Intellectual Property Management

-By INSME Secretariat

On the 11th of June 2020, Elio De Tullio, Managing Partner of De Tullio & Partners and INSME Board Member, presented a crucial topic in the current era of knowledge-based economy: the intellectual property management.

Mr De Tullio opened his speech by highlighting the presence of Intellectual Property in every aspect of our day-to-day life, who operates a good management of his Intellectual Property pursues a business model that allows him to collect all his rights and create a portfolio in order to exploit names, inventions or designs in an exclusive way for a certain period of time. Intellectual Property Rights (IPR) fall principally into four main areas: copyright, trademarks, design and models rights, domain name and patents.

Mr De Tullio pointed out that one of the first pillars of IP is the novelty, IP must refer to something original so who is willing to start a business should outline since the beginning the best IP strategy for his activity, the effectiveness of protection (i.e. defence against third parties), in fact, depends on the pro-activity of the right-holder.

This strategy can be based on secrecy, disclosure, or patenting. The first one concerns the management of trade secrets and can evolve into disclosure, litigation is very complicated in the first case while is still complicate but affordable in the second one. Patents and trade secrets present opposing choices. Trade secrets drive their legal protection from their inherently secret nature while patents can only be protected through public disclosure. The strategy of disclosure foresees an open innovation since the beginning while the patenting envisages a controlled disclosure only after 18 months from the earliest priority date of the application at a patent office (the protection is accorded on a territorial basis, so it is related to the country/ies where it has been applied for).

After this timeframe, the features of the invention will be published on a database enabling third parties to obtain information about this new technology but on the other hand, making them aware of the exclusivity rights on that specific innovation for the following 20 years. Third parties, however, can be authorized to use the patents in different countries through licensing and technology transfer.

The speaker continued his speech presenting the process of IP protection. It normally starts with an application filed before a public office (USPTO, EUIPO, EPO, WIPO, etc.) and a preliminary assessment, if the rights are clear and genuine, the right-holder will have success in using, exploiting them and fighting against imitation.

In this phase, it is crucial for the right-holder to carry out a preliminary investigation on free databases about the potential validity of his right (like those made available by national, local and international Trademark and Patent Offices) or detained by private providers (not free).

That said, Mr De Tullio showed the statistic by WIPO, the main authority on Intellectual Property, to define the countries that filed the most PCT patent applications in 2019.

In the top 10 PCT applicants, there are above all Chines and Japanese companies while the majority of technology patenting in 2019 are related to computer technology, digital communication, electrical machinery and medical technology.

By looking at EU, the IP Contribution Study carried out by EUIPO (EU Observatory on Infringements of IPRs ) in collaboration with the EPO (European Patent Office), first published in 2013 and last updated in 2019, gives an insightful overview on IRP Intensive Industries, the industries that have an above-average use of IPR per employee. This study shows the real contribution of IP rights to the European economy and shows that half of European Industries can be considered IPR-Intensive.

Mr De Tullio, then, presented the EIC (European Innovation Council) Accelerator (ex SME Instrument), an important programme under the umbrella of Horizon 2020 to support breakthrough innovation projects with a market-creating potential that will generate revenues, create jobs and enhance the scale-up of the companies. This programme is among the worldwide programmes promoted by the European Commission to support innovation, SMEs to scale-up and IP services. In order to access this grant, it is critical to demonstrate to the evaluators the level of excellence of the innovation and the possibility to preserve the rights and then the competitive position in the market. These remarkable results can only be achieved with an appropriate IP management since IP, according to the speaker, certificates the level of innovation of innovative products.

Mr De Tullio also introduced the IP Booster, a specialized professional IP service for public research organizations (universities and research centre) looking to realise value out of their results. If a public research organization is looking for specific expertise and IP advise, they can use this service provided by META Group (INSME Member) and ClearViewIP with the support of the European Commission.

Mr De Tullio stated that at European level there are several instruments to support SMEs and investors aimed at sustaining startups and spin-offs in the achievements of their goals. These instruments are mostly IP based so having IP right guarantees more chance to take benefit from them. Furthermore, concerning Technology Transfer, IP is a pillar that allows to check the destination country law (not only the country of origin law) in order to successfully complete a technology transfer.

During the last part of the webinar, Mr De Tullio analysed another cornerstone of the IP business which is the monitoring of the market through IP. IP rights-holder is able to monitor and surveillance the market through local partners and distributors but also by using surveillance system that makes him aware of similar trademarks or patents that can interfere with his patents worldwide. Surveillance of the market and enforcement are parts of the IP business model since the toleration of third parts’ infringements will cause a decreasing value of the IP right in the medium-long term.

At the end of his presentation Mr De Tullio highlighted the Interdependence of IP rights. The majority of companies, in order to reinforce their rights worldwide use the Interdependence of IPR approach, seeing that there are multiple rights on the same product, there will be also multiple layers of protection that will allow the IP-holder to be more successful on a global scale.

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