For trade marks and other IP rights. Grow your business ...
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Transcript of For trade marks and other IP rights. Grow your business ...
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Iris DE GROODTCustomer Department
speakers
Maria del Mar BALDARES
Observatory
HansHELSLOOTNetherlands Entreprise Agency
Need an IP strategy?
For trade marks and other IP rights. Grow your business with an IP
Scan. 75% reimbursmeent with the SME Fund
More info: SME Fund page
SME Fund webinar 09 march 2021
The 5 W and the how of an IP Scan
IP Scan
Why
What
Who
Where
When
How
The 5 W and the how of an IP Scan
IP Scan
Why
What
Who
Where
When
How
The 5 W and the how of an IP Scan
IP Scan
Why
What
Who
Where
When
How
…more are foreseen to join in the future
The 5 W and the how of an IP Scan
IP Scan
Why
What
Who
Where
When
How
4.
3.2.
1.
Procedure
Ideas Powered for
Business SME hub
SME getsgrant decision
Positive
Negative
SME applies forservices:
IP rights and/ or IP Scan(30 days)
SME requestsreimbursement
SME appliesfor the grant
IP Scan
Hans Helsloot
IP advisor
The Netherlands Patent Office
IP = intellectual property
• New technology
• New designs
• New names, logo’s, slogans
• Website, brochures, movies, photo’s
• Secret business information, like client lists, productionmethod, recepies, …
How to prevent copying your IP
Trademarks: BMI, Quicky, …
Trade names: Bayerische Mass-industrie Arno Keller GmbH
Domain names: www.bmi.de, …
Patents: Band steel, function, …
Design right: outer appearance
Copyright: design,manual, videos, website, …
Trade secrets: way of production, suppliers,client information, …
+ Contracts !
Netherlands Patent Office1313
March 23, 2021
What is the IP Scan?
The first step to an IP Strategy
• Analysis of IP environment of SME
• Relation of IP to business strategy
• Focus on most important IP-aspects
Netherlands Patent Office1414
March 23, 2021
Business strategy – IP strategy
Actual businessDesired business
in X years
Business
strategy
Actual IP of SMEIP required for
desired businessIP strategy
Actual IP of others
Netherlands Patent Office1515
March 23, 2021
What the IP Scan is NOT
• The filing of IP
• An analysis of infringement risk
• Assistance with conducting IP litigation
• Writing of a contract
Netherlands Patent Office1616
March 23, 2021
Going through a consultation
PlanningDesk
research
Interview with SME
Report writing
Send report
Discussion of the report
with SME
Netherlands Patent Office1717
March 23, 2021
Report
The first step to an IP Strategy
• Short analysis of IP environment of SME
• Relation of IP to business strategy
• Focus on most important IP-aspects
Netherlands Patent Office1818
March 23, 2021
Games + projector
Characteristics:
• Hardware (projector) licensed in
• Software (games) co-developed
• Descriptive name
• Collaboration withresearch at Universities
Netherlands Patent Office1919
March 23, 2021
Games + projector
Business goals:
• International expansion
IP goals:
• Expand IP protection
• Reduce IP risks
Netherlands Patent Office2020
March 23, 2021
Register check
• 1 national patent on projector by supplier
• SME had a Benelux figurative trademark (descriptive name)
Netherlands Patent Office2121
March 23, 2021
Recommendations 1
• Reconsider brand
• Consider redesign projector, that can be protected
• Secure ownership of games with contracts, copyright + proof
• Investigate patentability
• Investigate infringement risk
Netherlands Patent Office2222
March 23, 2021
Recommendations 2
• Consider renegiotiate license contract with supplier, to adaptinternational expansion
• Train employees in handling confidential information
• Review contracts with universities
• Make 1 person responsible for IP
Netherlands Patent Office2323
March 23, 2021
Follow-up
• Rebranding + TM
• Redesign
• Patent application
• Contracts reviewed
• Employees trained
• 1 person responsible
Netherlands Patent Office2424
March 23, 2021
Most frequent recommendations
1. Develop and implement an IP-strategy
2. Integrate IP database research in innovation proces
3. Consider expansion of trademark registrations
4. Train employees in handling confidential information
Thanks for your attention !
Hans Helsloot
IP advisor
Netherlands Patent Office
Octrooicentrum Nederland / RVO.nl
www.rvo.nl/octrooien
Netherlands Patent Office2626
March 23, 2021
The IP Scan is about every aspect of IP
Protection
• Patents
• Trademarks
• Designs
• Copyright
• Contracts
• Confidentiality
• Know how
• Ownership
• …
Third party rights
• Database searching
• Monitoring competitors
• Freedom to Operate
• Inspiration
• Information
• Licensing in
• …
Value creation
• Alignment of IP to
business strategy
• Exclusivity
• Licensing out
• Investor
Readiness
• Exit
• …
Netherlands Patent Office2727
March 23, 2021
Some other examples:
Example: poultry biotechanalyse sex of eggs
Characteristics
• University spin-off
• Collaboration with - Universities
- Automatization companies
Netherlands Patent Office2929
March 23, 2021
Example: poultry biotechanalyse sex of eggs
• Goal 1 = financingInvestors want to know:- Risk (of infringement)
- Return (= value creation)
• Goal 2 = exit in 5-10 yrs- IP-strategy should support exit
- Investigate IP-strategy of potential buyers
Netherlands Patent Office3030
March 23, 2021
Example: poultry biotechanalyse sex of eggs
• Consider to:- develop a process in
which new developments are checked on protectability before they are published or shared.
- train employees in how to handle confidential information; 3 categories:> Information that can be shared freely
> Secret information that is only shared with partners after they signed an NDA
> Top secret information which is not shared at all
Netherlands Patent Office3131
March 23, 2021
Example: food preservation with mist
Netherlands Patent Office3232
March 23, 2021
Characteristics:
• SME in cooling and electronics (patent)
• Developed mistingtechnology for food preservation.
• No protection
• “nothing new”
• Already sold
Example: food preservation with mist
Netherlands Patent Office3333
March 23, 2021
Recommendations:
• Investigate risk of infringement
• Investigateprotectability of 2nd generation
• Consider rebranding
Example: food preservation with mist
After IP Scan:
• Rebranding + Trademarks filed
• 2nd generation patented
• Monitoring competitors to reduce risks
Netherlands Patent Office3434
March 23, 2021
Example: food preservation with mist
Consequences:
• IP-strategy for growing part of the business
• Licensing out possible
• Cooling and electronics business separated
Netherlands Patent Office3535
March 23, 2021
Netherlands Patent Office3636
March 23, 2021
Startup solar car
Protection and third party rights
Trademarks: Lightyear One, …
Trade names: Atlas technologies BV
Domain names: www.lightyear.one, …
Patents: Solar panel integration,Motor management,In-wheel motors, …
Design right: outer appearance,interior, …
Copyright: software,manuals, videos, photos,website, …
Trade secrets: way of production, suppliers,client information, …
+ Contracts !
Netherlands Patent Office3737
March 23, 2021
Third party patents
100.000+ granted patents on:
• Motor management
• Transmission
• Gears
• Brake
• Suspension
• Batteries
Netherlands Patent Office3838
March 23, 2021
