for all
of its patents. Therefore, Helmed has assigned this
task to patent attorneys in Europe, which has also
increased its annual R&D costs.

In order to increase its potential for know-how and

technology transfer, Helmed was recently chosen
to actively participate in the Thessaly Technology
Park business incubator as a tenant. Apart from
that, Helmed continuously tries to reduce the R&D
cost by participating in both national and
international R&D projects and by developing
collaboration with several consultancy firms.

Although Helmed is an innovative company it

seems that so far it hasn’t fully benefited, in terms
of financial profits, from its intellectual property by
just using classic IP protection methods such as
patents and non-disclosure agreements. It is
obvious that the necessary integration of its IP
policy with its innovation strategy is missing.
Helmed lacks the potential of undertaking market
research, evaluating the potential for patenting its
products or even developing a business plan for a
new product.

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 INTELLECTUAL PROPERTY

U S E I P I N F O R M AT I O N

IP - a rich information source

Besides being an important tool for providing legal There are, as well, private suppliers of patent
protection for R&D and commercial rights, databases. Some of them provide in addition to the
Intellectual Property can be a useful information basic patents, further scientific data, information
source for SMEs. For example, patent specifications about licensing, business intelligence reports, etc.
contain important technical information. Patents Some examples of private services are Derwent,
and designs will also indicate current innovation The Delphion Intellectual Property Network,
trends. The patent literature is therefore an Dialog, The Questel-Orbit Group, and STN
effective tool to avoid parallel developments and International.
R&D efforts. Also, patent and trade mark filings
can give an insight into competitors’ marketing Usefulness of patent information
strategies. In other words, IP information is Patent information sources should be used by
valuable in all aspects of company activity - organisations in their research and development for
research, development, manufacturing, any of the processes below:
commercialisation and overall management. • Investigating the general "state of the art” in a
technology,
Information provided by a patent • Finding emerging and cutting edge technologies,
A patent document provides information about an • Identifying possible fruitful areas for research,
invention that, in many cases, has not been • Identifying areas where research effort would be
published before. The applicant is obliged to give a wasted because of e.g. duplication, established
full description of the invention which they might dominance by other companies etc.,
not otherwise publish at all or only with much less • Investigating existing patents for legal purposes
detail. A patent document describes the invention – e.g. possibilities of infringement,
in a clear and complete way, gives examples of • Finding possible competitors or partners,
industrial application and informs about the • Identifying technology transfer/licensing
technological context – i.e. other patents in the opportunities (in or out).
same area. It also permits identification of the
inventor and the patent owner. There is a patent Barriers to use patent information
classification system which facilitates retrieval of There are two major difficulties which militate
patents within a specific technology area. against widespread use of patent information:
1. The lack of awareness among scientists and
Patent information sources technical personnel about the valuable data in
Nowadays, patent information can be extracted patent documents.
from free-access databases and from paying 2. Access problems to the patent literature due to
services. Most national patent offices have their the huge number of existing documents and the
own web pages in which they offer free access to different languages in which the documents are
their national patent databases. Similar to the written. It is important therefore if one is going
national services, the European Patent Office to base important investment decisions on the
(EPO) has an Internet service called Esp@cenet outcome of searches to have them carried out by
(http://ep.espacenet.com/). This service provides experts.
free information about patents from more than 60
countries. Esp@cenet contains more than
40.000.000 documents, most of them including
bibliographic references, complete patent text and
patent drawings. Other important free-access
databases are the US Patent Full-Text and Full-
Page Image Databases, provided by the United
States Patent and Trade mark Office (USPTO)
(http://www.uspto.gov/).

32
 GOOD PRACTICE GUIDE

U S E I P I N F O R M AT I O N

Other information sources

Besides patent databases, there are databases on R ECOMMENDATIONS AND SUGGESTIONS FOR
other forms of IP, such as trade marks and designs. ORGANISATIONS .
Most national offices, provide free access to their
national databases. At international level, the 1. Before initiating a research project, undertake
OHIM (Office for Harmonization in the Internal a search of published patent documents to
Market), whose task is to register European establish what is already known.
Community Trade Marks and Designs, allows free 2. Check patent documents for possible
searches of Community Trade Marks. Also WIPO solutions to production problems.
(World Intellectual Property Organisation) provides 3. If you are thinking of manufacturing a
for the searching of Internationally Registered product, you should first check whether you
Designs. There are some commercial services could be hindered by an existing patent that is
covering trade marks, for example that offered by still legally enforceable.
the Questel-Orbit Group. 4. If you don’t have the resources or experience
to develop and market your patented product
Technology watch services fully, you should consider assigning or
These services facilitate keeping up to date with licensing your IP to another party in order to
technology information in a particular area. They exploit your invention to the maximum extent.
may be provided by national patent offices or other 5. Use a search of patent documents to find
organisations. potential licensors and business partners.

Use of a technology watch service permits companies

(for example) to:
• Determine the "state of the art” in a specific
technological sector, identifying trends and
developments,
• Monitor new developments in a particular techno-
logy,
• Regularly obtain new selected patent information
of relevance to companies in a given sector,
• Obtain ideas for areas of innovation and
technological development,
• Plan any R&D activity,
• Determine the likely patentability of its products
and production processes,
• Obtain a solution for a specific technical problem,
• Study the competitive environment in a particular
technological or commercial area,
• Look for technology that is available for licensing,
• Evaluate a license contract,
• Detect technologies that are available free,
• Avoid duplicating investigations done elsewhere,
• Locate new uses of already known technologies,
• Guard against possible infringement of patented
technologies.

33
 INTELLECTUAL PROPERTY

C R E AT E VA L U E W I T H I P R I G H T S

Introduction to IP commercialisation Commercialisation choices

Your Intellectual Property, whether it is a patent, a If the company which has carried out or
design or other form of IP, represents an commissioned the research and owns the IP is not
investment from which you expect a return. itself in a position to exploit the results, there are
Therefore, transforming an invention into a several other methods which may be used. These
marketable product, so that it begins to generate include:
revenue and profits, is a crucial stage in the
innovation process. • Creation of a new start-up company to exploit
(i.e. manufacture, market) the products and/or
IP has a potential value which is why one invests in services covered by the IP,
it. The IP owner must then convert this potential • Establishing a joint venture or a co-operative
into real reward. The value of IP depends on how agreement with a suitable existing company,
well it is utilised. If you adopt a systematic • Licensing the IP rights to an existing company or
approach for the effective commercialisation of other entity with the capability to exploit them,
your IP, it will ensure good returns on investment in • Selling the IP.
those IP assets.
In order to decide which is the best approach to
It should be realised at the outset that there are follow, you should analyse each method by taking
certain basic factors which are vital in the successful into account:
creation of valuable IP. These include for example:
• The scope and strength of the IP, technically and
• Innovation and technological R&D should not be commercially,
undertaken in isolation from commercial market • The market conditions,
realities. A technological development should • Your financial position,
always be assessed in terms of the market or its • Your experience and skills.
commercial merits.
• IP creation and protection should be balanced by
similar efforts in commercialisation.
• Successful exploitation of IP will require a
competent and responsible person in the
organisation giving continual attention to the
management of the IP portfolio.

Also there are a number of things which need to be

in place in the company if real benefits are to be
achieved:

• Develop awareness of the role of IP,

• Create a common language within the
organisation,
• Develop indicators for measuring IP,
• Develop a measurement methodology,
• Use experienced advisors.

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 GOOD PRACTICE GUIDE

C R E AT E VA L U E W I T H I P R I G H T S

Collaboration and licensing

Direct full exploitation of IP rights by their owners Licensing:
on their own or by means of a joint venture may
for many reasons not always be possible. In such • License agreements are arrangements where the
cases in order to exploit the financial potential of right to use a technology is formalised
an innovation, the IP owner generally considers the contractually.
licensing approach. • A License agreement does not transfer
ownership of the IP rights involved and the
Relevant factors in choosing the licensing route are: proprietor may wish to place limitations and
obligations on the licensee.
• Immediate cash flow, • Collaborative R&D and licensing offer the
• Further development of technologies based on IP, prospect of resource and information sharing
• The technology is outside the firm’s core line of and the speedy translation of the IP into high
business or interest area, quality products. Furthermore, it can offer the
• The product is not suitable for export due to e.g. ability to share skills and technology and to enter
unit volume, regulatory differences, lack of markets which would otherwise be inaccessible.
expertise in foreign markets, • Licensing as a component of a technology
• There is a lack of the amount of time and effort transfer arrangement is attractive where the
needed for commercialisation. venture is viewed in the context of a long-term
relationship between the parties involved.
It is important that a very extensive and careful
search is carried out to identify a suitable license It must be remembered that licensing is a two way
partner. The IP owner must be satisfied that the process and can involve any type of IP rights. Terms
partner has the expertise, resources and and conditions for licensing agreements are usually
commitment to exploit the particular product or negotiated on a case-by-case basis.
service. One may start with an option arrangement
whereby the potential licensee is given an Because licences play a great role particularly in the
opportunity to research the market and satisfy the operations of high-tech companies, it is important
IP owner that a fruitful partnership could ensue. A for corporate decision-makers to understand the
license agreement will then be entered into. basics of licensing and the strategies implemented
through license agreements.

Various types of licences are used. Some common

considerations apply to all types, while other issues
arise only in particular types of licences.

35
 INTELLECTUAL PROPERTY

The importance of patent protection and

technology watch for competitiveness

■ C ASE S TUDY S PECCHIO P IUMA S. A .S

COMPANY DETAILS
Firm SPECCHIO PIUMA S.a.S
Location Italy
Business sector Architectural infrastructure - Space-saving solutions for architect, contractor
or do-it-yourself client.
Theatrical design - Reusable, adaptable, integrated - a warehouse of
technical pieces and materials for all sets. Stage space designed according to
specific customer's needs with resistant and lightweight materials easy to
transport and assemble.
Packing - A completely reusable system, versatile, solid and light, for storage
and transport.
Exposition structures - Designed and produced for expositions and fairs.
Activities Consultancy: the enterprise can give successful answers to any question
relating to design and production with a vast array of creative and low-cost
solutions.
Design: the firm employs a network of CAD draftsmen, architects and
designers: designs products, researches materials and works on the basis of
the maximum use of resources and space.
Sales: direct control over all phases of product development, from
conception to manufacture, to quality guarantee and finally the sale.
Number of employees 6
Annual turnover 450,000 € (2002)

NARRATIVE

Since its foundation in 1993, the company has SPECCHIO PIUMA supplies consultancy services to
used trade mark protection for creating a solid companies in the field of design, production and
corporate identity and a strong external image. sales. Based in Aprilia, near Rome, it successfully
Trademark protection has been used for the combines innovative technology with artisan
company’s logo, name, and for the commercial production. Its intelligent and innovative solutions
name of new products. Such trademarks have are quickly appreciated by those who have been
given SPECCHIO PIUMA the opportunity to create unable to find their particular needs satisfied by
and maintain a strong corporate identity inside its available products. In close contact with the
"High Value” market niche. customers and using modern technologies applied
to artisan’s craftsmanship, the enterprise provides
custom-made products that successfully fulfil the
specific needs of all clients.

36
 GOOD PRACTICE GUIDE

The importance of patent protection and

technology watch for competitiveness

Prior research and business plans are always carried Patent protection is very important for innovative,
out. All the initiatives developed are followed by a high technology solutions. In the case of
strong marketing action. In relation to cost control incremental innovations, when time-to-market
and marketing opportunities, joint ventures and becomes more important than technology issues,
partnerships are always well evaluated. patent protection may have some disadvantage.
Making more accessible the strategic technical
The technological environment is dynamic, information of the patent, a third party could easily,
monitoring and identifying active competitors with appropriate modifications or alterations,
through participation in international events, minimize the importance of the invention itself.
exhibitions, marketing enquiries and public Therefore, especially when design intensive
relations. Survival in the competitive marketplace is solutions are involved, the enterprise prefers to use
assured by technical innovation, implementation of the copyright protection.
company services, partnerships and joint ventures.
In particular, the enterprise has a strong innovation A professional structure is utilised to manage all the
policy. The strategy applied is strictly combined IP aspects and procedures. From the beginning,
with customized solutions developed and supplied every single IP action will have been evaluated with
by the company. Any "out-of-standard" activity is professional consultants.
regarded as R&D. The other activities in the R&D
area are strictly related to the implementation of The company integrates its commercial information
quality and innovation for the standard products with the results of its innovation and consequently
developed during the past ten years. uses IP commercialisation to highlight the identity
of its products.
The discretion of the employees and the experience
acquired in the past allow a good interface with the
customers involved in the supply chain. In case of
internal R&D, confidentially is assured by the
limited size of the internal workforce.

The company's goal is to preserve the level of

innovation reached with the implementation of IP
protection measures.

Providing original customized solutions, the

company has always used trade mark for specific
products or solutions developed.

SPECCHIO PIUMA has obtained 2 International

patents, protecting original products, and it plans
to continue using IP to protect the results from
different R&D contracts carried out in co-operation
with industrial partners or customers.

37
 INTELLECTUAL PROPERTY

ENFORCING IP RIGHTS

Remember that although intellectual property rights are granted by the state, it is up to the individual
owner to ensure that his/her rights are not being infringed and if they are, to take appropriate action.

Enforcement of IP rights is necessary because Good Practice

people do not respect the rights of others. • You should regularly carry out searches of new
Infringers will erode your hard-won market share registrations for patents, trade marks and designs
and poor quality imitations will quickly ruin your for any that may conflict with your own. Pending
brand reputation in the marketplace. If someone published patent applications can also be searched.
infringes your IP rights, i.e. uses your material
without your permission (and where there is no • In order to reduce the chances of people using
rule of law that might make such use legal), it your IP without your permission, you can make
would be open to you to seek a remedy in law by sure you bring the existence of IP to their notice
taking a case to court, - for example, seeking in any dealings with them. If you put products or
injunctions and damages. material protected by IP into the public domain,
e.g. by publishing or selling goods you should
It may also be possible to take opposition consider marking these goods in such a way as to
proceedings before an Industrial Property Office indicate your rights. For example on products
where the national law provides that such offices marketed under a registered trade mark, use ®
can act in a quasi-judicial role possibly as an to indicate this fact.
alternative to the courts. The possibilities for
opposition can exist before and after • A patent confers upon its holder, for a limited
grant/registration and arise particularly in relation period, the right to exclude others from
to registrable rights such as patents and trade exploiting (making, using, selling, importing) the
marks because the registration can be disputed. patented invention except with the consent of
the patentee. If you become aware of any
A less costly and more practical approach may be infringement of your patent you should
to seek to avoid litigation by negotiating a solution immediately seek legal advice as to the most
to illegal use with the infringer. Being able to appropriate action to take.
demonstrate your legal right to the IP in question
through ownership of a patent, registered design • If you have a design registration, you should
or registered trade mark etc. will strengthen your consider in conjunction with your legal advisor
position. A well-drafted patent will often be what opportunities exist for legal redress against
enough to deter potential infringers. others who subsequently produce articles with
the same or very similar appearance to your
article.

• Similarly, be aware that your trade mark may be

your most valuable asset. You may have invested
in devising a trade mark to advertise and
promote a particular product or service and to
appeal to a particular market. Take action against
the unauthorised use of your mark because
failure to do so may mean that you will lose
business and goodwill and the value of your
brand may be diluted or lost.

38
 GOOD PRACTICE GUIDE

ENFORCING IP RIGHTS

• If you are a copyright owner then it would be • Be aware that if some IP rights are intentionally
prudent to regard your copyright material as an infringed on a commercial scale, there may also
item of property and to deal with it in a business- be the possibility of prosecuting that person for a
like way. Copyright owners should always keep criminal offence. The words counterfeiting,
dated copies of their works (for example, piracy and bootlegging are often used to
manuscripts and tapes) and copies of any letters describe this criminal behaviour. Where criminal
submitting their work to others. Being able to offences may have been committed, an IP owner
produce evidence of this kind, which proves your may pursue the matter directly as a private
authorship, is essential to enforce your right. prosecution, or report the matter to the relevant
government authority such as the police or
• The best approach to enforce your rights must be customs. The latter may be in a position to take
carefully considered in consultation with legal or action to seize the infringing goods.
other professional advisers. Law societies in your
country can give you a list of attorneys or Further useful information on the enforcement of
barristers and patent or trade mark agents can intellectual property rights, – in particular by SMEs,
also give advice and assistance. can be obtained from the WIPO website:
http://www.wipo.int/sme/en/ip_business/ip_disp
• You should endeavour to assess the costs of ute/dispute_resolution.htm
winning or losing a court action. The cost could
be calculated in terms of the time that may be
taken to obtain such a decision, the legal fees
that you would have to pay and the direct and
indirect consequences in the event of a negative
decision. You should also evaluate the chances of
winning your case, the amount of compensation
and damages that you can reasonably expect to
get from the infringing party as well as the
likelihood and extent of reimbursement of your
legal costs. It may be possible to resolve matters
without recourse to legal proceedings in court. It
may be possible to negotiate a mutually
satisfactory settlement or use arbitration or
mediation. These dispute resolution mechanisms
are often less costly and time-consuming than
court proceedings.

• Enforcing your IP rights by engaging in legal

action in court can be a costly exercise. It is
possible to obtain insurance, which will cover the
cost of possible enforcement action – though it
can be expensive. Nevertheless, you should
explore the possibility of obtaining insurance
cover.

39
 INTELLECTUAL PROPERTY

C O N S U LT E X P E RT S

Seek experts’ advice and help IP Offices

IP law is a complex area, and handling IP The role of a national IP Office is primarily to
applications is generally a task for experts. An provide IP protection to those who seek it. This has
applicant may, if she or he wishes, conduct to be done in a way that ensures that an applicant
proceedings with the IP office directly. It must be deserves the protection sought – i.e. that there is
remembered however that, particularly in the case genuinely innovative material present. It thus
of patents, it is the actual wording of the serves the interests of inventors and businesses
specification that determines the scope and with respect to their creations and the latter with
strength of the monopoly obtained and hence the their corporate, product and service identities. An
actual value of the IP. Thus decisions made in the IP Office has several ancillary functions. These
course of drafting the patent specification and include advising and assisting Government in
pursuing it through the examination process could matters involving intellectual property and the
have major business and investment implications in preservation, classification and dissemination of IP
the future. An applicant is therefore strongly information, thus encouraging and assisting
advised to instruct a professional representative, innovation and scientific and technical advances.
who has the necessary technical and legal skills to
prepare the application and pursue it through the In discharging its duties, an IP Office will
various stages of the grant procedure. • examine applications and grant IP rights when
applicants are entitled to them,
This is of course a general principal and each • publish and disseminate IP information
individual case can have different considerations. • record assignments, licences etc..
However where decisions which could have major • maintain search files of national and international
business and investment implications are being IP rights and a search room/library for public use
made (and this will often be the case with IP) it in examining issued rights and records,
would be foolish to proceed without the best • supply copies of IP rights and official records to
advice possible. Saving costs by not using the public,
professional advice at all stages may well prove to • offer a search service to check whether a proposed
be a false economy. application is similar to another already filed or
granted. This can save time and reduce the
Of course if a company has a substantial IP possibility of infringing someone else’s IP right.
portfolio or if it is feasible for a consortium of
companies to work together, the best solution It must of course be realised that smaller offices will
could be the presence of an expert on their staff, not necessarily have the resources to carry out all of
partly or fully dedicated to IP issues. these functions (particularly those relating to
search services) at a substantial level.

An IP Office will be pleased to give what general

assistance and advice it can on the subject of IP in
broad terms. It does not however normally give
advice on what may be the best course of action
for an applicant to adopt with regards to any
particular IP application. In particular, for example,
the office cannot undertake to prepare a
specification on behalf of a patent applicant. It may
however be possible for experienced IP Office
Examining Staff to undertake a variety of searches
independently of the existence of an application
but which might be of assistance to the applicant.

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 GOOD PRACTICE GUIDE

C O N S U LT E X P E RT S

IP Information Centres/PATLIB (Patent Library)

An IP Office will always answer basic queries, Information Centres specifically dealing with IP
supply details of Office procedures and fees or exist in some countries. Their role is to provide
information about the progress of a particular advice and information about IP protection,
application. Normally the Office will have an utilization and licensing, as well as details of any
Information Desk open to the public to deal with financial supports available. Many information
such queries. All staff members are bound by strict centres are linked into PATLIB.
rules of confidentiality. IP Offices also publish
guides for applicants which contain fuller details of PATLIB is a network of centres located throughout
grant procedures. Europe. It was created by the National IP Offices of
the member states of the European Patent
Organization.
IP Attorneys/Agents
As mentioned above, an IP applicant can conduct The IP information is disseminated via the IP
proceedings directly with an IP Office. It is normally Offices in the contracting states and information
prudent however to engage the services of an IP centres associated with them. These institutions,
Attorney/Agent to do so on one’s behalf. These are which work in the language of the countries
persons specially trained and professionally concerned, provide IP information services,
qualified in all aspects of IP law. He or she will especially to small and medium-sized enterprises,
advise on all aspects of IP law, will draft and file private inventors and academics. Through co-
specifications, correspond with the IP Office on operation with the IP Offices of the member states,
behalf of the applicant and will represent him/her the PATLIB network has grown significantly during
during the grant procedure. After the grant of an IP recent years. All activities of any PATLIB centre
right, the attorney can also represent the owner in have to be established in agreement with the
any opposition raised against it by a third party. As respective National IP Office. As soon as an
with other legal advisers, IP attorneys are bound by information centre is officially recognized by the
rules of client confidentiality. National IP Office it becomes part of the PATLIB
network. It is entitled to benefit from measures
An IP Office will sometimes supply a listing of provided by the EPO to support the national IP
qualified persons registered to act as attorneys information infrastructure.
before it or this information can be obtained through
appropriate directories or law societies. The Office The main aim of the PATLIB network is to enable IP
cannot recommend a particular firm or individual. information centres to communicate and to work with
This choice rests solely with the applicant who then each other in a feasible and convenient way. Thus
grants a power of attorney in the normal legal way they can plan and undertake activities which promote
and may revoke it at any stage. the diffusion of an IP culture through participation in
trade fairs and organization of workshops.

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 INTELLECTUAL PROPERTY

C O N S U LT E X P E RT S

IRC (Innovation Relay Centre) IP National Assistance Platforms (LIIP Project)

This is a network of centres in EU countries partly The LIIP Project, which has produced this guide,
funded by the EU Innovation Programme. The IRC also provides for a framework, called "National
is a direct link to technology and innovation across Assistance Platforms” (NAPs) created between
the EU. The primary objective is to promote the some of the partners of the project . The objective
spirit of innovation in European companies and of this network is to combine their efforts in order
research institutions, especially in SMEs. They are to make information and assistance on IP readily
staffed by professionals with experience in industry, available through these platforms whenever it is
business and technology. required. Each NAP is composed of a national
patent office or a similar organisation and
Among the services of the centres is assistance with recognised institutions at local level, experienced in
technology transfer. Each centre can help, through developing activities in the field of IP and/or in
the IRC network of regional offices, in identifying helping local companies to focus on innovation
potential partners or licensees in other European issues.
regions. They can also advise on the exploitation
strategy for research results and the IP generated. The objective of a National Assistance Platform is
Where appropriate, the centres can also assist with to provide an efficient information service on
negotiations and in the actual implementation of a national and international IP matters to
technology transfer agreement. organisations and individuals and allow a better use
of the national patent offices’ knowledge and
They also provide training workshops in these areas know-how.
and in some cases financial support for relevant
activities. A National Assistance Platform will offer the
following types of services:
• Answering technical enquiries,
• Providing IP information,
• Promoting IP matters,
• Providing a contact list of institutions and
experts.

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 GOOD PRACTICE GUIDE

The importance of copyright and

patent protection in start-up business

■ C ASE S TUDY K LEEREX I NTERNATIONAL LTD .

COMPANY DETAILS
Firm Kleerex International Ltd.
Location Ireland
Business sector Plastics Industry
Activities Manufacture and supply of products for the display
of goods in retail outlets e.g. shelving systems,
racks, point of sale items etc.
Number of employees 105 persons
Annual turnover 24m € p.a.

NARRATIVE

The company founder had a business designing copying is normally rife. Kleerex was the first
display systems for retail outlets. He would design company to file patent applications and actively
them to order, have them made up (usually in police them. Other competitors who might have
acrylic plastic) and fit them. He found that some considered copying held back when they heard of
large customers were requesting several units for the impending patent suit. Also distributors and
different outlets. He also became aware that customers were wary of handling the allegedly
competitors appeared to be using some of his ideas infringing product for fear of being drawn into the
in units that they designed. He sought specialist legal action.
advice from IP experts. He was advised that he
could have some redress under copyright but that Eventually a legal device was agreed by Kleerex and
it was possible that some of his designs could the alleged infringer so that the action did not
qualify for patent protection. Patents were not actually go to court. However, although the action
widely used in this industry. never came to court and the competitor never
completely desisted, the respite obtained by the
He decided to set up a manufacturing company to legal exchanges allowed Kleerex the time to become
make and sell a range of display products and to well established in the market in terms of product
protect them using the patent system. He started quality, customer loyalty and product range.
with about five employees and two main products,
one of which quickly became very successful. From a small start-up it is now a substantial
Before the patents were granted, some copies of company (see turnover) selling and products and
this product appeared in the marketplace. An licensing its technology. IP is a vital part of the
action on copyright against a UK company was company strategy. It has an R&D programme
commenced and was successful in that the copying expanding its product range, which includes IP
ceased without the need to go to court. protection for new products. The company founder
has now sold his interest in the company and
A more substantial competitor commenced retired on the considerable income he received.
manufacture and sale of a product very similar to The company believes strongly that without the
the leading product in the Kleerex range. A patent patent protection in its start-up phase, there would
infringement action was commenced. As is normal have been many copiers and it would not have
in such cases, the alleged infringer sought to have survived.
the Kleerex patent declared null and void. Legal
exchanges between the companies went on for
some considerable time (about two years). The
shopfitting industry is notoriously competitive and

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ANNEXES

ANNEX A:
USEFUL NATIONAL CONTACT ADDRESSES (IN COUNTRIES PARTICIPATING IN THE LIIP PROJECT)

■ LUXEMBOURG

Patents, Designs, Trade Marks and Copyright

Ministère de l’Economie Partner of the Project
Direction de la Propriété Intellectuelle
19-21, Boulevard Royal • L-2914 Luxembourg
Tel: +352 478 4156
E-mail: dpi@eco.etat.lu
Website: http://www.eco.public.lu/activites/direction_propriete/index.html

The Benelux Designs Office

Bordewijklaan 15 • 2591 XR Den Haag • The Netherlands
Tel: +31 70 349 11 11
E-mail: info@bbtm-bbdm.org
Website: http://www.bbtm-bbdm.org

The Benelux Trademarks Office

Bordewijklaan 15 • 2591 XR Den Haag • The Netherlands
Tel: +31 70 349 11 11
E-mail: info@bmb-bbm.org
Website: http://www.bmb-bbm.org

Strategic information management

Centre de Veille Technologique Partner of the Project
Centre de Recherche Public Henri Tudor
66, rue de Luxembourg • B.P. 144 • L-4002 Esch-sur-Alzette
Tel: +352 54 55 80 600
E-mail: cvt@tudor.lu
Website: http://www.veille.lu
http://www.brevet.lu (patent portal)

Innovation Relay Centre

Agence nationale pour la promotion de l'innovation et Partner of the Project
de la recherche
7, rue Alcide de Gasperi • L-1615 Luxembourg
Tel: +352 43 62 63 1
E-mail: luxinnovation@luxinnovation.lu
Website: http://www.luxinnovation.lu

■ SPAIN

Patents, Designs and Trade marks

Oficina Española de Patentes y Marcas Partner of the Project
1, Panama Street • E-28071 Madrid
Tel: +34 91 79 25 804
E-mail: informacion@oepm.es
Website: http://www.oepm.es

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Copyright
Subsecretaria – Secretaría general tecnica
Subdirección General De Propriedad Intelectual
Plaza del Rey, 1, 1a Planta • 28071 Madrid
Tel: +34 91 701 70 00
E-mail: propriedad.intellectual@sqt.mcu.es
Website: http://www.mcu.es/Propiedad_Intelectual/indice.htm

Technology development organisation

Fundacion Observatorio de Prospectiva Tecnológica Industrial Partner of the Project
10, Pl. Juan Bravo • E-28006 Madrid
Tel: +34 91 78 10 076
E-mail: anarodriguez@opti.org • anamorato@opti.org
Website: http://www.opti.org

■ GREECE

Patents and Designs

Industrial Property Organisation Partner of the Project
5, Pantanassis Str • GR-151 25 Paradissos Amaroussiou • Athens
Tel: +30 210 618 35 00
E-mail: info@obi.gr
Website: http://www.obi.gr

Trade marks
Ministry of Development - General Secretary of Commerce
Kanningos sq. • 2nd floor • GR-10181 Athens
Tel: +30 210 38 40 790
E-mail: Fotopoulou@gge.gr
Website: http://www.gge.gr

Copyright
Intellectual Property Organisation
5 Metsovou Str. o GR-106 82 Athens
Tel.: +30 210 82 53 715
Website: http://www.culture.gr

Technology Transfer & Support Services in IP

EDAP SA Partner of the Project
Management Company of the Science and Technology Park of Crete
P.O.Box. 1447 • GR-71110 Heraklion • Crete
Tel: +30 2810 39 19 00 -5
E-mail: saitakis@stepc.gr
Website: http://www.stepc.gr

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 INTELLECTUAL PROPERTY

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Thessaloniki Technology Park / Partner of the Project

Management & Development Corporation S.A. (TTP/MDC S.A.)
P.O.Box 328 • 6th km Harilaou • Thermi Road
GR-57001 Thermi-Thessaloniki
Tel: +30 2310 498 200
E-mail: park@thestep.gr
Website: http://www.thestep.gr

■ IRELAND

Patents, Designs, Trade marks and Copyright

Irish Patents Office Partner of the Project
Government Buildings
Hebron Road • Kilkenny • Ireland
Tel: +353 56 77 20111
E-mail: patlib@entemp.ie
Website: http://www.patentsoffice.ie

Enterprise Development Agency

Enterprise Ireland Partner of the Project
Glasnevin • Dublin 9 • Ireland
Tel: +353 1 808 2000
E-mail: michael.sharp@enterprise-ireland.com
Website: http://www.enterprise-ireland.com/english.asp

■ ITALY

Patents, Designs and Trade marks

Ministero delle Attività Produttive Partner of the Project
Direzione Generale Sviluppo Produttivo e Competitività
Ufficio Italiano Brevetti e Marchi
19, Via Molise • I-00187 Roma
Tel.: +39 06 47 05 30 54
e-mail: sala.pubblico2@minindustria.it
Website: http://www.attivitaproduttive.gov.it

Copyright
Ministero per i Beni e le Attività Culturali
Segretariato Generale – Servizio XI -
Diritto d’Autore e Vigilanza S.I.A.E
Via della Ferratella in Laterano, 51 • I-00184 Rome
Tel.: +39 06 77 70 12 03/08
E-mail: dirittoautore@beniculturali.it
Website: http://www.beniculturali.it

Enterprise development Agency

ABCnet Servizi per l’Impresa s.r.l. Partner of the Project
Via Pietro de Francisci,47 • I-00165 Roma
Tel: +39 06 97 84 29 00
E-mail: alrami@abcnet.it
Website: http://www.abcnet.it

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■ MULTIMEDIA DEVELOPER

Windmill Lane (WLL) Partner of the Project

4 Windmillane • Dublin 2 • Ireland
Tel: +353 1 6713444
E-mail: info@windmilllane.com
Website: www.windmilllane.com

A NNEX B:
O THER U SEFUL ADDRESSES

International Organizations:

World Intellectual Property Organization (WIPO) Eurasian Patent Organization (EAPO)

34, chemin des Colombettes • CH-1211 Genève Maly Cherkassky per 2/6, Moscow, 109012,
Tel: +41 22 338 9111 Russian Federation
Website: http://www.wipo.org Tel: +7 95 928 56 12
E-mail: info@eapo.org
European Patent Office (EPO) Website: http://www.eapo.org
Erhardtstrasse 27 • D-80331 Munich
Tel: +49 89 23 99-0 World Trade Organization (WTO)
Website: http://www.european-patent-office.org Centre William Rappard
154, Rue de Lausanne • CH-1211 Geneva 21
Commission of the European Communities Tel: +41 22 739 51 11
200, rue de la loi • B-1049 Bruxelles E-mail: enquiries@wto.org
Tel: +32 2 299 11 11 Website: http://www.wto.org
Website: http://europa.eu.int
International Association for the Protection of
Office for the Harmonization in the Internal Intellectual Property (AIPPI)
Market (OHIM) Tödistrasse 16 o P.O. Box • CH-8027 Zurich
Trade marks and Designs Tel: +41 1 280 58 80
Apartado de correos, 77 • E- 03080 Alicante E-mail: mail@aippi.org
Tel: +34 965 138 800 Website: http://www.aippi.org
Website: http://oami.eu.int
Community Plant Variety Office (CPVO)
The Institute of Professional Representatives P.O BOX 62141 o 3, Boulevard Maréchal Foch
before the European Patent Office (EPI) F-49021 ANGERS Cedex 02
P.O. Box 260112 • 80058 München Germany Tel: +33 2 41 25 64 00
Tel: +49 89 201 70 80 E-mail: cpvo@cpvo.eu.int
E-mail: info@patentepi.com Website: http://www.cpvo.fr
Website: http://www.patentepi.com
International Federation of Inventors' Associations
African Regional Industrial Property Organization (IFIA)
(ARIPO) P.O. Box 299 o CH-1211 Geneva 12
P. O. Box 4228 • Harare • Zimbabwe Fax: +41 22 789 30 76
Tel: +263 4 79 40 65 6 E-mail: invention-ifia@bluewin.ch
E-mail: info@aripo.wipo.net Website: http://www.invention-ifia.ch
Website: http://www.aripo.wipo.net

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European Communities Trade Mark Association Patent and trade mark databases:
(ECTA)
Bisschoppenhoflaan 286 • Box 5 Free patent database provided by
B-2100 Deurne-Antwerpen EPO ESPACENET
Tel: +32 3 326 47 23 Website: http://ep.espacenet.com
E-mail: ecta@ecta.org
Website: http://www.ecta.org Various free IP databases hosted by
WIPO INTELLECTUAL PROPERTY DIGITAL
International Trade Marks Association (INTA) LIBRARY (IPDL)
1133 Avenue of the Americas • New York Website: http://ipdl.wipo.int
NY 10036 USA
Tel: +1 212 768 98 87 Commercial patent databases
E-mail: info@intra.org DELPHION INTELLECTUAL PROPERTY
Website: http://www.inta.org NETWORK
Website: http://www.delphion.com
The Association of European Trade Mark Owners
840, Melton Road • Thurmaston • Lekester Various commercial IP databases
LE4 8BN • United Kingdom DIALOG
Tel: +44 116 264 0080 Website: http://www.dialog.com
E-mail: admin@marques.org.uk
Website: http://www.marques.org Various commercial IP databases
(patent, trade mark & design)
IP Information: QUESTEL-ORBIT Intellectual Property Group
Website: http://www.questel.orbit.com
IPR-Helpdesk
President Building • 106, avenue Louise Patent and scientific information
B-1050 Brussels DERWENT
Tel: +32 2 649 53 33 Website: http://www.derwent.com
E-mail: ipr-helpdesk@global-eu.com
Website: http://www.ipr-helpdesk.org The Scientific & Technical Information Network
STN INTERNATIONAL
Community Research and Development Website: http://www.stn-international.de
Information Service (CORDIS)
B.P. 2373 • L-1023 Luxembourg American Patent and Trade mark databases (free)
Tel: +352 44 10 12 22 40 USPTO – UNITED STATES PATENT AND TRADE
E-mail: helpdesk@cordis.lu MARK OFFICE
Website: http://www.cordis.lu/en/home.html Website: http://patents.uspto.gov

Intellectual Property network Commercial patent and trade mark information

PatentCafe.com, Inc. services
441 Colusa Avenue • Yuba City • CA 95991 USA MICROPATENT'S PATENTWEB
Tel: +1 530 671 0200 Website: http://www.micropat.com
Website: http://www.patentcafe.com
OHIM – Community trade mark database (free)
Eldis Resource Center (Intellectual Property Website: http://oami.eu.int/search/trademark/la/
Rights) en_tm_search.cfm
Tel: +44 1273 87 73 30
E-mail: eldis@ids.ac.uk
Website: http://www.eldis.org/ipr

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A NNEX C:
G LOSSARY OF TERMS

Abstract Classes (of trade-marks)

A brief summary of an invention contained in a Goods and Services are divided into different
patent application. The abstract is purely for classes according to the NICE international
technical information purposes and it has no classification system. There are presently 34 classes
relevance as regards interpreting the scope of the of goods and 11 classes of services.
protection sought.
Community Patent
Application A patent granted for the whole European Union -
The formal request for the grant or registration of Community patents do not yet exist, but there is a
an intellectual property right. proposal under discussion to establish them.

Applicant Community Trade Mark

The person or corporation that applies for a patent The Office for Harmonisation in the Internal
with the intent to use, manufacture or license the Market (OHIM), which has its seat in Alicante
technology of the invention. (Spain), was set up by a Regulation of the Council
of the European Union on 20 December 1993. Its
Assignment task is to register Community trade marks, which
The transfer of an intellectual property right by one are legally enforceable and enjoy uniform
person (the assignor) to another (the assignee). protection throughout the territory of the
European Union. Whereas, the national trade mark
Author offers protection limited to the market of a single
The creator of an artistic, literary, musical or country, the Community trade mark offers
dramatic work. protection for the entire market within the
European Union.
Background of the Invention
A subsection of a patent application detailing the Copyright
complete history of the relevant technology or art. Copyright is a legal term describing rights given to
creators for their literary and artistic works. The
Claims kinds of works covered by copyright include:
The part of a patent application, which defines the literary works such as novels, poems, plays,
matter for which protection is sought in terms of its reference works, newspapers and computer
technical features. The claims define the legal programs; databases; films, musical compositions,
scope of a patent. What falls within that definition and choreography; artistic works such as paintings,
is protected by the patent; anything outside it, is drawings, photographs and sculpture; architecture;
not protected. They must be clear and concise and and advertisements, maps and technical drawings.
be supported by the description. An Independent
Claim is a claim that has no dependency upon Description
another claim within an application. A Dependent The part of a patent application that contains
Claim is a claim that refers back to a previous claim. instructions that would inform a skilled person how
It defines an invention that is narrower in scope to make or use the invention. The description
than that in the previous claim. forms the basis for the claims.

Drawings
Illustrations explaining an invention contained in
the structure of a patent application.

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ANNEXES

European Community (EC) states to the European Patent Convention (EPC),

Consolidated version of the Treaty on European which was signed in Munich on 5 October 1973
Union and of the Treaty establishing the European and entered into force on 7 October 1977. By a
Community: single patent application, the EPO grants a
http://europa.eu.int/eur-lex/en/dat/2002/c_325/ "bundle” of national patents in respect of the
c_32520021224en00010184.pdf contracting States, which the applicant designates.
Further information is available at
The Treaty establishing the European Community http://www.european-patent-office.org.
(as amended by the Treaty of Amsterdam)
http://europa.eu.int/eur-lex/en/dat/2002/c_325/ Examination
c_32520021224en00010184.pdf The study of a patent application in the governing
patent office, by an examiner, to determine
European Patent Convention (EPC) whether or the invention described therein can be
The European Patent Convention (EPC) came into patented. The major consideration the examiner
force in 1977 and established the European Patent addresses is the novelty and utility of the invention,
Office (EPO). The main advantage and purpose of among other things.
the EPC is that it allows patent rights to be
obtained in any one or more of the EPC contracting Examiner
states by making a single European patent An officer of a patent office whose purpose is to
application. This may be considerably cheaper than evaluate the patentability of an invention claimed
making a separate "national” application in each in a patent application.
country. When granted, a European patent has the
effect of a national patent in each of the countries Field of Invention
designated. European patent applications may be The definition of the specific field or art to which an
filed either with national patent office or directly invention belongs.
with The Hague Branch of the EPO.
Further information on application forms, costs and Industrial Designs
procedures are available from An industrial design is the ornamental or aesthetic
http://www.european-patent-office.org appearance of an article. The design may consist of
three-dimensional features, such as the shape or
European Patent surface of an article, or of two-dimensional
The granted European patent is a "bundle” of features, such as patterns, lines or colour.
national patents. By filing a single application in one
of the three official languages (English, French and Infringement
German) it is possible to obtain patent protection in Infringement occurs when someone willingly or
some or all of EPC contracting states. In most unwillingly uses your intellectual property without
contracting states, for the patent to take effect it your permission.
must be validated, for example, if necessary, a
translation of the specification into an official Intellectual property
language of that state has to be filed with the Creative ideas and expressions of the human mind
national patent office. These matters are governed that have commercial value and receive legal
by national law. Further information on application protection in the form of a property right. Patents,
forms, costs and procedures are available at trade marks, designs and copyright are the main
http://www.european-patent-office.org. intellectual property rights. Intellectual property is
divided into two categories: Industrial property,
European Patent Office (EPO) which includes inventions (patents and utility
Intergovernmental organisation (not dependant of models), trade marks, industrial designs, and
the EU) whose principal function is the granting of geographic indications of source; and Copyright,
European patents, on the basis of a uniform law which includes literary and artistic works such as
and centralised procedures, for the contracting novels, poems and plays, films, musical works,

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artistic works such as drawings, paintings, Madrid Agreement/Protocol

photographs and sculptures, and architectural An international system, administered by the World
designs. Rights related to copyright include those Intellectual Property Organization (WIPO), which
of performing artists in their performances, allows the owner of a trade mark registered in one
producers of phonograms in their recordings, and country to apply for protection of that trade mark in
those of broadcasters in their radio and television other countries within the system. Further
programs. information on application forms, costs and
procedures are available from http://www.wipo.org.
Invention
Every new and useful machine, article, process or Moral rights
any new use of the same that is described and/or Rights an author retains over the integrity of a
claimed in a patent or patent application. work and the right to be named as its author even
after sale or transfer of the copyright.
Inventive step
Inventive step means that the invention is not Novelty
obvious to someone with knowledge and Novelty is a requirement for patentability. The
experience in the technological field of the invention must not form part of the state of the art.
invention The state of the art comprises everything made
available to the public, in your country or abroad,
Inventor by means of written or oral description, by use or
Anyone whose involvement and contribution was any other way, before the filing of the patent
essential to the development of the invention. The application.
one who is first to conceive of a particular
invention and who diligently works to convert this Office For The Harmonization In The Internal
conception into a tangible physical property. Market (OHIM)
Community institution, which role is to register
Know-How Community trade marks and designs. Trade marks
Confidential information that enables the or designs are thus protected throughout the
accomplishment of a particular task or to operate a territory of the European Union in a single stage.
particular device or process. Further information is available at http://oami.eu.int.

Lapse. Paris Convention For The Protection Of Industrial

A term used to describe when a patent is no longer Property
protected in a country or system due to failure to An international treaty on intellectual property
pay renewal fees. Often, however, the patent can concluded in 1883 and updated several times that
usually be reinstated within a limited period. provides common rules between the State parties
for the administration of intellectual property
License rights. Further information is available at
A contractual agreement giving written permission http://www.wipo.org.
to another party the right to use an invention, a
creative work or a trade mark. Patent
A government grant that gives an inventor and/or
Licensor an applicant the right, for a limited period, to
The party granting rights under a license prevent others from making, using or selling an
agreement. invention without the owner's permission. In return
for this right, the applicant must disclose how the
Licensee invention works.
The party obtaining rights under a license
agreement.

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Patentability Plant Breeders' Denomination

The ability of an invention to satisfy the legal Form of intellectual property designed specifically
requirements for obtaining a patent, including to protect new varieties of plants. It is a right to the
novelty. control of the multiplication and sale of
reproductive material for a particular plant variety.
Patent Application
The patent document as filed, including a Preliminary Search
specification describing the invention, any A search through intellectual property records
necessary drawings, claims legally defining the before submitting an application for registration in
limits of the rights claimed, and the filing fee. order to verify whether a patent, trade mark or
industrial design has been previously applied for or
Patent Family registered. The search may disclose conflicting
The basic patent and all equivalent patents with registrations, and show that the application process
the same priority in more than one country. would be in vain.

Patent Pending Prior Art

A "Patent Pending" notice on a product informs Existing technological information against which an
others that an application for a patent has been invention or design is judged to determine if it is
filed, and that legal protection (including novel and can thus be registered. Prior art
retroactive rights) may be forthcoming. references include documentary sources such as
patents and publications from anywhere in the
Patent Cooperation Treaty (PCT) world, and non-documentary sources such as
The Patent Cooperation Treaty is an international things known or used publicly.
treaty administered by the WIPO, which was
concluded in Washington in 1970 and came into Priority
force in 1978. The PCT provides a system which by The Paris Convention for the Protection of
a single international application in one of the Industrial Property provides that once you file an
contracting states allows for the designation of application in one country party to the Convention,
over 100 other countries in which one wishes to you are entitled to claim priority for a period of
have a patent: - the applicant designates those twelve months for patents, six months for trade
countries in which a patent is desired and in due marks and industrial designs and the filing date of
course the relevant national patent authority grants that first application is considered the "priority
a patent. The filing of a single international patent date." Therefore, when you apply for protection in
application has the same effect as national other member countries (of the Paris Convention)
applications filed in the designated countries. during those months, the filing date of your first
Applicants wishing to designate Ireland, Italy, application is considered to have "priority” over
Greece must select the European Patent (EP) other applications filed after that date. In such a
option. Further information on application forms, case, you still succeed in being the first-to-file in
costs and procedures are available from other member countries, even if there are other
http://www.wipo.org applications filed before the filing date of your
application in those countries.
Patents of Addition or of Modification
Granted for inventions, which constitute a Renewal fees
modification of another invention, already Payments that must be made by the applicant to keep
protected by a patent (main patent). They follow a patent, trade mark or industrial design in force.
the fate of the main patent and expire with it. No
annual renewal fees are to be paid for the patents
of addition/modification.

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 GOOD PRACTICE GUIDE

ANNEXES

Search report. Trade Mark

The list of citations of published prior art A trade mark is a distinctive sign, which identifies
documents prepared by a patent examiner when certain goods or services as those produced or
determining the novelty of a patent application. provided by a specific person or enterprise. They
may be made up of two- or three-dimensional
Semiconductor Topographies signs such as letters, numbers, words, shapes, logos
Special intellectual property protection for the or pictures. The period of protection varies, but a
layout design of a semiconductor chip or its trade mark can be renewed indefinitely beyond the
topography. time limit on payment of additional fees.

Specification Utility Model

The description, drawings and claims of an Type of protection for an invention for which the
invention which are prepared in support of a patent requirements are lower than for a patent.
application.
World Intellectual Property Office (WIPO)
Supplementary Protection Certificate An intergovernmental organisation, with its
A supplementary protection Certificate (SPC) extends headquarters in Geneva (Switzerland), responsible
the duration of the exclusive patent right solely in for promoting of the protection of intellectual
respect of medicines or plant protection products. property throughout the world by encouraging co-
The SPC comes into force when the relevant patent operation between nations.
expires and lasts for up to a maximum of 5 years.

A NNEX D:
IP-M ULTIMEDIA T OOLBOX CD-R OM
BRIEF INTRODUCTION

The IP-Multimedia Toolbox, produced on CD- 3 An interactive IP auditing part that evaluates the
ROM, contains interactive general and country- IP practices of your organisation. The objective
specific information material on IP. It also includes of the audit tool is to help your organisation in
an audit-tool that evaluates IP practices of matters of
organisations. - knowing if your IP assets has been recognised
as such and appropriately protected,
The IP-Multimedia Toolbox includes three main - decisions whether protection is necessary,
parts: - IP assets management.
1 IP Information of general interest for This audit tool does not provide an evaluation of
organisations, especially SMEs, as for individuals. your IP, but it provides you with information
In this part you will find complementary necessary in order to undertake a valuation of your
information to the Good Practice Guide. IP assets.
2 IP Country specific information. This part
highlights specific legal and technical aspects of
IP issues concerning Greece, Ireland, Italy,
Luxembourg and Spain. It will contain links to
local professionals, institutions and organisations,
which are able to provide concrete help in IP and
patent matters to innovators and especially
SMEs.

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 INTELLECTUAL PROPERTY

FOREWORD 3
INTRODUCTION 4

1. BE AWARE OF YOUR INTELLECTUAL CAPITAL! 5

2. KNOW WHAT INTELLECTUAL PROPERTY IS 8

CASE STUDY TMG S.A. 12

An intellectual property strategy adopted by a sceptical SME

3. PROTECT YOUR INTANGIBLE ASSETS 14

4. CHOOSE THE BEST PROTECTION FOR YOUR 16
INTELLECTUAL ASSETS

CASE STUDY ENTERPRISE S. 20

Recognition of the importance of intellectual property by a
start-up business manager

5. OBTAIN PROTECTION 22
6. INTEGRATE IP IN YOUR STRATEGY 28

CASE STUDY HELMED SPINE IMPLANTS S.A. 30

The benefits of patent protection in a very competitive
market

7. USE IP INFORMATION 32
8. CREATE VALUE WITH IP RIGHTS 34

CASE STUDY SPECCHIO PIUMA S.A.S. 36

The importance of patent protection and technology watch
for competitiveness

9. ENFORCING IP RIGHTS 38
10. CONSULT EXPERTS 40

CASE STUDY KLEEREX INTERNATIONAL LTD. 43

The importance of copyright and patent protection in start-
up business

ANNEXES 44

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