TAPOINTEL: Managing innovation in an SME

Every day there are many good ideas and research results that are put aside due to inappropriate innovation strategies.

This case study, based on the direct experience of Tapointel S.L., demonstrates how an SME can succeed in managing innovation and setting up an effective patent application strategy with the support of a European IPR Helpdesk Ambassador.


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European IPR Helpdesk Bulletin Issue (20)

We are pleased to inform you that a new issue of the European IPR Helpdesk Bulletin has been released and is now available online.

Does your business have know-how, inventions or brands? Then you have intangible assets that can be brought to the market to create new revenues and increase profits.

This Bulletin issue is largely dedicated to IP Commercialisation comprising the different available mechanisms to realise economic values from Intellectual Property (IP).

Particular attention is given to licensing as the most common IP commercialisation tool presenting specificities depending on the Intellectual Property involved.

An insight on licensing and Standard Essential Patents (SEPs) is offered by an article of Mr Matteo Sabattini and Ms Alessandra Mosca from Sisvel.

Read our interviews to discover the point of view of European SMEs on IP management and commercialisation.

As always, the Bulletin reports information about past IPR events together with some fresh news on the Helpline service. In addition, it contains the usual patent quiz and a new IP commercialisation crossword.

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Technology Licensing-in

Successful industries survive on continuous innovation, bringing to the market new products and services by developing or acquiring cutting-edge technology. The process of acquiring the rights related to a third party’s technology through a licence agreement is indicated as technology licensing-in.

This fact sheet analyses the most relevant issues related to technology licensing-in, giving readers an overview of the preliminary steps and practical suggestions to follow in order to get prepared for future negotiations.

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Celegon Srl: Making use of confidentiality and IP transfer agreements in business partnerships

You want to commercialise your products with the support of external business partners? The story of this Italian SME, Celegon Srl, teaches us how crucial it is to take confidentiality measures and IP protection into consideration before entering into any business partnership.

EPO study on "Patents and self-driving vehicles"

Self-driving vehicles (SDVs) are expected to be commercially available from 2025 and recent statistics for patent applications reveal that innovation in SDVs is accelerating fast and could signal the coming of this transport revolution. By looking at patent applications in this field, it gives a unique insight into the race to innovate in smart, connected and automated vehicles.

In this respect, in co-operation with the European Council for Automotive R&D (EUCAR), the European Patent Office (EPO) has carried out a study providing a comprehensive picture of current trends and emerging leaders in SDV technologies.

The findings show that during the past six years, patent applications at the EPO for autonomous driving increased by 330%, compared to 16% across all technologies in the same period, and in the past ten years the EPO received some 18,000 patent applications related to self-driving vehicles, with nearly 4,000 in 2017 alone.

Click here for further reading on this study.

 

EPO and Community Plant Variety Office extend their bilateral cooperation

In 2016 the European Patent Office (EPO) and the Community Plant Variety Office (CPVO) signed a cooperation agreement to exchange information and best practices in the area of plant-related patents and plant variety rights. The cooperation between the two Offices has been extremely well received among European institutions, EU Member States, stakeholders and the public in general.

Last week, EPO and CPVO renewed their cooperation agreement for 3 more years envisaging the adoption of measures for sharing training tools with the public and for providing access to CPVO documentation via the EPO’s databases.

Find more information on their support of innovation in the plant sector here.

Translations of our Fact Sheets

The following are a selection of our top downloaded Fact Sheets that are now available in 5 EU languages.

More translations will be added soon!

  • Fact Sheet on "Non-disclosure agreement: a business tool", available here.
  • Fact Sheet on "Intellectual property relevance in internationalisation", available here.
  • Fact Sheet on "Technology Licensing-in", available here.

EPO: Priority document exchange through WIPO DAS

As of 1 November 2018 the EPO will participate in the WIPO Digital Access Service (DAS) for the exchange of certified copies of patent applications concerning priority documents.

The purpose of DAS is to establish a cost- and time-effective electronic system for processing and exchanging priority documents within participating patent offices, by relieving the applicant of the need to submit the documents to the Office of First Filing.

Find further information here.

European IPR Helpdesk Bulletin Issue (31)

This Bulletin issue is dedicated to IP and agribusiness, focusing on topics under current debate.

Jean-Luc Gal introduces this issue with the Notice issued by the European Commission on the Biotech Directive and the subsequent developments. The European Seed Association (ESA) explains the interface between patents and plant variety rights (PVR) which led to the creation of the PINTO database.

The CPVO provides an overview on the administrative arrangement for a bilateral cooperation between the EPO and the CPVO, while EPO speaks about patentable inventions relating to plants and animals. Juan Antonio Vives-Vallés, Assistant Lecturer at the University of the Balearic Islands, focuses on the balance between IP systems and the future of crop innovation in Europe in the light of  the new breeding techniques.

In this issue 4iPCouncil has interviewed the CEO of Vitirover, an SME that has used IP to protect its sustainable and efficient invention in the field of agribusiness. Philipp von Kapff and the CPVO have contributed a joint article on the interface between trade marks and variety denominations, and Massimo Vittori, Managing Director of oriGIn, writes about geographical indications and sustainability.

In addition, Marco Musumeci, from the United Nations Interregional Crime and Justice Research Institute (UNICRI), focuses on counterfeiting and food frauds, while Philippe de Jong and Elena Bertolotto, from the Altius law firm, explain to us the first compulsory licence case before the CPVO, posing the question on how to strike the balance between PVR and the public interest.

Finally, the International Union for the Protection of New Varieties of Plants (UPOV)  presents to us their new electronic application system, UPOV PRISMA, and the International Seed Federation provides us with their position paper on illegal seed practices.

As per usual, the Bulletin reports information about the European IPR Helpdesk’s past and future events together with the latest updates from our Helpline service, as well as a brand-new agribusiness quiz and our usual patent quiz.

Interview with Dr Edelbert Häfele, CEO of PATEV

 

Dr Edelbert Häfele is a publicly appointed and sworn expert for valuation and utilisation of intellectual property rights. He holds a Ph.D. in Engineering from the Technical University of Karlsruhe, Germany.

His professional career started in 1985 when he founded a consulting firm focusing on environmental and process technology. Five years later, he entered a joint venture agreement with a supplier for car manufacturers.

 

In 2001, Edelbert became the Chief Executive Officer of PATEV, one of Europe’s market leaders for intellectual property management services. Besides focusing on the evaluation and utilisation of patents in companies, PATEV also offers associated services for the analysis and creation of effective patent items (patent engineering) and patent transfers.

As part of our IP Special "Freedom to Operate", Edelbert answered some questions for us which we collected in this little interview. For more information on the topic, please also refer to the related article.

 

How do we make sure that no critical patents are published after the Freedom-to-operate (FTO) and not considered, e.g. during a development project?

Dr Edelbert Häfele: You need to have efficient competition monitoring in place, i.e. an ongoing monitoring of relevant technologies, features and competitors which helps to keep track of relevant documents and also includes the ability to monitor the legal status of identified applications. In addition, it is always recommended to conduct an FTO search  once the definite features of the products are finalized.

How many documents are typically resulting from an FTO and have to be reviewed?

Dr Edelbert Häfele: The central point in this context is the categorization of the relevant documents. For example, in PATEV’s FTO solution, the most important categories are 4 and 5 which are defined as follows:

Category 4: Further technological reconciliation is recommended as a precaution. This can be done internally. It seems rather unlikely that conflict potential can be deduced here, but this can only be excluded on the basis of internal knowledge of the customer company.
Category 5: Relevant intellectual property rights for which a detailed examination is required. There is a high probability that an attorney is needed for a final clarification.

To answer the initial question, for the FTO Statement:

Product FTO: Category 4: five to twenty documents. Category 5: less than ten documents.

Technology FTO: Here, the number of documents varies a lot depending on the technological scope, definition of features and the concreteness of the development project.

What are main aspects one has to keep in mind while defining the framework for an FTO search? Sometimes, too many documents in the result hits are overwhelming.

Dr Edelbert Häfele: Restrict search to specific relevant jurisdictions. Only include patents younger than 20 years (patent term). Make sure to optimize the search profiles to get less out-of-focus documents. The categorization system for the resulting documents reduces the workload for the company and the attorney to a minimum.
 
Is it possible to miss relevant patents in an FTO search?

Dr Edelbert Häfele: Yes, it is possible for recent applications which are not yet published. Also, an incorrect classification can result in a miss. But it is important to understand that a professional FTO search will identify the relevant or blocking patents with high accuracy. FTO search is complex in nature and because of its complexities, highly skilled professionals are needed.