The Handbook of European Intellectual Property Management

Part 1 A more efficient market for ideas 1.1 Europe's IP architecture Laurent Manderieux, L Bocconi University, Milan The EU - but not only the EU; The new EU-wide integrated IP rights: big success and much use; Partly integrated rights: harmonized rights can sometimes be of real help to companies; The European Patent Organization: a convenient European alternative route for obtaining patents; What about the future? 1.2 The strategic role of IP in European business Ed Round, Marks & Clerk 1.3 IP in the knowledge economy Bo Heiden and Ulf Petrusson, CIP From blocking to building block; Managing (intellectual) assets, property and capital; The transformation to knowledge-based business models; A framework for developing knowledge-based business models 1.4 IP and open innovation Helene Raybaud and Yves Morel, Schlumberger Open innovation: the new equation of globalization; Open innovation at Schlumberger; IPR and open innovation; In conclusion 1.5 Managing patents as assets Lars Kellberg, Novo Nordisk Getting the most valuable patents; From core technology to marketing claims and unique selling points; Securing freedom to operate through an enhanced bargaining position; Successful execution is at least as important as designing the strategy; Drafting patent applications for worldwide protection 1.6 Europe's different IP cultures William Bird, Bird Goen Part 2 Acquisition of IP rights in Europe 2.1 Patents Peter Indahl, International Patent Bureau Integrate the filing strategy with your business plan; Your company size and position in the market; The patent offices available in Europe; Substantive examination or pure registration; The first filing: national or European; The first filing: international; Quality of the first filing 2.2 Trade marks Gabriella Modiano, Modiano Josif Pisanty & Staub All roads lead to Europe; National filing system; The international trade mark system; The CTM system: Europe's unitary answer; A unitary (and unique) weapon against potential infringers in the European Union; The (positive) fate of historical national trade mark applications: the creation of 'seniority'; A single market: use in few countries, valid in 27 states; The expansion of the CTM in an ever-growing Europe 2.3 Copyright in Europe Jan Nilsson, Strom & Gulliksson Intellectual Property Consulting Copyright protection; Legal provisions; Rights to a work under copyright protection; Free use of works; The copyright symbol [!c!]; Legal measures against infringers; UK copyright law; French copyright law; New developments 2.4 Designs Elisabeth Murray, Mathys & Squire What is a design?; Legal protection for designs in the European Union; Protection of designs under the Community Design Regulation; Rights obtained under the Community Design Regulation; Taking action against infringement; Benefits of registration under the Community Design Regulation; Applying for registration; When to file; Third parties' rights; Summary Feature: Utility models Daniela Carosi, Italian Patent and Trademark Office 2.5 Trade secrets Ruth Soetendorp, Centre for Intellectual Property Policy & Management, Bournemouth University What is a trade secret?; How does a trade secret differ from confidential information?; What information can constitute a trade secret?; How does the law protect trade secrets?; International recognition of trade secret protection; Trade secrets and confidential information - some practical suggestions Part 3 Commercializing IP in Europe 3.1 Innovation rights Jean-Louis Somnier, Novagraaf Technologies Innovation: a holistic view, going beyond technology alone; Entering Europe with an innovation: options for IP rights protection; IP protection of an innovation: a critical business decision 3.2 Building an international knowledge business Christina Nordstrom, Swedish Patent and Registration Office ClimateWell; Elekta Feature: international innovation Daniela Carosi, Italian Patent and Trademark Office 3.3 IP and proof of concept Dan Richardson and Dr Paul McEvoy, Technology from Ideas, and Cathal Lane, Tomkins & Co Environment and people; Sourcing ideas; Selection/filtering; Development; Key activities; Sale; Summary and future trends 3.4 Business-university collaboration Lawrence Cullen, UK Intellectual Property Office Purpose; The Toolkit; Using the Toolkit; Use of the Toolkit; Recent updates; Collaboration in Europe; The future: business-to-business model agreements; Conclusion 3.5 Managing IP in collaborative ventures Martin A Bader, BGW AG Management Advisory Group Collaboration = dilution of intellectual assets?; Collaborative success factors; Conclusions 3.6 Licensing as a growth strategy in Europe Martin Sandford, Licensing Executives Society, Britain & Ireland Risk perspective; Intellectual property; What is a licence?; Licensee selection; Common pitfalls - what can go wrong; When would licensing be inappropriate?; Conclusions 3.7 Innovation support in the new Europe Eva Bakos and Andras Haszonits, Hungarian Patent Office Situation of Hungarian SMEs according to the VIVACE Survey 2 6; Economic incentives for innovation and the application of IPR; The VIVACE programme; Conclusions Part 4 Technology and patents 4.1 Creating a patent position in Europe Alan Senior, J A Kemp & Co The building blocks; Litigation; Building a position with the blocks 4.2 European patents: differences from the United States Timothy J May and Beth Z Shaw, Finnegan Henderson Introduction; Filing and prosecuting patent applications in the United States and Europe; Post-grant procedures; Litigation/enforcement 4.3 Prior art searching Dean Parry, Patent Seekers It's a complex system; The standard route to gaining a patent; How does a patent office process your patent application?; Common misconceptions; Light at the end of the tunnel; A few helpful suggestions Feature: Assisted patent searches Professor Heinz Muller and Dr Alban Fischer, Swiss Federal Institute of Intellectual Property 4.4 Portfolio building Sue Scott, Abel & Imray How to develop your filing strategy; In which countries should you file patent applications?; The value of different types of claim; Claim types: a pharmaceutical case study; Portfolio review 4.5 Patent exceptions John Brunner and James Warner, Carpmaels & Ransford In what way are medical inventions excluded from patentability?; Ways of protecting medical inventions in practice at the EPO; Computer software and EPO patents; Patents for plant and animal varieties 4.6 Patent clearances Micaela Modiano, Dr Modiano Associati European opposition: a single procedure and a single result; Third party observations: steering prosecution at no cost; Double attack; Summary 4.7 Patents on a budget Keith Loven, Loven & Co Do you have an invention?; Do you need a patent?; Decide on a sensible patenting strategy Part 5 Creative and digital rights 5.1 Issues in European copyright Andrew Yeates, Sheridans The benefit of flexibility for copyright; To harmonize or not to harmonize, that is the question; Gowers Review of Intellectual Property; Summary 5.2 Copyright and the digital economy Emanuel Meyer, Swiss Federal Institute of Intellectual Property 5.3 Digital policy management Mark Isherwood, Rightscom Defining the problem; Digital policy management; Some DPM building blocks; Standards development and interoperability 5.4 Digital distribution and Creative Commons Paula le Dieu, Magic Lantern Productions Copyright - the Swiss army knife of distribution tools; Creative Commons - some rights reserved; Magnatunes; DRM - the sledgehammer of distribution tools Part 6 Brands and trade marks 6.1 Taking products and services to market across Europe Brian Morgan and Esther Gottschalk, Marks & Clerk Before a launch; After a launch 6.2 Managing brand and design portfolios in Europe Silas Brown, Briffa Trade mark protection; Registered designs; A balance of risks; Conclusion 6.3 Building a strong (European) trade mark Sofia Arenal, Mewburn Ellis Selection; Registration; Beyond registration 6.4 Defending brands Lisa Lovell, Brand Enforcement Awareness; Intelligence; Enforcement; Periodically revise your IP enforcement strategy; The benefits of implementing a consistent IP enforcement strategy Part 7 Company knowledge 7.1 Intellectual assets management Iain Russell, Intellectual Assets Centre The knowledge gap; Why is this important to businesses?; Why are these assets 'hidden' and does it matter?; Why focus on IA management and what does it encompass?; How to manage intellectual assets; How to measure and communicate value; Which approach should be adopted? 7.2 Inventions by employees Walter Holzer, GMX 7.3 IP and the web Silas Brown, Briffa Trade marks on the web; Master of your domain; Digital content on the web; Conclusion 7.4 Database rights Robert Lands, Finers Stephens Innocent LLP The database right; The British Horseracing Board case Part 8 IP as an asset 8.1 Valuing IP, intangibles and goodwill Kelvin King, Valuation Consulting Relevant accounting standards; Corporate governance; IPR and the valuation expert; Methods for the valuation of IPR; Conclusion 8.2 Brand valuation David Haigh, Brand Finance Approaches to 'brand' valuation; Steps in an economic use valuation; 'Existing use to existing owner'; Conclusions 8.3 The monetization of intellectual property Guido von Scheffer, Stephan Lipfert and Juliane Ostler, IP Bewertungs AG (IPB) General questions; The capital market's view of R&D; Intermediates and external IP logistics; Patent value funds (PVF); Alternative commercialization options - patent live auctions 8.4 Patent evaluation Poul-Erik Nielsen, Danish Patent and Trademark Office Patents as a strategic weapon; Substantial content of IPscore 2.0[r]; Evaluation methodology for IPscore 2.0[r] Part 9 IP and corporate finance 9.1 Raising finance through IP Hugh Dunlop, R G C Jenkins & Co IP assets from early-stage investment to IPO; Raising seed capital; Beyond seed capital - venture capital; Summary of IP assets 9.2 Investors and IP risks Peter Finnie, Gill Jennings & Every A risk management approach to IP; A structured approach; IP strategy; Conclusions 9.3 IP and acquisitions Omar Baki, Ann Danared, Barry Franks, Anders Holmberg and Peder Oxhammar, Brann Patentbyra Important questions; Levels of analysis; Due diligence process; The due diligence report 9.4 IP and private equity Malte Kollner, Triangle Venture Capital Group Part 10 Selected IP jurisdictions 10.1 (to come) 10.2 The United Kingdom Jacqueline Needle, Beck Greener The cost and incidence of patent litigation; UK litigation procedures; Is the cost of enforcement a reason to avoid protection?; How to avoid litigation 10.3 IP in France Christian Nguyen van Yen, Marks & Clerk 10.4 IP in Italy Gabriella Modiano and Micaela Modiano, Dr Modiano & Associati Using available rights; Litigation speeded up; Looking to the future Feature: Changes in the Italian IP system Daniela Carosi, Italian Patent and Trademark Office 10.5 IP in Spain Miguel Vidal-Quadras Trias de Bes, Amati Vidal-Quadras Advocats Changes in the regulations related to IP; Changes in litigation regulations and judicial proceedings; Changes in the IP agents; Conclusions 10.6 The Nordic countries Annelise Holme, Holme Patent A/S Denmark; Finland; Sweden; Norway 10.7 Benelux Bernhard Kugele, Novagraaf (International) and Pieter de Ruijter, Novagraaf (Netherlands) The Netherlands; Belgium; Luxembourg; European Patents; Court proceedings; Trade marks in Benelux 10.8 IP in Ireland Olivia Catesby, Tomkins & Co 10.9 The accession states Michael Blakeney, Queen Mary Intellectual Property Research Institute, University of London Accession; Former Communist countries; Case studies Feature: IP in Slovenia Janez Kukec Mezek, Slovenian Intellectual Property Office Part 11 IP protection 11.1 Litigation strategies for European IP registered rights Georgie Collins, Bevan Brittan Pan-European patent injunctions - past, present and future; Community Trade Marks and Community Design Right; The future: COMPAT, EPLA and the Enforcement Directive; Considerations when deciding where to litigate; Checklist of key strategies for a claimant; Checklist of key strategies for a defendant 11.2 Differences in patent litigation Nigel Stoate, Simon Cohen and Matthew Burman,Taylor Wessing The legal system; Disclosure; Evidence; Cost; Duration; Legal aspects; EPO proceedings; Conclusion 11.3 Opposition at the European Patent Office Alan MacDougall and Chris Hamer, Mathys & Squire What challenges can be made; How to build a case; Once you have built a case, what next?; What is needed to file the opposition; What happens after filing the opposition; How long it takes and how much it costs; Help with an opposition; Can you get an award of costs?; What happens to a European Patent when an opposition is pending; Can you appeal the decision?; What happens after filing the appeal; Can you appeal the Board of Appeal's decision?; Tips for opposition/appeal strategy 11.4 IP insurance Matthew Hogg, Kiln Inherent risks of IP; IP value; Risk and insurance; IP defence insurance; IP enforcement insurance; IP value insurance; Open source compliance insurance