Click here for the online version of this guidebook: http ... · 1.4. InteLLeCtUaL PROPeRtY SYStem...

2nd edition, 2006

ISBN 951-53-2802-0 (stapled) ISBN 951-53-2803-9 (PDF)

© National Board of Patents and Registration of Finland and Oy Swot Consulting Finland Ltd 2005

Click here for the online version of this guidebook: http://palveluverkko.PRH.fi/immateriaalityökirja

– management WORKBOOK

InteLLeCtUaL PROPeRtY ISSUeS In BUSIneSS OPeRatIOnS

Click here for the online version of this guidebook: http://palveluverkko.PRH.fi/immateriaalityökirja

fOReWORd

The National Board of Patents and Registration of Finland (NBPR) is an expert organization of industrial property (IP) rights as well as of business and corporation activities. We have an im-portant role in encouraging and developing entrepreneurship, innovativeness and corporate activities both in Finland and overseas.

The NBPR advances technological and economic progress and fosters human capital by en-suring that:• Companies, associations and foundations are able to operate legally in Finland • Inventors, researchers, product developers, manufacturers and marketers are able to obtain

patents, trademarks, design rights or some other form of industrial property rights • The interests of the Finnish people are protected internationally • Our information and advisory services are reliable and quickly accessible.

NBPR and the World Intellectual Property Organisation (WIPO) collaborate on a national Idea Pilot (Idealuotsi) project, the purpose of which is to promote the utilization of the IP system, particularly within small- and medium-sized enterprises. T

his guidebook was produced as part of the Idea Pilot project, which comprises the following parties: • Confederation of Finnish Industries EK • Ministry of Trade and Industry (Ministry of Employment and the Economy?)• Foundation for Finnish Inventions • Central Chamber of Commerce • National Board of Patents and Registration of Finland • Federation of Finnish Enterprises • Finnish Funding Agency for Technology and Innovation (Tekes) • Employment and Economic Development Centres (T&E Centres) • Federation of Finnish Technology Industries • Workplace Development Program (Tykes) • Ministry of Labour • Ministry for Foreign Affairs • Centres for New Entrepreneurs (Uusyrityskeskus) • The World Intellectual Property Organisation (WIPO)This workbook was designed by NBPR and Oy Swot Consulting Finland Ltd.

National Board of Patents and Registration of Finland Oy Swot Consulting Finland LtdMika Waris Harri Sjöholm Mirja Lehikoinen Tommi Salonen Veli-Pekka Hyttinen Jouni Juuti

We would like to thank the Workplace Development Program (Tykes) and all companies and partners that have contributed to the production of this workbook and given us valuable feed-back, helping us make it as user-friendly as possible.

29 November 2005, Helsinki

Mika Waris National Board of Patents and Registration of Finland

taBLe Of COntentS

1. IntROdUCtIOn . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5 1.1. PurPose of the Workbook . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .7 1.2. benefits of the intellectual ProPerty system . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .7 1.3. Protection system and source of information . . . . . . . . . . . . . . . . . . . . . . . . . . . . .9 1.4. intellectual ProPerty system – a PoWerful comPetitive tool. . . . . . . . . . . . . . . . . . . . . 10 1.5. level of iP-Practices . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11 1.6. intellectual ProPerty system. . .. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12 1.7. business Process . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13 1.8. Product develoPment Process . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14 1.9. r & d costs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14 1.10. intellectual ProPerty Protection in netWork co-oPeration . . . . . . . . . . . . . . . . . . . . . 16 1.11. hoW to use this Workbook . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18

2. BUSIneSS PROCeSS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21 2.1. business environment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22 2.2. business idea – business concePt . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24 2.3. vision and focus . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26 2.4. Products and services . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28 2.5. clients and markets . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30 2.6. comPetitive strength . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 32 2.7. marketing concePt and marketing mix . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 34 2.8. order-delivery-Process. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 36 2.9. summary of the business Process . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 38

3. PROdUCt deveLOPment PROCeSS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41 3.1. Product develoPment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 43 3.2. creation of ideas . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 44 3.3. rough feasibility study and evaluation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 46 3.4. business case definition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 48 3.5. stage of develoPment. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 50 3.6. commercialization . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 52 3.7. summary of the Product develoPment Process . . . . . . . . . . . . . . . . . . . . . . . . . . . . 55

4. ImPLementatIOn. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 57

aPPendICeS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 61 services and databases . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 62 sources of financing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 64 glossary. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 66

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1. IntROdUCtIOn

6 http://palveluverkko.prh.fi/immateriaalityokirja

InteLLeCtUaL PROPeRtY SYStem InteLLeCtUaL PROPeRtY PROteCtIOn, COmPetItOR InfORmatIOn

Idea

Idea

maRKet

PROdUCt/SeRvICe

trademark

protection of designs

patent

utility model

company name

trade secret

copyright

Idea

Idea

InfORmatIOn On COmPetItORS: • company databases, e.g.: www.ytj.fi • trademark and design databases • information and research services

InfORmatIOn On teCHnOLOgICaL SOLUtIOnS: • patent databases • information and research services maRKet trademark

protection of designs

patent

utility model

company name

trade secret

copyright

COMMERCIALIZATION

RESEARCH AND DEVELOPMENT

ENTREPRENEURSHIP

CREATIVITY

PROdUCt/SeRvICe

Intellectual property system in the company’s life cycle.

7

1.1. PURPOSe Of tHe WORKBOOK

It has been estimated that the competitiveness of the Finnish industry will increasingly be based on:• Creativity • Innovativeness.

On the other hand, every company faces international competition one way or another, regard-less of whether it is an international export organization or a local subcontractor.The purpose of this workbook is to address the two above-mentioned challenges and to help companies use intellectual property-related issues in their operations as a competitive factor, emphasizing the two following points in particular:

• Obtaining information (e.g., how to follow the technological development of our line of busi-ness and how to monitor the competitive situation and our competitors’ patent applications or other patents in order to avoid overlapping development.)

• Protection (e.g., how can we make the most of our own competence and, at the same time, make it more difficult for other players to act; how can we complicate the freedom of product development.)

Many companies are still rather unfamiliar with intellectual property-related issues, although they are in fact, an essential part of business operations.One of the goals of this workbook is to illustrate what intellectual property means to companies in practice, and what benefits or sources of competitive edge it can offer.

We have produced this workbook with a wide variety of users in mind, for example: • Company management and key persons • Service providers (e.g., patent, engineering and law offices) • Expert companies • Research institutes • Colleges.

The workbook also serves as a summary for the above-mentioned target groups and helps them develop the company’s success and competitiveness. This workbook can also be used in connection with the company’s strategic circle, for example.If the company has little experience in IP issues, it should consider taking along an expert for the first planning circle. There is also an appendix with (as an example) a list of available serv-ices and their providers, including databases, which the company can use.

1.2. BenefItS Of tHe InteLLeCtUaL PROPeRtY SYStem

Both the intellectual property system, which means the measures that protect competence, and the sources of technical and competitive information gained through them, have been created and meant to be used as powerful tools of product development, marketing and net-working.

If used actively and skilfully, the IP system is an important competitive factor creating added value for the present international business environment.

The IP system significantly minimizes the risks involved in business operations and offers an effective tool to meet international competitive challenges.

Successfully utilized market and competition information obtained through the IP system pro-vides companies with important intellectual capital as well as with substantial information on technical solutions, competitors and the prevailing technological standards.

The role of the information generated by the IP system creates substantial savings in financial and other resources, especially in the beginning of the product development process.

Efficiently used, the intellectual property system helps to: • Implement and fulfil the claims for acceleration and accuracy • Decrease overlapping development.


Picture 1. The IP system includes measures to protect competence as well as sources of both technical and competitor information.

Protective measure Purpose of use Period of validity

Patent Protects the product, device or method 20 years from the date of application (+ 5 years of additional protection for pharmaceutical products)

Utility model Protects the product or device 10 years (4+4+2)

Trademark A way to stand out on the market Perpetual, renewal every 10 years

Design right Protects the product’s exterior 25 years (5+5+5+5+5)

Company name Protects the company name Perpetual, if the company is active

Copyright Protects the work (of art) Creator’s lifetime + 70 years

Trade secret Protects information of economic significance Until generally known

Information source needs

Client knowledge

Competitor and partner knowledge

Technical knowledge

9

1.3. PROteCtIOn SYStem and SOURCe Of InfORmatIOn

The Intellectual property system is both an information source and a protection system provid-ing companies with, e.g., the following competitive tools:

• Enables utilization of a vast information source helping the management with decision-mak-ing, particularly with regard to marketing and product development

• Helps to allocate the company’s product development resources more effectively by avoid-ing reinventing something that has already been invented

• Helps to find good technical solutions relating to both products and methods • Accelerates the product development process • Protects product development input • Decreases the financier’s risks • Provides information on the market and competition situation • Supports the process of brand building • Supports globalization • Enables licensing and finding cooperators • Helps to avoid infringing others’ rights • Creates a systematic working method by combining strategic intent and operational activities

as well as the choices and decisions related to them.

CHaLLenge30–50% of the product development process includes ideas that have already been developed. In Finland, this means that as much as 1,5–2,5 billion euros are wasted every year.

The patent system is an information dissemination system. Its goal is to promote technological progress and people’s wellbeing. Bringing new technological information for utilization of the society is relevant to the objective.

A patent is an exclusive right granted by the society to an inventor who can, for a specified pe-riod, prohibit commercial utilization of his or her invention; however, in exchange, the inventor must permit the publication of his or her invention. A patent may be granted for an industrially applicable invention, which is novel and differs essentially from previous inventions.

These publications have already grown into a huge information warehouse, which gives a comprehensive picture of the contents of worldwide research and development: research re-sults, products, production methods and markets outlined for them.

• Patent publications, i.e. descriptions of detailed technical solutions from all areas of technology amount to more than 50 million worldwide.

• 80–90% of new technical information is found exclusively in patent da-tabases.

• More than 90% of patents are focused on ordinary product develop-ment, product improvements or production methods.


1.4. InteLLeCtUaL PROPeRtY SYStem – a POWeRfUL COmPetItIve tOOL

The Intellectual property system = IP-protection methods and technological and competitor information sources.

This workbook is designed to provide the company management with a tool they can use to help them see the IP system as one of the business’s key success factors either:

In connection with the company’s normal strategy planning cycle, including intellectual prop-erty issues as part of the plan or

In a situation, where the company is setting to work with intellectual property issues as a separate planning project.

The workbook gives a comprehensive summary of different IP issues, tools or solutions with the help of examples.

The workbook is divided in two sectors: • Utilizing IP strategy in the business process and • Utilizing IP strategy in the product development process.

Intellectual property-related issues should be part of the company’s entire operation, just like globalization, networking, information technology and quality issues. This way it will involve the company’s entire personnel.

Picture 2. Business process model (Swot Consulting).

BUSIneSS PROCeSS KnOWLedge.management Competences

Strategic dimension Operational dimension

marketing

strategy

technology

strategy

Production

strategy

HR strategy financial

strategy

BUSIneSS StRategY and BUSIneSS COnCePt• In which business area do we operate? • Business idea • Business vision

• Business values • Business structure • Focus

UndeRStandIng YOUR OPeRatIng envIROnment(knowledge of your branch, area and interest groups)

Intellectual property strategy

globalization strategy

networking strategy

ICt-strategy

11

1. IgnORanCe – PaSSIvItY The company has no industrial property rights and no active partner relation with a patent office or a law office. The company is not familiar with patents and therefore, the patents are ignored.

The company name is not covered.

8. StROng BRand and fInanCIaL ReSULt Thanks to a successful IP strategy, the protected solutions in the company’s high-end section will set new standards in the field?.

The trademark becomes one of the leading brands in the field, and the company utilizes cross licensing with other players in the market.

7. InteLLeCtUaL PROPeRtY ISSUeS – an ImPORtant COmPetItIve tOOL The company’s intellectual property strategy is aggressive and used as an

important competitive tool. The company utilizes expert services related to information retrieval, patents and judicial matters in an appropriate and

systematic way.

6. InteLLeCtUaL PROPeRtY ISSUeS aS PaRt Of a BUSIneSS StRategY The company plans an intellectual property strategy, which becomes an integral part of the company’s business strategy. The company buys the rights for use of

inventions that support its business from, e.g., universities and research institutes. Intellectual property issues are defined in the company’s balance sheets.

5. InteLLeCtUaL PROPeRtY ISSUeS – KeY SUCCeSS faCtORS Patent strategy becomes a key competition and success factor of the company.

The company applies for a patent, registered design, utility model and trademark for all of its inventions, products and services in all the geographic areas, where it intends to

do business. The company seeks additional income by licensing out its IP.

4. USIng Patent InfORmatIOn aS SOURCe Of InfORmatIOn; PaRtneRIng The company uses patent information as an essential information source; competitor monitoring is systematic and continuous. Consequently, the company will now form a permanent rapport with a patent agent. The company monitors and defends its

patents and establishes a partner relationship with a selected law office.

3. USIng vaRIOUS PROteCtIve meaSUReS The company applies for trademark protection for its own product or product family.

The company is aware of the difference between a registered design, a patent and a utility model and knows how to utilize them appropriately. The company obtains a patents portfolio.

2. InteLLeCtUaL PROPeRtY PROteCtIOn The company becomes interested in patent matters not only in order to protect itself, but also to avoid infringement of somebody else’s patent. Patents are recognized as a source of information

and the company applies for a patent for its most important inventions and protects its product and company names. The company starts paying compensation for employment inventions, based on

established practices.

1.5. LeveL Of IP PRaCtICeS

Picture 3. Level of IP practices, where intellectual property issues develop into a company’s strategic tool and an integral part of the business strategy (Adapted from: Finnish Funding Agency for Technology and Innovation (Tekes), Sitra (The Finnish Innovation Fund) 1999).


1.6. InteLLeCtUaL PROPeRtY SYStem

The intellectual property system comprises the following tools that offer companies both an information source and a protection system:

CHaLLengeIs our core competence protected? Have we taken into account that the IP system can also be used as an information source? Have we used one of the above-mentioned information sources earlier? Which protection systems are in use?

Company name

Patent

Utility model

Trademark

Registered design

Picture 4. Sectors of IP system.

IP INFOR-MATION

SOURCES

INDUSTRIAL PROPERTY RIGHTS SERVICES

Rough clarification and analysis of

prior art

Clarification and analysis of prior art

Monitoring the branch of technology and seeking

technical solutions

Competitor analysis and monitoring

Survey on barriers to manufacturing and

marketing

Identification of potential partners, subcontractors or

licensors

Novelty search, examination of patent-ability, novelty search of a design and trade-

mark search

Identification of poten-tial licensors

Controlling the company’s own patents portfolio

Clarifications of patent family and status; claim and nullification study

COPYRIGHTS

Software

Literary works

Visual works

Audio recordings

CONTRACTS

Non-disclosure agree-ments with personnel

Partner agreements

Sales contracts

Agency and retail con-tracts

Compensation system for employment

inventions

Public disclosure procedures and

timetables

PROTECTION SYSTEM OF BUSINESS SERVICES

TRADE SECRET

Strategies and plans

Pricing

Product documents; drawings, recipes

Development projects

Client and supplier relations

Insider issues

Non-disclosure agree-ments with partners

(NDAs)

Licensing agreements

13

1.7. BUSIneSS PROCeSS

A simplified business process chart intended for the management of the intellectual property-related issues is used here to illustrate, which section of the entity is being looked at.

The R & D process of the business process has been described separately in this workbook. This makes it easier to look at matters related to product development.

The IP system provides information on clients, innovations and the competitive situation. This information can then be used during different stages of the business process. The IP system tools clearly introduced in the workbook provide users with abilities to use the information for strategic and operational business purposes. Together they form an essential part of the com-pany’s business knowledge.

assessment of the business environment

Order-delivery-process

marketing process

Business planning process

R & d process

data management

management and decision-making

Obtaining and utilizing information

Business knowledge

Client knowledge Competitor and partner knowledge

Innovation knowledge

• Client needs analysis • Study on consumer

behaviour • Marketing analysis • Identification of

potential licensors

• Competitor analysis• Competitor monitoring • Competitors’ patent

applications (clarifications on patent family and status, studies on claim and nullification)

• Survey on barriers to manufacturing and marketing

• Survey on potential collaboration partners, subcontractors or licensors

• Clarification and analysis of prior art

• Monitoring and analyzing a branch of technology

• Searching for a technical solution

• Technological map

CHaLLengeHow have we utilized the above-mentioned information sources in our business?

Picture 5. Business process chart adapted for the management of the IP issues.


1.8. PROdUCt deveLOPment PROCeSS

Emphasis should be placed on the initial stage of the product development process, and in particular, on obtaining and utilizing information. Decisions on prospective expenses are final-ized in the beginning of the process. Because “all” significant matters are protected, “all” that information also exists and is accessible. Furthermore, 99% of protections are product im-provements, so information is also available on technological development.

In the R & D process, the development stage is only one part of the whole process. The more accurately and skilfully the feasibility study and the creation of ideas is carried out, the more successful the result will be, also in terms of costs



marketing process


R & d process

data management



ROUgH feaSIBILItY StUdY and evaLUatIOn

CReatIOn Of IdeaS

IP-StRategY and deCISIOn-maKIng

BUSIneSS CaSe defInItIOn

Stage Of deveLOPment

OBtaInIng, UtILIZIng and managIng InfORmatIOn

COmmeRCIaL-IZatIOn

CHaLLengeHow does our company utilize the IP system as information source for a product development process?

Picture 6. Business process adapted for the management of IP issues.

1.9. R & d COStS

Quite often, the costs of product development exceed the budgeted amount, because during the project:

• Unexpected situations occur and resulting in a – often considerably – longer total develop-ment time

• It is not noticed until the development stage or when filing an application for protection, that the developed inventions have in fact, already been protected; normally, this requires a new stage of creating ideas, which leads to a prolonged schedule and thus, greater costs

• The worst kind of surprise is to realize during marketing, that the new product infringes an existing patent, trademark or a registered design.

Optimal cost/investment curves connected with the utilization of the IP system in product de-velopment and, more widely, in business operations are the following:

15

1. Investments in the utilization of the IP system are insignificant and focused on the beginning of the process, i.e. on obtaining information. However, the investments will grow again as the protection stage begins. Studies have shown that intellectual property costs constitute about 5% of the product’s innovation costs (OECD 1998). Picture 8.

2. The “R & D costs agreed upon at decision-making “ -curve is also focused on the initial stage of the process. By and large, decisions related to costs have already been made. Picture 9.

3. A conventional R & D cost curve (cumulative), in which the majority of costs are generated during development and the subsequent commercialization stages. Picture 10.

When investments in the IP system have been made well and properly, costs agreed upon at decision-making will be allocated correctly. The optimal R & D cost curve is the total of the above.

Picture 7. Product development costs rise along with iteration rounds.

Picture 8. IP system costs.

Picture 9. The effect of decisions on costs. Picture 10. ”Conventional R & D cost curve”.

Investing on obtaining information and on decision-making is worthwhile in the initial stage of the product development process.

Investment

Investment Investment

Investment

timetime

time time

Realized level

Budgeted level

Information source Protection

Information source ProtectionInformation source Protection


1.10. InteLLeCtUaL PROPeRtY PROteCtIOn In netWORK CO-OPeRatIOn

Working with interest groups and collaboration partners requires that you have your own core competence and knowledge clearly in control. Careful protection and information acquisition make confidential co-operation and risk management easier. With regard to managing intel-lectual property issues, it may be worthwhile to consider the help of experts, who have been described in the network chart below.

Picture 11. The network not only defines the company’s operating environment, but also the essential expert partners in intellectual property issues.

Clients

Patent offices

Foreign patent offices

Market research

institutes and companies

Law offices

Product development partners and engineering

offices

Research institutes,

e.g. VTT Technical Research Centre

of Finland

Universities and their institutes

Agents and dealers

Supplier network

Private financial markets

- banks - vc-companies - business angels

Insurance companies

Expert organization on

intellectual property

information – NBPR

Public financiers, e.g.

Tekes and T&E CentreCOmPanY

17

CHaLLengeHave we defined our most important goals and ways of protection to form a basis for confidential co-operation? Do we have a suitable col-laboration partner in intellectual property issues?


1.11. HOW tO USe tHIS WORKBOOK

Chapters 2 and 3 help you to define the intellectual property issues of your company and to outline them in the business process and the product development process.

One thematic entity is always discussed in one spread of the workbook:

22 http://palveluverkko.prh.fi/immateriaalityokirja 23

A PRACTICAL EXAMPLE

With regard to Oy Konelaite Ab, among salient dynamics of the field are the following: -

-

AN EXAMPLE OF INTELLECTUAL PROPERTY STRATEGY

ESSENTIAL QUESTIONS ON INTELLECTUAL PROPERTY STRATEGY

2.1. BUSINESS ENVIR1ONMENT

IN WHAT KIND OF BUSINESS ENVIRONMENT DO WE OPERATE?

Assessment of the business environment


Marketing process


R & D process

Data management

Management and decision-making


-egories.

UTILIZING THE INTELLECTUAL PROPERTY SYSTEM

Presentation of intellectual property issues related to the subject matter of this spread

An example demonstrates and visualizes the discussed issue

Issues supporting the contemplation of strategy

The process chart illustrates, in which stage of the business or product development process we are

Field of business or product development under discussion

19

22 http://palveluverkko.prh.fi/immateriaalityokirja 23

A PRACTICAL EXAMPLE

With regard to Oy Konelaite Ab, among salient dynamics of the field are the following: -

-

AN EXAMPLE OF INTELLECTUAL PROPERTY STRATEGY

ESSENTIAL QUESTIONS ON INTELLECTUAL PROPERTY STRATEGY

2.1. BUSINESS ENVIR1ONMENT

IN WHAT KIND OF BUSINESS ENVIRONMENT DO WE OPERATE?

Assessment of the business environment


Marketing process


R & D process

Data management

Management and decision-making


-egories.

UTILIZING THE INTELLECTUAL PROPERTY SYSTEM

When a company has gone through all the fields (= spreads) introduced here, it has a thorough understanding of ways in which the intellectual property system can be utilized to develop the company’s competitive strength and other success factors.

The company must choose only those IP issues appropriate and suitable for it. The company’s own experiences, international functions and scale of operation should be considered in mak-ing these choices. Regarding all issues, you should make your decision knowingly.

The example illustrates how a company can solve various issues

The essential questions lead the company to consider its decisions and choices regarding the intellectual property system

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2. BUSIneSS PROCeSS

2.1. BUSIneSS envIROnment

2.2. BUSIneSS Idea – BUSIneSS COnCePt

2.3. vISIOn and fOCUS

2.4. PROdUCtS and SeRvICeS

2.5. CLIentS and maRKetS

2.6. COmPetItIve StRengtH

2.7. maRKetIng COnCePt and maRKetIng mIX

2.8. ORdeR-deLIveRY-PROCeSS

2.9. SUmmaRY Of tHe BUSIneSS PROCeSS


a PRaCtICaL eXamPLe

With regard to Oy Konelaite Ab, among salient dynamics of the field are the following: • The role of technology as a competitive factor is emphasized, and the number of intelli-

gent features in devices increases • Clients increase their competitiveness by optimizing logistics and the use of materials • As the price war intensifies, additional prices are no longer obtained from the growing

number of features • Environmental aspects are more widely appreciated, which effects both system require-

ments (e.g. surface pressure – bio-hydraulic oil) and operational preconditions of the line of business.

Oy Konelaite Ab works together with Tampere University of Technology (TTU), Tekes, NBPR and an instrumentation company and concentrates on developing control and measuring systems for forestry harvesters in accordance with the Nordic harvesting method as well as on producing key components for this machinery. The following operators are included in the company’s most essential value network:

2.1. BUSIneSS envIRIOnment

In WHat KInd Of BUSIneSS envIROnment dO We OPeRate?

The business environment defines the environment in which the company operates. It compris-es salient dynamics of the field, a value network and the company’s innovation environment.

It is useful to recognize the changes in your line of business, because they create new oppor-tunities for quick operators.

As your level of specialization increases, it is necessary to know and define your own partner network or value network. Therefore you should pay attention to the following:

• What are the salient trends and dynamics in our line of business? • In which value network (partner network) does our company operate? • How do we describe our company’s innovation environment?



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6. Contractors and forest companies

specialized in harvesting

1. Manufacturers sof skeleton

constructions (Oy Teräsrakenne Ab)

2. Suppliers of

hydraulic and control devices (Oy Mekanismi Ab)

5. International agent-based

network

3. Developers of the in-novation environment

(TTY, Instrumentointi Oy, Tekes, NBPR)

4. The company’s own assembling

and manufacturing operations

23

an eXamPLe Of InteLLeCtUaL PROPeRtY StRategY

eSSentIaL QUeStIOnS On InteLLeCtUaL PROPeRtY StRategY

• How do we distribute work internally with regard to intellectual property issues: - Product development - Marketing - Management - Co-operation between the above-mentioned?

• Whom do we choose as our most appropriate partner for: - Handling industrial property rights? For example, patent offices (www.spay.fi) - Acquiring technical and competitor information? (e.g. NBPR or international experts or

data banks) (www.PRH.fi) - Handling legal and contractual issues? For example, law offices (www.asianajajat.fi).• How do we secure contractually our relationship with our most important collaboration

partners? Product developers, engineering offices, subcontractors, module suppliers and staff leasing companies.

• How do we define, specify and agree upon our company’s employment invention issues or invention reward systems?

• What are the current typical protection practices in our line of business?

Oy Konelaite Ab has chosen Patenttitoimisto Oy both for handling industrial property rights and for acquiring information on intellectual property. In return for an annual payment, the patent office will also take care of the continuous monitoring of the appropriate patent cat-egories.

The legal and contractual matters of the company are centralized to Asianajotoimisto Oy, which is responsible for the company’s contract base: • Partner and subcontractor agreements as well as related non-disclosure agreements

(NDAs) • Distribution and representation agreements • Employees’ work contracts and non-disclosure agreements.

The company has created an innovation reward system itself, and conforms to employment invention legislation and related grounds of payment.

UtILIZIng tHe InteLLeCtUaL PROPeRtY SYStem

It is important, in view of the intellectual property system, to know, which issues require the use of expert assistance. The company’s own partner network and good relations should be built in advance.


2.2. LIIKeIdea – LIIKetOImIntaKOnSePtI assessment of the business environment


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a PRaCtICaL eXamPLe

In WHICH BUSIneSS dO We OPeRate?

The purpose of the business idea is to give your own organization, partners and interest groups a concise and clear picture of the line of business in which your company wants to operate, and how it can be done in a profitable way.

The business idea is often defined by answering the following questions:

• What products and services does our company produce? • To whom and to which markets and clients do we offer the above-mentioned products and

services? • How do we run our business in a competitive and profitable way?

When answering these questions, you should think about the ways in which your company stands out from other operators in your line of business.

The business idea of Oy Konelaite Ab is to develop and market advanced forestry harvest-ers and life cycle services supporting the use of this equipment. The target groups are contractors in Europe and North America, and the company focuses on the development of forest equipment, particularly in the development of automation, accessory production and international marketing. All production apart from the production of key components is subcontracted.

25


• How do we take the development of intangible assets into account with regard to our business idea and strategy?

• Has our company protected its: - Company name, and if so, to which extent? - Product families or products (with a trademark)? - All versions of our domains in such a way that no one can disturb our availability with a

similar domain?

• Is licensing part of our business idea - if yes, in which product/service sector or in which markets? Is there for example, such development of technology or processes that could produce returns through licensing?

• How do we confirm our knowledge on prior art, trends and technical solutions in our line of business, with regard to our core technology?


Oy Konelaite Ab has registered its company name in the ten most important countries of sale. The main product is protected with a trademark: HARVE®. Domains konelaite.fi, konelaite.com and harve.com have also been registered.

Examples of intangible assets: • Substantive expertise, special knowledge of your field • Business process knowledge, market and line of business

know-how • Business processes, distribution of work, methods • Product innovation • Production process know-how • Brand • Network competence.


Once a business is established and the business idea is defined, it is equally important to es-tablish procedures and protection practices for the company’s intangible assets – in spite of the fact that quite often this is not considered important at such an early stage. However, miss-ing procedures and the unprotected state of your business may later cause trouble in IP man-agement and marketing, and in some countries you may even find it impossible to operate.

Note.The protection of company names is “eternal”, for as long as the company stays active. The protection of a trademark however, has to be renewed every ten years, and patent protec-tion is maintained by annual payments.


WHat aRe tHe fOCUS and OBJeCtIveS Of OUR OPeRatIOn?

Defining the vision, is for several companies, the main part of their strategic thinking. By doing this, the company management emphasizes to the whole organization what the desired direc-tion and goals are. This is a way to ensure that recognizing the common goal helps to meet operational challenges. It is important, in view of global competitiveness, to define where the company is focused: i.e. where it concentrates all of its resources.

Even a small company can compete successfully in the global market with a narrow enough field of know-how.

• What is the focus of the company - in other words, in which part of its operation should it concentrate its R & D activities and develop its own key competence?

• What is the company’s positive, desirable goal or vision that it wants to achieve and which it can achieve by working hard?

2.3. vISIOn and fOCUS

a PRaCtICaL eXamPLe

Oy Konelaite Ab focuses on: • Middle-sized, environmentally conscious forestry harvesters• Development of control and measuring systems that optimize the use of wood and logis-

tics of forest harvesting as well as on developing respective key components • Operating in European and North American markets.

The vision of Oy Konelaite Ab is firstly, to be in third place in the global market of forestry harvesters in accordance with the Nordic Harvesting Method; and secondly, to achieve a turnover of 100 million euros.

You can seek patent protection in 31 countries with just one application form and one handling by filing in an application for a European patent. After the patent has been granted, patent protection comes into effect in selected, designated countries. This happens by delivering a translation of the granted patent to a national patent office in each country, using a language approved in the country in question. After the patent has been set into force, the European patent functions just like a national patent.



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Oy Konelaite Ab has defined in the company’s intellectual property strategy, that the trade-mark HARVE® is not only protected but also effectively highlighted in:• Marketing material• Products• Advertising• Catalogues of manufacturers• Tradefairs.

The company name is not seen as a brand and, therefore, it is not underlined.The main definition in the company’s strategic policy is to patent all essential technical so-lutions regarding the control system and felling head. Patenting covers the areas of EPO, USA and Canada.

• How do we see protection as a strategic choice and definition? • How aggressively do we try and want to protect our: - Company name? - Trademarks and designs? - Top competence areas or technical applications? - Key competence or key technology areas?

Are there any differences in our protection practices between various geographical areas?

• How do we protect the solutions of the key areas that we have defined in view of product development, marketing and image effect?

• What is our vision regarding our brand or using the brand to stand out from others in the market?

• How do we find business partners that can offer and sell completed innovations, solu-tions, patents, patent applications or licences?


Competitive advantage takes more than technical skills. Technical skills and solutions are rare-ly enough as such, when competing in international markets. The clients tend to buy from known manufacturers and appreciate the image created by some form of protection (e.g. pat.pending, patented).

®™


a PRaCtICaL eXamPLe

WHICH PROdUCtS and SeRvICeS maKe UP OUR tURnOveR?

At present, every business operates in a competitive global environment, even in the domes-itic market, where the demand for global supply exists. This is why the overall competitiveness consists of the following factors:

• Technological competence • Client orientation in technical solutions and applications • Cost-efficiency and price competitiveness • The ever increasing share of service content of the overall supply.

A business should have a unique competitive advantage in their products in order to stand out and succeed in international competition.

• What are the products and what is the added value offered to clients? • How is the turnover divided between products? • What is the service partition or what are the additional services that complement the offering

of a business? • Which elements help our products to stand out from other suppliers (competitors) and how

does our company differentiate from others?

Oy Konelaite Ab offers advanced felling machines and forwarders in accordance with the Nordic Harvesting Method as well as life cycle services to ensure and support the use of the aforementioned equipment.

The company’s products offer added value to users by optimizing mechanized harvesting and timber transportation and by integrating for their part the continuous wood procure-ment system of a paper mill.

The turnover of Oy Konelaite Ab is divided between different product series as follows: • Product series A: has been on the market for five years (65% of turnover) • Product series B: a new product with a computer using Linux (25% of turnover) • Product series C: other spin-off.

The offered life-cycle services include: • Operating expenses guarantee against a separate agreement and charge • A possibility to monitor the essential functions and regular maintenance items with the

help of remote technology.

The company aims to compete with two essential product features: • By optimizing the use of wood as well as the logistics of harvesting (open Linux-based

data and control system including wireless data transfer) • By offering the smallest surface pressure available, causing as little injuries as possible

to the forest bedrock.

2.4. PROdUCtS and SeRvICeS assessment of the business environment


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Once a year, before the strategy planning circle, Oy Konelaite carries out: • A description of prior art in its own key technology areas• A summary of patent applications filed by its competitors.

The continuous monitoring of their two main competitors, while a patent office handles mon-itoring of the company’s own patent portfolio.

The company reacts aggressively to all known patent and trademark infringements with the assistance of a law office.In representation agreements, the representatives are obliged to monitor potential infringe-ments.

The company is investigating a licensing possibility in order to grant a production licence to a Brazilian manufacturer with South America as the market area.

• Do we utilize – and if so, to which extent – patent, registered design and trademark pro-tection, copyrights and trade secrets in our products?

• In which ways do we continuously follow and take advantage of the development of tech-nology as well as the progress of our line of business?

You can find help in, for example, the following: - Description of the prior art = public knowledge and technical solutions of the field - Analysis on the branch of technology = trends in patenting and patenting objects of

the field, operators in the field, countries with salient markets, essential R & D work and basic patents of the field.

• How do we automatically gain knowledge of new patent applications in the field? For ex-ample, competitor monitoring automatically gives information on new patent applications and patents of your most important competitors.

• How do we monitor potential infringements on our rights and how do we respond to them? For example by continuous monitoring of your own patent portfolio = is your own application mentioned when inspecting newer applications by other companies?

• How do we stop competitors from patenting certain solutions that can change the com-petitive situation? For instance by using a claim and nullification study = do you find in-formation to annul your competitor’s patent?

Patenting is profitable only, if the company can take advantage of protection in its business operations, is able to perceive infringements on the patent and has the resources to defend its patents.


The success of the company’s products is mainly dependant on client orientation and on con-sidering client needs. For your own competitive strength, it is equally important to:• Follow the development of technology • Follow the activities of your competitors • Respond to changes in your line of business or to your s’ operations • Control your patent portfolio and to respond to potential infringements.


a PRaCtICaL eXamPLe

fOR WHOm aRe We HeRe?

It is very important in view of future competitive strength and client oriented operation that the company is able to define its:

• Own marketing segments and related client profiles (client segments) as individualized as possible

• Geographical territories as accurately as possible • Competitors and their mutual interrelations regarding size and significance.

This makes it possible to recognize the client needs and to create added value - for which the client is willing to pay more - to the client with your own products and services.

This way you will also find it easier to find an ideal client group to which you can offer your services.

• Which are the exact marketing and client segments of the company? • In which geographical markets does the company wish to operate and where does it want

to sell their products and services? • What are the clients’ needs in the appropriate client segments? • Regarding the market segments in question, what is: - The total potential? - The company’s own business volume? - The market share? • Who are the other main operators (competitors) in each segment?

2.5. CLIentS and maRKetS

The marketing segment of Oy Konelaite Ab consists of forestry harvesters and felling machines that are in accordance with the Nordic Harvesting Methods.

The client segments of the company are: • Segment A: forestry harvesting contractors (85% of turnover) • Segment B: harvesting units of forestry companies (15% of turnover).

Our clients need to use advanced, efficient and environmentally friendly forestry harvesters in the Nordic Harvesting Method.

Marketing area Total potential Own marketing share

• domestic market about 50 M € about 15% (A- and B-segments) • other Nordic countries about 150 M € bout 6% (A- and B-segments) • other European countries about 450 M € about 3% (A- and B-segments) • North America about 400 M € about 1% (only A-segment) In total about 1,050 M €



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Profitability

turnover

Company E

Company C

Company D

Company F

OyKone-laite Ab

Company A

Company B

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An essential part of the globalization of a company is to be aware of the intellectual property is-sues in each country, where you intend to become established and to market your products.It is important to contemplate the ways in which we utilize industrial property rights, such as a patent, trademark or registered designs in different countries.In order to avoid negative and expensive surprises, we should find out the valid industrial prop-erty rights of our competitors in each country.

Oy Konelaite Ab has decided to carry out a survey on barriers to marketing, whenever they enter a new market. The study includes: • Patents of international competitors in the country in question • Protection of local operators in their own country.

The company makes a preliminary clarification with the help of espacenet-service (http://fi.espacenet.com).The final task is generally taken care of by Finpro, who will handle it with the assistance of an expert operating in the country in question. The company will always register its own trademark (HARVE®) in the country of destination. The company’s own pat-ents and other industrial property rights are aggressively and visibly introduced in client communications and bidding.The marketing manager is responsible for the above.

• How to make competitor monitoring a salient part of our company’s marketing activities? What do we monitor? Who in the marketing department is responsible for this monitor-ing?

• How do we find out, what kind of protection policy our competitors have implemented in different markets? Are there significant regional differences in the protection, for instance, with regard to our domestic market or the domestic markets of our main competitors; e.g. our competitor’s patent family clarification = in which countries has our competitor filed a patent application for its inventions?

• How do we avoid infringing on the rights of others? • How do we make sure that as we enter new market areas, we do not infringe patent rights

in the country in question? For example, a survey on barriers to manufacturing and mar-keting = making sure that you do not accidentally infringe on valid patents and end up with expensive legal proceedings.

• How do we stand out in the market with the help of protection and the effect it creates on our image?

• Which market areas do we manage through our own distribution and which areas do we handle by licensing out our solutions?

There are several services and databasesavailable for the use of companies.See examples on pages 62–63.


a PRaCtICaL eXamPLe

WHat IS OUR COmPanY’S mOSt eSSentIaL COmPetItIve StRengtH and ReLated COmPetenCe?

At present, companies are increasingly working in a certain partner network. This means that everyone can concentrate on their own core competence and do only what they know best and are good at; getting an opportunity to develop their skills in these areas. Businesses pur-suing this kind of co-operation accept as their group members – i.e. in the value network - only such companies that improve the total competiveness of the network.

Companies are encouraged to define such sectors in their operation that:

These sectors are easy to define by thinking about the following questions:

• Of what is the company organization especially proud? • In which sector of operation or technology is the company especially good at and able to

compete on a global level? • Which sector of the operation is most profitable? • In which sector should the company invest its limited resources in order to maintain and im-

prove competitiveness?

2.6. COmPetItIve StRengtH

the staff is enthusiastic

about

help to achieve good

financial results

make it possible to achieve world-class standards

Oy Konelaite Ab has defined its key competence areas as follows: 1. Thorough understanding of the forestry harvesting process 2. Development and implementation of a technical solution for a felling head 3. Developing control and measurement software in a Linux-environment 4. Environmentally conscious technical solutions regarding surface pressure, for instance.

As its top competence area, Oy Konelaite Ab has defined the development and manufac-ture of an advanced felling head, including data collection and wireless data transfer to the harvesting control system. This is an area, where the company definitely has world-class competence. The organization is interested in further developing the felling head, which constitutes its most important module with regard to both profitability and technical com-petitiveness.



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Top competence is the result of the company’s persistent activities and development work. The meaning of this is essential for the company’s financial result, which is why protecting it is a strategic question.

Oy Konelaite Ab has defined that regarding the felling head, they will do on-going monitor-ing of the branch of technology. This will be managed by a patent office.

The monitoring will be carried out with the help of competitor and status monitoring. The product development manager is responsible for interpreting the results.

The company will also try to protect such ideas of development that could buffer the cover-age of patent protection, even when the innovation is not commercialized. This is a way to stop the competitors from doing the same.

The company has bought a licence from an Israeli supplier for a Linux-software code and its utilization in a measuring environment.

As a strategic investment, the company has defined 1–2 patents per year, i.e. around 40,000 euros per year for protection costs.

• How do we assess our own competence with regard to other companies in our line of business? For example, by positioning our own technology in relation to main competitors in the field.

• Can we operate in global markets competitively, if we do not protect the salient solutions in our top competence sector – if the answer is ”no”, how do we protect them or in which areas does the volume of our business operation need or allow protection?

• How do we take the protection possibility and patents of other operators into account when comparing our alternative product development projects? For example, by investi-gating patenting of technology areas with the help of patent information.

• How can protection help us impede actions of other operators and impair product devel-opment in our key competence area?

• Can we improve our competitive strength or expand our key competence area by licens-ing in other companies’ sophisticated technologies, modules or partial solutions that are suitable for our company?

• Can we improve our competitive strength and reduce the development pressure of com-peting solutions by granting licences for our key solutions?

• How much are we prepared to invest in protection on an annual level and how do we make sure that protection is in relation with the marketing volumes and expectations? How much should we budget for protection?


HOW tO SeLL and maRKet COmPetentLY and COSt-effeCtIveLY

A good company marketing concept means a client oriented philosophy, to which the whole company is committed. This way the company:• Is better than its competitors in serving clients • Is able to achieve the goals it has specified • Realizes the client promise.

A marketing mix is a selection of those marketing tools that the company uses in order to achieve its goals in target markets. The company could define its own selection by consider-ing the following questions and alternatives: • How do you recognize the true and real client needs?

2.7. maRKetIng COnCePt and maRKetIng mIX

a PRaCtICaL eXamPLe

Oy Konelaite Ab investigates the needs of its clients with the help of six selected key clients. The selected key clients form the company’s “user club”. Key clients are always given the newest device and software versions and they agree to carry out operating cost monitoring and provision of systematic client feedback. In addition, all clients who have bought a ma-chine during the year, are interviewed by telephone once a year.

Oy Konelaite Ab prices their products in accordance with their position on the market, us-ing slightly lower prices than the three main suppliers, with a so-called “market leader mi-nus” pricing.

The company’s marketing mix is based on three main elements: • training sales network (sales representatives), selling and rewarding • two international fairs plus local fairs or exhibitions • self-made expert articles in trade magazines.

The company has invested in a good client information system, and information on clients and representatives are available in real time.

• What is the company’s pricing principle?- Cost plus pricing- market leader minus pricing- premium, i.e. high pricing- ”always the most affordable” pricing in the market- market prices

• What is the company’s marketing mix? - sales visits - sales and product training for agents - client symposiums - client visits to the factory or reference destinations - user clubs - fairs (general, field specific, own) - commercials and advertising campaigns - articles in magazines (technical articles, reference re-ports) - sales promotion, brochures, posters, mail shots, com-pany magazines, product information, annual reports, corporate and product videos - sales support material, transparency material, techni-cal specifications, sales argumentation - product guides and user manuals - press contacts - lecturing and/or membership in seminars of the field - Internet marketing



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Oy Konelaite Ab monitors client needs by annual client feedback enquiry. An outside expert organization investigates client views related to main competitors.

The company tries to introduce its innovations during the main trade fair in Leipzig (every other year), and brings forth visibly related patent protections in: • Products • Brochures • Animations • Offers • Advertising • Argumentation material.

The company believes that protection can significantly improve its marketing position: • Thanks to the high tech image related to the company brand • By gaining maximum points in technical comparisons carried out by a client • By avoiding granting ”additional” reductions compared to the market leader’s pricing.

• How do we monitor client needs and marketing trends systematically? Do we take advan-tage of client feedbacks and do we file them? Do we utilize key company groups and our competitors’ patent bases?

• When and how is an invention published? For example in a patent application, which has to be filed before publication; or merely in brochures, which means that competitors will not have possibilities for protection either?

• How does the marketing process utilize - especially in connection with the publication – our key competence, its solutions and related protections; e.g. a patent application, a utility model or a registered design? CF. fairs, public presentations, brochures, videos, animations etc.

• How do we take advantage of the trademark as a marketing tool? • Have our patents and registered designs been used actively in the marketing and argu-

mentation material? • How does our pricing take into account the benefits or competitive advantages provided

by the protected solutions? • How do we take advantage of the negotiating strength that protection gives us with re-

gard to our clients and competitors?


More benefits can be drawn from various protection forms (patents, registered designs etc.), when they are used actively in marketing and communication.

By utilizing intellectual property issues, the company can ensure the refunding of their invest-ment.


HOW dO We ImPLement and deLIveR tHe OffeRed PROdUCtS and SeRvICeS?

With the help of the order-delivery-process, the company implements and delivers the prod-ucts and services ordered by clients. The process can also include implementation of services during the entire life cycle of the product. In order to develop its competitiveness, the company must continuously:

• Make sure that the order-delivery-process is effective; maintain and develop the core com-petence included in the process

• Ensure that it is working with the right partners and that work has been divided correctly be-tween partners (“let the best person see to it”).

The controlled implementation of the offered life cycle services requires productization of these services.

2.8. ORdeR-deLIveRY-PROCeSS

a PRaCtICaL eXamPLe

Advanced products and short and reliable delivery times form a basis for the competi-tiveness of Oy Konelaite Ab. Investing resources in the quick and flexible order-delivery-process enables short delivery times, low inventories and a non-existent need for working capital.

The core competence of Oy Konelaite Ab in the order-delivery-process is connected with the management of material flows, extensively automated production of key components as well with testing and adjusting devices.

The company acquires component assemblies from specialized system suppliers, who are long-standing partners and therefore, answer for procurements, component manufacture as well as for welding and component assembly work.

Local collaboration partners trained and authorized by Oy Konelaite Ab are responsible for client training included in the machine delivery as well as for technical support during implementation.

A life cycle service offered by the company includes an integrated production line main-tenance carried out by itself or by a collaboration partner trained and authorized by Oy Konelaite Ab; the service also includes an operation cost guarantee and a software updat-ing service.



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According to the set goals in the business strategy, Oy Konelaite Ab aims to achieve maxi-mum performance from key processes. Invention proposals aiming at renewing operation modes are remunerated with a separate reward according to the initiative system. Opera-tive performance and innovativeness of ways of action are assessed by regular measure-ment and comparison (benchmarking). The comparison covers the investigation of new ways of action with the help of patent databases, trade literature and component suppliers. Unique methods and operation modes based on your own innovativeness are protected case-specifically, using appropriate means based on cost-benefit-control.

Oy Konelaite Ab assesses the performance and competitiveness of the network together with other members of the network. Non-disclosure agreements (NDAs) have been made between all members in the co-operation network.

• How do we make sure that when developing our operation modes and working meth-ods, we are not developing already invented solutions? For instance, working methods of manufacture or assembly.

• How will we know, whether we are trying to improve our competitiveness by introducing working methods that others have already developed and possibly protected?

• How can we judge, if our methods can be protected? How do we utilize potential protec-tions? Is protecting worth the trouble?

• In which ways can we seek solutions to a technical problem we have encountered in our production process?

• How can we encourage our staff to innovate and to develop our processes? Do we have an encouraging employment invention code and related operations models?

• How do we recognize potential collaboration partners that are ideal for us? For example by using patent databases to find our potential partners, subcontractors or licensors.

• How do we prevent leaks related to product and production technology? • Do we have extensive non-disclosure agreements?

You may find answers to the questions presented above by, for example: • continuous monitoring of prior art, which provides you automatically with information on

new patent applications in the monitored prior art • looking for technical solutions from patent databases


Regarding the order-deliver-process, the intellectual property system helps you to find out the so-called best practices and to protect your company’s competence. You may benefit signifi-cantly from new operation modes and working methods found outside your own line of busi-ness. Then you should also think about the novelty value possibly included in the new appli-cation.


1.assessment of the

business environment

8.Order-delivery-process

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2.9. SUmmaRY Of tHe BUSIneSS PROCeSS

2. BUSINESS IDEA

• How do we take the development of intangible assets into account regarding our business idea and strategy?

• Has our company protected its: - Company name, and if so, to which extent? - Product families or products with a trademark? - All versions of our domains in such a way that no-one

can disturb our availability with a similar domain? • Is licensing part of our business idea – if yes, in which

product/service sector or in which markets? • How do we confirm our knowledge on prior art, trends

and technical solutions?

1. BUSINESS ENVIRONMENT

• How do we distribute work internally with regard to managing IP issues?

• Who do we choose as our partners: - For managing industrial property issues - For acquiring technical and competitor information - For handling legal and contractual issues? • How do we secure contractually our relationship with

our most important collaboration partners? • How do we define, specify and agree upon our com-

pany’s employment invention issues or invention reward systems?

• What are the current typical protection practices in our field?

39

4. PRODUCTS AND SERVICES

• Do we utilize – and if so to which extent – patent, de-sign and trademark protection, copyrights and trade secrets in our products?

• In which ways do we continuously follow and utilize the development of technology and the progress of our line of business?

• How do we automatically gain information on new pat-ent applications in the field?

• How do we monitor potential infringements by others on our rights and how do we respond to them?

• How do we stop competitors from patenting certain so-lutions that can change the competitive situation?

3. VISION AND FOCUS

• How do we see protection as a strategic choice and definition?

• How aggressively do we try and want to protect our: - Company name? - Trademarks and designs? - Top competence areas or technical applications? - Key competence or key technology areas? • Are there any differences in our protection practices

between various geographical areas? • How do we protect the solutions of the key areas that

we have defined in view of product development, mar-keting and image effect?

• What is our vision regarding our brand or using the brand to stand out from others in the market?

• How do we find collaboration partners that can offer and sell completed innovations and solutions?

6. COMPETITIVENESS

• How do we assess our own competence with regard to other companies in our line of business?

• Can we operate in global markets competitively if we do not protect the salient solutions in our top compe-tence sector – if the answer is ”no”, how do we protect them or in which areas does the volume of our business operation need or allow protection?

• How do we compare the protection possibilities of alter-native product development projects?

• How can protection help us impede actions of other operators and impair product development in our key competence area?

• Can we improve our competitive strength or expand our key competence area by licensing in others’ sophisti-cated technologies, modules or partial solutions that are suitable for our company?

• Can we improve our competitive strength and reduce the development pressure of competing solutions by granting licences for our key solutions?

• How much are we prepared to invest in protection an-nually and how do we ensure that protection is in rela-tion with the marketing volumes and expectations?

5. CLIENTS AND MARKETS

• How to make competitor monitoring a salient part of our company’s marketing activities? What do we moni-tor? Who in the marketing department is responsible for monitoring?

• How do we find out what kind of protection policy our competitors have implemented in different markets?

• How do we avoid infringing the rights of others? • How do we make sure that as we enter new market ar-

eas, we do not infringe patents in the country in ques-tion?

• How do we stand out in the market with the help of pro-tection and the effect it has on our image?

• Which market areas do we manage through our own distribution and which solutions do we license out?

8. ORDER-DELIVERY-PROCESS

• How do we ensure that when developing our operation modes and working methods, we are not developing already invented solutions?

• How will we know whether we are trying to improve our competitiveness by introducing working methods that others have already developed (and possibly protect-ed)?

• How can we judge if our methods can be protected? How do we utilize potential protections? Is protecting worth the trouble?

• In which ways can we seek solutions to a technical problem we have encountered in our production proc-ess?

• How can we encourage our staff to innovate and devel-op our processes? Do we have an encouraging employ-ment invention code and related operations models?

• How do we recognize potential collaboration partners that are ideal for us?

• How do we prevent leaks related to product and pro-duction technology?

• Do we have extensive non-disclosure agreements?

7. MARKETING CONCEPT

• How do we monitor client needs and marketing trends systematically? Do we take advantage of customer feedbacks and do we file them? Do we utilize key com-pany groups and our competitors’ patent bases?

• When and how is an invention published? • How does a marketing process utilize – especially in

connection with publication – our key competence, its solutions and related protections, e.g. a patent applica-tion, a utility model or a registered design?

• How do we take advantage of the trademark as a mar-keting tool?

• Have our patents and registered designs been used actively in the marketing and argumentation material?

• How does our pricing take into account the benefits or competitive advantages provided by the protected so-lutions?

• How do we take advantage of the negotiating strength that protection gives us with regard to our clients and competitors?

41

3. PROdUCt deveLOPment PROCeSS

3.1. PROdUCt deveLOPment

3.2. CReatIOn Of IdeaS

3.3. ROUgH feaSIBILItY StUdY and evaLUatIOn

3.4. BUSIneSS CaSe defInItIOn

3.5. Stage Of deveLOPment

3.6. COmmeRCIaLIZatIOn

3.7. SUmmaRY Of tHe PROdUCt deveLOPment PROCeSS

43

3.1. PROdUCt deveLOPment

WHat IS OUR PROdUCt deveLOPment PROCeSS LIKe?

Product development is about creating, evaluating, developing or searching for new products and services. At the same time, those products or services that have lost their competitiveness for one reason or another, are discarded. Product development does not mean only creating innovations and new products, it also means making significant improvements in the technol-ogy or features (= maintenance planning) of existing products or services. Product develop-ment is implementing particularly the vision and focus defined by the company.

One of the biggest challenges in product development is project evaluation. If you choose the wrong direction in the beginning of product development, all the subsequent decisions will be made within the faulty choice.

Another major challenge in product development is to avoid overlapping development. 30–50% of investments in product development go wrong, because companies are developing solutions that have already been invented and possibly protected somewhere else.

In order to ensure a successful and effective product development process, the company should think about the following questions, for example:

• What is the most essential purpose of our product development? • Is our product development focused solely on the development of new products and serv-

ices or also to considerable improvements of already existing products?

In which way have we implemented the distribution of work and responsibility with regard to the product development processes? • How do we make sure that our product development is concentrated merely in supporting

our own key competencies; otherwise, we take advantage of our strategic partners? • How do we improve the accuracy of project evaluation? • How do we avoid overlapping development; in other words, how do we make sure that we

do not reinvent something that has already been invented somewhere? • How do we make sure that the documentation of the product development process is carried

out appropriately?

For example, right of use in the home country is based on documented product development process.

• In Finland, 25% of patent applications filed by private people during 1992–2001 were granted a patent.

• Some 60% of respective applications filed by companies led to patents.

• So less than a half (47%) of all patent applications led to obtaining a patent – think about cost-efficiency!



CReatIOn Of IdeaS





COmmeRCIaL-IZatIOn

a PRaCtICaL eXamPLe

WHat BRIngS aBOUt IdeaS and InnOvatIOnS?

Innovations and ideas on product development are mostly based on a systematic follow-up of, for instance, technology maps, research results of research institutions and universities, com-petitors’ activities and client and marketing requirements. There are however, also companies where ideas generate informally - for example, because of the brainstorming of individual in-novators.

Innovations and related business ideas can also emerge from research projects of universi-ties, research institutes and other institutes of higher education or even by a so-called “free inventor”.

In order to ensure the competitiveness and innovativeness of a company, you should carefully consider and make conscious decisions on the following subjects, for example:

• What is the way for our company to seek and find new ideas? Is our product development process based on systematic monitoring of different idea and information sources or is in-novation a free form approach?

• What are the most important idea and information sources that we monitor actively? • How do we take recognizing and analyzing customer needs into consideration during the

product development process and, in particular, during the early phase of development?

3.2. CReatIOn Of IdeaS

In Oy Konelaite Ab, the innovation and creation of ideas is based on a systematic monitor-ing of the marketing and competitive situation, as well as on close co-operation with key clients and partners. Generally, ideas are based on individual ideas of the company’s key persons; i.e., the ideas are created ”by accident”.

The atmosphere in the company is innovation-friendly, which encourages the personnel for creative thinking and innovating. In practice, there are active suggestions schemes, in which even the smallest development ideas regarding, for example, working practices are considered and rewarded. Remuneration for actual employment inventions is systematic with clearly defined rules in writing.

45



Oy Konelaite Ab follows actively all IP information of its own line of business.Ongoing monitoring and analyzing the branch of technology has been outsourced to a pat-ent office, which reports to the company in accordance with the contract.

The company’s internal information management and distribution has been organized in such a way that all necessary IP information is available to anyone, who should need it. In practice, IP information involves the managing director and five other people working with product development and marketing. The principal responsibility resides with the compa-ny’s Product Development Manager.

The company is actively looking for ways to improve their existing products as well as ready solutions to encountered problems from other operators. Moreover, the best methods for wireless data transfer are strived for. The company’s suggestion scheme and employment invention practices are up to date, encouraging staff to be innovative. Even rather small initiatives are encouraged. The goal is to have 1-2 new initiatives per person in a year.

• How does our company utilize the IP system as a source of ideas to complement other sources of client, competitor and innovation knowledge? You can also use rough clari-fication and analysis of prior art. With the help of the above, you can find out about the public knowledge and technical solutions of the field, trends in patenting and patenting objects, operators in the field and countries doing research on the field.

• How do we make sure that the information provided by the IP system is in the right format and available to all those that need it? How is collecting, managing and distributing infor-mation organized and who is responsible for these tasks?

• How do employee innovation issues and their rewarding promote innovation activities and encourage creative inventiveness during the innovative phase?

• How do we make sure that a small product improvement in maintenance planning is eval-uated also from the viewpoint of protection?

• How do we utilize the Internet as an information source for creative ideas?

Of all granted patents more than 80% are employment inventions!


The creative phase in the product development process can mean improvements in products, i.e. maintenance planning, or it can mean developing new products. You should utilize the intellectual property system and its tools, for example, for:

• Exploring new ideas and innovations • Exploring new product features and improvements • Looking for new possibilities in your competitors’ solutions, both in their strengths and weak-

nesses • Seeking information on prior art in your line of business as well as in other fields.

Employment inventions are an essential part of the intellectual property system. Rewarding for employment inventions is an important incentive in encouraging and committing the compa-ny’s key persons; furthermore, it creates an innovation-friendly atmosphere.



CReatIOn Of IdeaS





COmmeRCIaL-IZatIOn

a PRaCtICaL eXamPLe

HOW dO We evaLUate and fURtHeR deveLOP IdeaS and InnOvatIOnS?

The most important decisions in a process are made in the beginning of the product devel-opment process. A major part of the expenses of the whole process are bound by decisions made in the initial stage. At the same time, those decisions have a crucial impact on the suc-cess and result of the product development process.

Emerged and recognized product concepts are analyzed during the rough feasibility study. Based on the results, preliminary definitions are made, for instance, for product properties and basic solutions meeting client needs as well as for the fields of know-how and resources re-quired for implementing them. The most important goal of the feasibility study is to prevent overlapping development and reinventing already patented or otherwise protected solutions. It is also necessary to monitor whether your competitors have filed patent applications or launched products or solutions that are similar to the ones you are currently developing.

At this stage, it is also recommended to compare the prior art and skills of your competitors and to investigate technological and other trends of the field. You should also consider how your company could take advantage of the best practices of either competitors or even other branches of technology or lines of business.

3.3. ROUgH feaSIBILItY StUdY and evaLUatIOn

Oy Konelaite Ab uses value analysis during the feasibility study in order to ensure that the emerged ideas meet client needs.

Basic technical solutions of products are created and defined during the feasibility study. The company also ensures that the resources and fields of know-how required for imple-menting the ideas are either already available or obtainable from partners.

In addition, during the initial stage of the product development process Oy Konelaite Ab in-vestigates and analyzes, how the environments of new product concepts are protected.

47



Oy Konelaite Ab strives to improve the speed of its product development process by utiliz-ing the intellectual property information more extensively. Outsourcing information acqui-sition and various investigations increases the professionalism of monitoring and releases resources for development. The company budgets 20,000 euros a year for monitoring.

The company is also trying to cut down overlapping development work within the organiza-tion. Prior art of competitors and the whole line of business is followed as an ongoing proc-ess. The company aims to recognize its own narrow segments with which it can achieve a competitive edge. The responsibility of the above resides with the Product Development Manager.

• How do we utilize the IP system as an information source, especially during the initial stage of the product development process? What does the pre-screening of ideas, clar-ification on prior art and novelty search mean to our company?

- During pre-screening, you roughly investigate, how the environments of potential products or methods are protected by, for instance, patents.

- During clarification on prior art you investigate and analyze certain technologies and methods in more detail.

- A novelty search is used to make sure that your own innovation or idea is novel and possibly patentable.

• How do we avoid developing already developed and possibly even patented solutions in the key and top competence areas by using, e.g., analysis on the branch of technol-ogy or by searching for a technical solution? This way we can find out the status of the field regarding patenting, and we will also know whether our top technological applica-tions are free to use.

• How do we expand information retrieval to apply to other lines of business as well, not just our own, in order to find ready solutions to our potential problems? Are the solutions exploitable? In addition to competitor monitoring, you can also try to find a technical so-lution from patent literature or from other lines of business.

• Do we use our own resources in information retrieval or should it be outsourced? If we outsource the task, who do we use and to which extent? For instance, outsourcing a novelty search will cost about 1,000–1,500 euros.


The speed and accuracy of the product development process have become essential require-ments for success and a competitive edge for companies in the rapidly changing markets. The intellectual property system helps us rise to the challenge.



CReatIOn Of IdeaS





COmmeRCIaL-IZatIOn

a PRaCtICaL eXamPLe

WHat IS tHe BUSIneSS POtentIaL Of OUR neW PROdUCtS?

Alternative developments or scenarios are created for the basis of a business case definition. These scenarios contain assessments of the marketing potential, prior art and commercial impact that the new product or service may have on the operations of the company. The sce-narios are typically created in such a way that the most positive, the most negative and the most probable assessment is made of the results of the product development process. It is important to make a plan of progress, which will then be applicable in all the scenario alterna-tives mentioned above.

A well-founded and accurate outlook on the business potential of the results of product devel-opment is made on the basis of different scenario alternatives. The business potential is influ-enced by, for example:

• The properties of a new product matching client needs as well as advantages and additional values offered

• The market attractiveness, including the size and growth rate of the market as well as the competitive situation.

A business case definition should also include a risk and sensitivity review. Risk analysis cov-ers both technical and commercial reviews.

3.4. BUSIneSS CaSe defInItIOn

Oy Konelaite Ab has created three scenarios on the impact of a new product generation. According to an assessment that the company has made on the basis of market intelli-gence, the total market will grow about 8% per year for the next five years.

Positive: With the help of a new product generation, it is possible to increase your own mar-ket share by 5% during the reference period

Negative: The competitors can answer the competitive situation with their own product im-provements. Market shares remain unchanged, and the general price development in the field is eating away the coverage of companies.

Probable: Oy Konelaite Ab will be able to increase its market share by about 2%, but the total markets will grow by just 4% a year.

Thanks to a new product generation and slightly unsuccessful product launches of its com-petitors, Oy Konelaite Ab believes that it will be able to increase its market share especially in its primary market area.

The new product generation will accelerate the felling process by about 5% and in good conditions even by 10%.

49



Oy Konelaite Ab is about to launch a new product generation and has defined the business case mentioned above. The company monitors and investigates the latest technology so-lutions and patent applications of its three most important competitors with the help of the espacenet service. During its own R & D process and as part of risk management, the com-pany is monitoring the registration of patents by its competitors. This way the company will cut down overlapping and gain information on ongoing projects of its competitors.

The company utilizes actively and systematically analyses on competitors and prior art, when evaluating trends of the field. The above-mentioned tools are used to complement other sources of client and market information in order to ensure that the products meet cli-ent needs as well as possible. The Marketing Manager is responsible for utilizing the above-mentioned tools. The Marketing Manager is also responsible for the realization of the earn-ings logic of the product generation.

• How do we anticipate and prepare ourselves for changes in the market and competitive situation? Competitor monitoring gives us automatic information on new patent applica-tions and granted patents of the competitors.

• What is the most effective way to utilize the IP system as a risk management tool? For example, a survey of barriers to manufacturing and marketing will help to ensure that no valid patents are infringed.

• How do we utilize the possibility for ongoing monitoring of prior art and competitors? How can we use this information in the risk management of product development?

• How do our clients benefit from our competence in managing the IP system? How can we put our competence and know-how in marketing and product development to use in order to ensure that our products meet client needs?

• Does the business case definition put emphasis on our own intuition, meeting client needs, competitor and prior art analysis and benchmarking or, for example, value anal-ysis?


Companies working both in domestic and international markets should be prepared to re-spond to the changing market and competition situations. These changes should also be considered in the product development process.


a PRaCtICaL eXamPLe

Oy Konelaite Ab focuses its own product development in the user interface, power transmis-sion, automation and control systems, measuring devices and the felling head of a forestry harvester. Entire structures designed (and possibly manufactured) by outside companies are mechanical parts (body, shields), the cabin and the crane.


CReatIOn Of IdeaS





COmmeRCIaL-IZatIOn

HOW and WItH WHICH ReSOURCeS dO We deveLOP tHe PROdUCtS and SeRvICeS tHat We Have CReated?

During the development phase, previously chosen ideas and innovations are produced. This phase results in the following:

• Product documents (drawings, product structures, instructions etc.) • Prototype of the product. At the same time, preliminary plans are made of manufacturing or

outsourcing the manufacturing of the product as well as of marketing, sales and distribution of the product. In the beginning of the development stage, decisions are made regarding the parts that the company produces itself and respectively, those where solutions of other companies can be applied.

During surveys in which the progress of the development stage is monitored, decisions re-garding the continuance or quitting of the process are made (go - no go -decisions). The sur-veys are also used to investigate whether the absolute requirements and other objectives set for the product are realized.

3.5. Stage Of deveLOPment

51



With regard to the most important sectors of its products, Oy Konelaite Ab develops the best possible technical solutions by itself or uses applications developed by others. In order to ensure the unparalleled standard of its technical solutions, the company has specifically de-clared responsibilities for the different sectors of technology. In order to monitor technology maps and the development of the latest state-of-the-art technology, all required information is collected during the development phase of separately defined information sources (e.g., patent databases, fairs, trade magazines, component suppliers, products of competitors etc.). At the same time, the novelty value and potential barriers for manufacturing can be confirmed. Oy Konelaite Ab aims to emphasize its technical head start in the chosen sectors and to protect the solutions it has developed as cost-efficiently as possible by utilizing the protection of a registered design and patent.

• How do we choose the technical solutions and potential new trademarks that need pro-tection?

• How do we choose protection measures (utility model, registered design, patent)? • How extensive protection do we need? • How do we find out about existing technical solutions that fulfil the product characteris-

tics that we seek? • How do we confirm the novelty value of the technical solutions that we have developed? • How do we find out about the possible manufacturing barriers? • From whom can we license or buy completed, applicable solutions?

Answers to the questions above can be found in patent databases, such as: • Clarification on prior art • Analysis on the branch of technology • Competitor analysis • Search for a technical solution • Monitoring the branch of technology: - Solutions can be found in respective products - Solutions can be found in applications of different branches of businesses utilizing the

same technology.

Patents that are not monitored and defended are mainly just very expensive ways of making your know-how public. Therefore, it is important to think carefully, which innovations you wish to protect.


The IP system helps companies to accelerate their product development, avoid wasting mon-ey on reinventing solutions that have already been invented and to avoid infringing intellectual property rights of others.

During the development stage at the latest, the company must decide how, when and what it wants to protect. It is recommended to seek professional expert assistance (patent offices), when choosing the ways of protection.


a PRaCtICaL eXamPLe

The selected key clients, “user club”, carry out the so-called field tests of the 0-series products of Oy Konelaite Ab. The tests are carried out according to a testing scheme drawn up by Oy Konelaite Ab. A designated test laboratory is the company’s long-term collaboration partner and responsible for performing the capacity measurements.

The starting period is the last stage of the product development process of a new prod-uct, and it is carried out by Oy Konelaite Ab according to a specified model. People re-sponsible for procurement and production have their own checklists of measures related to starting the production.

Respectively, launching the product on the market – commencing marketing and sales – follows an approved pattern as well. When launching a product, the main emphasis is put on those market areas and client segments that will probably benefit most from the new product, or whose needs were possibly the reason for starting the development a new product. The home market and key clients of the user club of choice are always the first references for new products and product generations.


CReatIOn Of IdeaS





COmmeRCIaL-IZatIOn

HOW dO We COmmeRCIaLIZe tHe PROdUCtS and SeRvICeS We Have deveLOPed?

The commercialization of the developed product comprises of:

• Testing • Starting the production• Preparing for the distribution.

The testing phase includes testing the product’s technical properties, test marketing and fi-nalizing economic reviews. Measurement results on the product’s performance, definitions re-garding the finishing of the product and the so-called 0-series of the product are all obtained during the testing phase. During reviews included in the testing phase, alternatives regarding the continuance or interruption of the product development process are considered.

In the starting period, the product is finalized on the basis of results gained from tests and test marketing. Market area-specific special needs are also defined, and production, marketing and sales are started. During the starting phase, it is important to manage the scheduling and simultaneousness of different operations.

3.6. COmmeRCIaLIZatIOn

53



Procedures included in the standardized test plan used by Oy Konelaite Ab help to ensure that the newly developed product at the very least fulfils the objectives set for it. The test plan includes procedures that can be used together with patent databases to investigate and recognize the risks related to the products and processes. Before field tests, the fol-lowing must be checked: • Schedule and critical dates for the protection of the product • Trade secret contracts with the test client.

Oy Konelaite Ab aims to leave the protection of the invented technical solutions as late as possible. When the 0-series has been tested and approved, the company will pay an ad-ditional bonus reward to members of the development team.

During the whole product development process, the company is very strict about the proper documentation of everything. The documents contain dates and names of all the persons that have been present, including the time. All this is important regarding the right of use and, on the other hand, the employment invention.

The right of use enables the utilization of your own innovation, as long as you can show that your innovation was made before the date your competitor filed its patent applica-tion.

• How can we make sure before testing the product outside our own company that all planned patent applications etc. have been filed and registered?

• How do we check that the documentation of the product development process has been carried out properly? For example, the right of use may be based on good docu-mentation.

• How can we recognize the potential and risks related to licensing the product’s manu-facturing?

• How can we discover the potential marketing barriers? • How do we make sure that the methods used and the local production of the product

have not been protected?

You may find answers to the above-mentioned questions, for example:• With the help of monitoring the branch of technology, competitor monitoring and a sur-

vey on barriers to manufacturing and marketing.


The intellectual property system offers a chance to review recognized risks during the testing phase. This can be done by assessing the functionality of known technical solutions protected by competitors as well as by evaluating the latest development and protection measures of the competitors.

With the help of a separate survey on barriers to manufacturing and marketing, it is also pos-sible to make sure that valid patents will not be infringed by accident.

55


CReatIOn Of IdeaS



COmmeRCIaL-IZatIOn

3.7. SUmmaRY Of tHe PROdUCt deveLOPment PROCeSS

COMMERCIALIZATION

• Recognizing the risks of technical solutions, utilizing:

- Monitoring the branch of tech-nology

- Competitor monitoring - Survey on barriers to manufac-

turing and marketing. • Ensuring planned protection

measures, for example novelty search

• Making sure that all planned pat-ent applications etc. have been filed and registered

BUSINESS CASE DEFINITION

• Competitor and branch of tech-nology analysis in evaluating trends

• Competitor monitoring for predict-ing changes in the competitive situation

• Risk management and elimination of overlapping in product devel-opment

• Survey on barriers to manufactur-ing and marketing

CREATION OF IDEAS

• Using patent information as source for ideas:

- Rough clarification and analysis on prior art.

• Organizing acquirement and dis-tribution of information

• Employment inventions and re-ward system to encourage and enhance the commitment of the personnel

ROUGH FEASIBILITY STUDY AND EVALUATION

• Patent information as information source, utilizing: - Pre-screening - Clarification on prior art - Preliminary novelty search. • Looking for technical solution from other fields as well

STAGE OF DEVELOPMENT

• Recognizing existing technical solutions• Ensuring the novelty value of technical solutions• Clarification of manufacturing barriers• Tools: - Clarification on prior art - Analysis on the branch of technology - Competitor analysis - Search for a technical solution - Monitoring the branch of technology • Selecting solutions for protection and choosing potential

new trademarks • Selecting protection measures (utility model, registered

design and patent)



57

4. ImPLementatIOn


tRaInIng and ImPROvIng COmPetenCe

familiarizing yourself with intellectual property issues

(e.g. with the help of this workbook)

Utilization in the business process

Utilization in the product development process

Summary and refining, final salient choices from viewpoint of the

competitive factor

Utilization in everyday operations throughout the entire organization

59

The most important purpose of this workbook is to help the company management to under-stand and utilize the intellectual material system in the modern international business environ-ment as:

• An information source• IP protection.

This workbook is meant to be a tool that both the marketing and product development person-nel can use to their advantage.

The workbook can be used in connection with the company’s standard strategy planning cir-cle, but it can also be used as a separate planning project in order to make intellectual prop-erty issues one of the company’s competitive factors.

Invention agents and consultants and other experts are available to facilitate the implementa-tion of the workbook. These experts will assist you in utilizing the workbook and in implement-ing the related planning process. Information needed to start a project can be quickly obtained from NBPR or from invention agents.

Before starting, you should carefully consider, what to do yourself and for what you might consider using experts outside your company. Going through the process, requires, approxi-mately, the following:

• As part of your business strategy, 3–5 workshops in the period of less than three months • As a separate project, about three workshops in two months.

It is good to know that the responsibility of IP issues as a competitive factor of the company is distributed to:

• The Managing Director for strategic choices • Marketing Management with regard to market and competitor information and their utiliza-

tion • Product Development Management regarding the product management process and related

choices and decisions.

The initiator of the whole project in the company could be the Sales or Marketing Manager. This way intellectual property issues would not be handled as something related only to prod-uct development.

fROm PLan tO PRaCtICe

61

aPPendICeS


SeRvICeS and dataBaSeS

Services

For investigation, monitoring and analyzing procedures related to product development, marketing and networking, see the following, for example: • National Board of Patents and Registration of Finland (NBPR) www.PRH.fi • VTT Technical Research Centre of Finland, information service: www.vtt.fi/inf/tiedonhankinta/ • Patent agencies, e.g. The Association of Finnish Patent Attorneys, www.spay.fi • Innovation agents in T&E Centres, www.te-keskus.fi • Foundation for Finnish Inventions www.keksintosaatio.fi/ • University libraries, for example the library of Helsinki University of Technology, http://lib.hut.fi/

Advice on patents etc.:• Innovation agents in T&E Centres (T&E = Employment and Economic Development Centre),

www.te-keskus.fi • National Board of Patents and Registration of Finland (NBPR), advisory services, www.PRH.fi • Innovation centres and agents in universities, e.g. TKK innovation centre, http://innovaatiokeskus.tkk.fi • IPR University Centre, www.iprinfo.com/ • Foundation for Finnish Inventions, www.keksintosaatio.fi/ • Patent agencies; see, for example, The Association of Finnish Patent Attorneys, www.spay.fi

Applying for a patent, application process • Patent agencies; see, for example, The Association of Finnish Patent Attorneys, www.spay.fi

Training related to patents and information search, for example: • National Board of Patents and Registration of Finland (NBPR), www.PRH.fi • VTT Technical Research Centre of Finland, information service: www.vtt.fi/inf/tiedonhankinta/

Advisory, training and information services regarding trademarks and designs; for example: • National Board of Patents and Registration of Finland (NBPR), advisory services, www.PRH.fi • www.NBPR.fi/fi/tavaramerkit/ennakkotutkimus.html

Advise on company names, for example: • National Board of Patents and Registration of Finland (NBPR), advisory services, www.PRH.fi

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Databases

Patent information from various sources

espacenet®-database http://fi.espacenet.com The European Patent Organisation offers easy to use, free access service, which contains in-formation on more than 30 million inventions in different countries, some of them from as early as the 1920s.

Databases of the National Board of Patents and Registration of Finland (NBPR) www.PRH.fi/fi/tietokannat.html The register of patents contains information on Finnish (FI) patent applications, including their validity dates, from 1960–today; trademarks, designs, utility models.

Databases of other patent offices Each patent office has their own databases that contain only the publications by this particular office; for example, applications or patents of only the USA (www.uspto.gov/patft/).

Chargeable sources of patent information based on fixed prices Micropatent, Delphion etc.; publications of the most important patent offices. Easy to use. There is often a chance for analyzing and visualizing results. (www.micropat.com, www.delphion.com)

Chargeable databanks STN, Dialog and Questel.Orbit, which all offer databases that contain refined databases, for example DWPI (Derwent World Patents Index), chemical abstracts etc. Diverse search analy-sis and visualization possibilities. Also easy to use services such as STN Easy for people work-ing in product development. (www.stn-international.de, www.dialog.com , www.questel.orbit.com)

Information on trademarks

Trademark database of NBPR www.PRH.fi/fi/tavaramerkit/tavaramerkkitietokanta.html

Designs protected in Finland

DesignsNet of NBPR www.PRH.fi/fi/mallioikeudet/mallinetti.html

Information on companies, company names etc. Trade register www.PRH.fi/fi/kaupparekisteri.html

Business Information System (BIS) www.ytj.fi


SOURCeS Of fInanCIng

It is possible to get funding for the development of intellectual property issues from the follow-ing public sources:

Foundation for Finnish Inventions www.keksintosaatio.fi, tel. 020 737 30000 The Foundation for Finnish Inventions supports and promotes Finnish inventing as well as the development and utilization of inventions. The basic services of the foundation comprise con-sultancy and evaluation of inventions as well as funding the protection, development and mar-keting of inventions. The salient criteria for a positive funding decision are: the market potential, inventiveness and patentability of the invention as well as the level of technology. Clients seek-ing funding from the foundation are private persons and small enterprises.

Allowances www.keksintosaatio.fi – funding The Foundation for Finnish Inventions can grant an allowance for patenting, product develop-ment and commercialization expenses related to development of the invention. Paying back the allowance is conditional: if the invention project is commercially successful, the allowance must be paid back to the foundation. If the invention cannot be commercially utilized, the in-ventor is not obligated to return the allowance to the foundation.

Subsidy The Foundation for Finnish Inventions may grant smallish sums as subsidies. A subsidy is pri-marily intended for inventions still in the creation or testing phase, i.e. for the initial costs of the development of inventions. The financing decision is made after the evaluation of the inventive-ness, functionality or cost-effectiveness of the new idea.

Scholarships granted by the Runar Bäckström foundation The purpose of the foundation is to promote and encourage inventing for the benefit of Finn-ish enterprises. The foundation grants once a year several scholarships helping to promote projects containing inventions.

Employment and Economic Development Centres (T&E Centres) www.te-keskus.fi

Financing the development projects of small and medium-sized enterprises www.te-keskus.fi – financing – entrepreneurship – developing) Aimed at the development projects of small and medium-sized enterprises in order to improve the standard of the products and production methods of the companies as well as to improve business and marketing skills, globalization and the prerequisites for founding and operation of the businesses. The funds can be used for the expenses resulting from the development projects of the products and production methods as well as for expenses emerging from the investigation of the company’s founding and operating prerequisites.

Finnish Funding Agency for Technology and Innovation (Tekes) www.tekes.fi, tel.010 521 51 Tekes is the financier and activator of challenging research and product development projects of companies and research institutes. Tekes helps companies to change an idea into business by offering financing and expert services.

Preparation financing www.tekes.fi/rahoitus/yritys/valmistelurahoitus.html A company can use preparation financing for contracting out investigations to improve the preparation of research and product development projects and to promote the internaliza-tion of companies, development of business activities and to encourage co-operation with re-search institutes and to utilize information technology in business operations.

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Product development aid www.tekes.fi/rahoitus/yritys/mita_rahoitusta.html Mainly intended for research projects that form a basis for the development of products and services. Product development aid can also be obtained for preliminary clarifications of projects.

Product development loan and equity type product development loan www.tekes.fi/rahoitus/yritys/mita_rahoitusta.html Aimed at projects that generate a product or service that will be placed on the market.

Loan for starting up a business www.tekes.fi/rahoitus/yritys/perustamislaina2.htm This loan is meant for the foundation phase of technology enterprises to share economic risks involved in the founding of companies.

Developing the business idea (“Liksa”) www.tekes.fi/rahoitus/yritys/liksa.html www.liksa.info A financing service (called “Liksa”) provided by Tekes and Sitra together is meant for the re-finement of the business plan of newly started technology enterprises, persons founding a technology enterprise and companies on the threshold of bulging growth.

Sitra, the Finnish Innovation Fund www.sitra.fi Liksa, see the previous item.

Finnvera www.finnvera.fi Finnvera may be used to fund the company’s operation and development for the entire life cy-cle of the company. Targets of financing can be, for example:Setting up a business, development of products or operation, company growth, investments (both tangible and intangible) and generational changes and other business arrangements.

Workplace Development Program (Tykes) (2004-09) www.tykes.fi.

Development projects The funds are aimed at supporting projects that not only increase the productivity of workplac-es (quality of products and services, job organization and work processes, utilizing new tech-nological applications) but also enhance wellbeing (chances for personal development and influence on matters). Companies from all lines of business and from the whole country can participate in the programme. The areas of focus of the programme are small and medium-sized enterprises and expanding companies. The programme may grant financing for expert assistance fees of projects, and it passes information on good practices and chances for co-operation.

Development companies of municipalities Some municipalities grant financing for patenting and equivalent projects either directly or through the development companies of municipal federations. For instance, Helsinki, Espoo and Vantaa are capital investors through Spinno-seed (and Seed-cap).

Other examples are Etelä-Savon Pääomarahasto Oy, Midinvest Management Oy (7 different financing companies, e.g. Midinvest Fund PH I Ky in Päijät-Häme, including the towns of Lahti and Heinola), Lapuan Pääomarahasto Ky etc.


gLOSSaRY

An investigation on potential co-operation companies Basic research to find appropriate collaboration partners or companies that could offer complete solutions and expertise or possibly offer licences for sale.

Brand A trademark or a company name, which the clients have be-come widely aware of thanks to significant marketing input; contains often a client promise.

Claim and nullification study A study in which it is investigated, if information suitable for nullification of the patent can be found.

Clarification and analysis on prior art The prior art can be investigated through public knowledge and technical solutions of the field. Trends of patenting and patenting targets can be used in analyzing what is investigat-ed and where.

Competitor analysis An analytic comparison of the companies working in the same line of business, based on pre-defined parameters and includ-ing, e.g., analyses on patenting and patent targets as well as on the latest trends.

Company name The company name that should indicate the form of enter-prise and fulfil the requirements of the trade name act. Exclu-sive rights can be obtained by filing a basic declaration in the trade register or, in some cases, by establishing the company name.

Comparison (benchmarking) In benchmarking, you try to learn from more experienced or-ganizations by comparing their operational performance and procedures to those of your company.

Competitor monitoring Continuous monitoring of the actions of selected competitors and information on new patent applications and granted pat-ents etc. is automatically obtained.

Copyrights Copyright protects literary or artistic works. A copyright can be granted if the product fulfils the requirements for the con-cept of a work. A protected work is the result of its creator’s original creative work.

0-series Before starting, the production of a commercial product a 0-series confirms the final product tests and gives consumer response that corresponds to the final product.

Design right A design right provides protection for the design of a product or part of a product. The target of protection is always a con-crete product or part of such a product, and must be visibly perceivable at all times. A design right is gained by register-ing it. By registering the design, right the owner is with certain exceptions granted an exclusive right for utilization of the de-sign.

Domain A domain name defines the email addresses and www-ad-dresses, e.g. www.domain.fi.

Employment invention Invention made by an employee and related to the operation of the employer or the same group.

EPOEuropean Patent Office.

Establishment Starting a business in a certain target market.

Examination of patentability The examination to confirm that your own invention is novel and inventive enough.

Go/no-go -decision Is a decision upon continuation of the project following each phase of a product development project.

Identification of potential licensors A clarification of parties possibly interested in licensing an in-vention of the company.

Industrial property rights Industrial property rights are intellectual property rights, which mean intangible rights, i.e. human capital. Industrial property rights are exclusive rights that protect marks used as symbols for inventions, products and services and the outward appear-ance of a product.

Intangible assets Intangible assets consist of the skills and innovative power of the employees, the embedded information in the structures and processes of the company, the corporate image, trade-marks and intellectual property rights as well as of client and co-operation relationships.

Intellectual capital Skills and expertise gained through education and experi-ence

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Intellectual property systemProtection methods of competence, containing both technical information sources and competitor information sources.

IPRIntellectual property rights. Cover both copyrights and industrial property rights.

Key competence area Refers to the company’s best expertise; competence that has developed over a long-term operation, and to which the com-pany concentrates its resources. Forms the basis for the com-pany’s competence and skills.

Life cycle service The entire life cycle of the delivered product is covered by services that take care of the usability, performance improve-ment and the disposal of the product.

Marketing mix Client oriented corporate philosophy and a summary of meas-ures that help the company serve its clients better than com-petitors; helps the company achieve its goals in target mar-kets.

Monitoring the branch of technology Monitoring the branch of technology provides you automati-cally with information on new patent applications in the moni-tored field.

NDANDA = non-disclosure agreement defines the parties’/part-ners’ trade secrets and the obligation of non-disclosure.

Novelty search An investigation to confirm, whether your own invention is nov-el or whether it has previously been introduced in patent litera-ture or in some other kind of literature.

Patent An exclusive right granted by the society to an inventor who can, for a specified period, prohibit others from professionally utilizing the invention. In exchange for the exclusive right, the inventor must allow the publication of his/her invention.

Patent family clarification Clarification to state the countries in which a patent application has been filed for the invention.

Priority claim A priority claim can be made for a patent application referring to an invention that has been illustrated in some previous ap-plication within 12 months preceding the filing date. When a priority claim has been made for an application and the nov-elty and inventiveness of such an invention is being assessed, it is deemed that the invention has arrived at the office at the same time as the first patent application.

Patent policy Principles and procedures concerning the company’s patent issues. The purpose of the patent policy is to support the com-pany’s business operations.

Preliminary study Before filing a patent application, a company must perform a preliminary study in order to investigate potential novelty bars that could prevent patenting the invention.

Recipes A product document used particularly in the food industry.

Rough clarification and analysis of prior art Clarification of the public knowledge and technical solutions of the field plus an analysis of the development trends, operators and lines of business.

Scenario Scenarios are descriptions of alternative or possible diverse futures that are based on a logical chain of events.

Search for a technical solution Inter alia, patent literature can be used in searching technical solutions for problems emerging in a product or a process.

Status clarification An account of the status of the competitor’s patent applica-tions as well as on granted patents and their validity.

Survey on barriers to manufacturing and marketing A study to investigate that existing patents are not acciden-tally infringed.

Technology map A technology map is a description of the hypothetical future and foreseeable changes in the technology under inspection.

Top competence area The top competence area, in which the company has excel-lent competence and of which the most powerful competitive strength of the company is formed.

Trademark A distinctive mark (e.g. a word, a slogan, a graph or any com-bination of the above) that separates products or services pro-duced by the company from those produced by its competi-tors. A trademark holder obtains the exclusive right by regis-tering or establishing the trademark. A trademark can be held in force for as long as desired.

Trademark search A search carried out to find out, whether the trademark is avail-able.

Utility model A utility model is an exclusive right similar to a patent. A utility model holder has the right to prevent others from profession-ally utilizing the invention accordant with the utility model. A utility model is targeted particularly for an invention that does not fulfil the level of inventiveness required for a patent.

Utilization right If at the time of filing the patent application, someone has pro-fessionally utilized the invention referred to in the patent, the utilization of the invention can be continued despite the pat-ent application, if the general nature of the invention remains unchanged. A person that has taken relevant steps in utilizing the invention professionally, has similar utilization rights with respective prerequisites.

Value analysis Analytical assessment method based on scoring of the differ-ent alternatives.

Value network Companies and various other groups form a partner network, in which each company concentrates on its core competence and thus increases the total value of the network.

Vision A view of the feasibility and desired future of the company.

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