The evaluation of protection inventions methods: the patent rights€¦ · The evaluation of...

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september · december 2004 · esic market

The evaluation of protection inventions methods: the patent rights María de los Ángeles Quintás Corredoira

Ana Isabel Martínez Senra

Facultad de Ciencias Económicas y Empresariales

Universidad de Vigo

AbstractThe technological innovation is considered a great factor to impulse busi-

ness competitiveness and economic growth in the countries. This is why a

big effort is being done by companies to improve its management. The

most interesting area of work in this field is the patent protection; the way

companies limit competitive imitation. Choosing the right method to pro-

tect an invention is not an easy thing. In this work we will pay special

attention to the evaluation process of the different methods to do so and,

to the main decisions a company should take when they choose the patent

right alternative.

Key words: Patents, utility model and trade secret.JEL code: M19; O32.

1. IntroductionAmong the factors driving business competitiveness and economic growthin countries, an important one, without doubt, is technological innova-tion. For this reason, and with a view to improving the innovative poten-tial of firms, the authorities of the different countries apply measuresdesigned to promote research and technological development. Amongthese measures we might highlight: 1) incentives to businesses to innovateand to acquire certain technologies, including subsides, loans or tax bre-aks; and 2) direct measures to create resources and capabilities in the


the evaluation of protection inventions methods: the patent rights

country or region concerned, such as the creation of technology centresand infrastructures, or help in technological training and in the transfer ofresults.

On the other hand, firms –conscious of its important role as part oftheir business strategy– are paying more attention to the strategy of tech-nological innovation. Within this strategy a clearly significant aspect is theprotection of inventions, which prevents rivals from imitating the innova-tion and allows the firm to enjoy the extra profits that these inventions arelikely to generate.

In the current work, we analyse the main methods available to firms toprotect their inventions, and subsequently evaluate them with regardsthree groups of factors we consider determinant in the process of selectingthe most appropriate method to protect each invention. Finally, we studythe patent right –one of the main protection methods– in more detail,focusing on its origin and on the theories justifying its existence, as well ason the principal decisions a firm must take when it decides to use this pro-tection right.

2. Methods for protecting inventionsA firm has various options for protecting its inventions from being imita-ted by the competition: patents, which is one of the most important, uti-lity models, trade or industrial secrets, or certain actions it might under-take while it is the market leader.

These methods can be classified into two groups: (1) the industrial pro-perty methods, which include those protection mechanisms backed up bya property right, such as patents and utility models1; and (2) other met-hods, which include those protection mechanisms not backed up by anindustrial property right, such as industrial secrets, or the measures under-taken by the firm while it is market leader (Figure 1).

Industrial property methods are protected by an exclusive right, offera temporary monopoly, facilitate transference and possess more legal bac-king than the alternative methods. The patent, the main method in this

(1) Industrial property

includes, in addition to

patents and utility

models (which protect

inventions), industrial

models and drawings

(which protect industrial

design) and brands,

trade names and shop

signs (which protect

business activity).

Industrial property and

royalties constitute the

set of intellectual

property rights.

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Industrial property methods • Patents• Utility Models

• Industrial SecretsOther methods • Measures undertaken by the

firm while it is market leader

Figura 1. Methods for protecting inventions

Source: The authors.

category, can be defined as a industrial certificate conceded by the statethat gives the patentee the right to temporarily prevent rivals from manu-facturing, selling or making commercial use of the protected invention.The owner of the patent assumes the obligation to describe the invention,and receives the right to exploit it, either directly or by ceding it to thirdparties. The duration of this right for the majority of inventions and coun-tries is 20 years.

From this definition we can deduce the main functions of the patentsystem: protection, information and transference. The patent complieswith its protective function insofar as the state concedes the patentee theright to impede third parties from manufacturing, using or introducing thepatented product or process into the market. The information functionderives from the fact that the patentee must describe the invention indetail. It is for this reason that patent documents represent a unique andexceptional source of technological information of extraordinary value2.And finally, the transference function derives from the fact that the patentright facilitates the commercial exploitation of technical knowledge, sinceit is a negotiable and transferable certificate. It therefore becomes an extre-mely valuable intangible asset for its holder.

Among the industrial property methods, there is also the utility model,which protects less innovative inventions than is the case with patents.This right also concedes a monopoly on exploitation, although for a shor-

(2) Patent information is

characterised by: (1) its

variety: patents are

constantly being granted

in all fields of activity, all

around the world; (2) its

content: it is up-to-date,

detailed and in many

cases unique,

information; (3) its

structure: it is headed by

a summary, which makes

it easier to handle; and

(4) its accessibility: this

is a characteristic that is

relatively recent,

responding to frequent

criticisms on this point in

the past. At present,

information technologies,

the creation of easily

usable databases and the

use of the International

Patent Classification

(IPC), have made it

easier to archive, handle

and consult millions of

patent documents.



ter period than for patents, the exact duration depending on the countrywhere it is awarded3. This reflects one of the legal differences that existwith regards this right4.

Apart from the industrial property methods, there are alternative met-hods available to firms for protecting their inventions. These have certainadvantages, such as speed, not needing to describe the invention and cost.On the downside however there is a greater risk of imitation, as they arenot backed up by an exclusive right.

Among these methods the most significant is trade or industrial secrets,the most important alternative to industrial property. This can be definedas the knowledge that is used for the manufacture or commercialisation ofthe product, for carrying out the service, or organising the firm and theestablishment, which the entrepreneur decides to keep secret (Cotec,1994).

Industrial secrets do not afford a firm an exclusive right, and the pro-tection they offer derives solely from the mere fact that they are secret;they rely on the prohibition of rivals gaining access to the secret informa-tion by improper or harmful means. The firm that possesses such know-ledge has no more protection than the means at its disposal to prevent theinformation leaking. If a third party gains access to the information in alawful way it cannot be prevented from using it (Aza, 1996).

The key to protecting inventions by means of industrial secrets lies inconfidentiality, both internally and vis-à-vis third parties5. In fact, forinformation to legally qualify as an industrial secret, it must be of compe-titive interest or economic value for the firm, there must be a will to keepit hidden or secret, and the people who have access to it must be aware ofthe entrepreneur’s intention not to disseminate it (Aza, 1996; Conde,1998).

Thus, the firm must produce its own report or inventory of what infor-mation it wishes to protect as confidential or secret6, and control or res-trict its diffusion, setting down its own confidentiality norms for all itsactivities: production, market research, workshops, and especially for acti-

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(3) Thus, for example, in

Greece it is 7 years, in

Spain, Denmark and

Germany 10 years and in

Portugal 15 years.

(4) These differences,

also present among the

EU countries, made it

clear that there was a

need to harmonise

national laws. In this

context, we should note

the draft directive of the

European Commission

attempting to harmonise

the different legal

regimes for the

protection of inventions

by means of utility

models.

(5) The principle of

confidentiality is

regulated in some

industrialised countries,

such as the US, but it is

not highly valued in

others, such as Spain,

where for a long time

some firms have

divulged valuable

information to others

without using

confidentiality

agreements.



vities relating to research, development and new technologies. It is alsoimportant to introduce security measures to protect against industrialespionage.

With regards the defence measures applicable to industrial secrets, weshould highlight the following: 1) unfair competition legislation, whichallow for offenders to be prosecuted by means of an unfair competition law-suit; 2) legal bans to competition; and 3) legal secrecy obligations, which areimposed on certain people, taking into account the legislation on companiesand the provisions of the Penal Code on the offence of discovering anddivulging secrets. Thus, although patents offer a greater protection thanindustrial secrets, there are occasions when these, backed up by the defencemethods available, can be a very effective instrument (Cotec, 1994).

Finally, the innovator wishing to disincentivise potential imitators’entry into markets also has the option of undertaking a number of mea-sures while it is market leader. Among these the most important is erectingentry barriers, such as the generation of economies of scale, or emittingsignals that it is prepared to fight to the last against any imitators enteringthe market. However, if these are not accompanied by other means of pro-tection, imitation by the competition may occur rapidly. This would meanthat there is less time for the firm to apply these measures, and conse-quently less likelihood of them succeeding. Thus, from henceforth in thiswork we shall focus exclusively on the other three protection methods(patents, utility models and industrial secrets).

3. Choice of method to employThe choice of the most appropriate method to protect an invention is

not easy, nor should it be generalised to all the inventions a firm genera-tes. This decision should be taken each time an invention is produced.Hence the importance to carry out a systematic evaluation of the differentoptions, in order to choose the most appropriate method for each case.

The most important factors that should be taken into account in thisdecision-making process can be classified into 3 groups:

(6) In these

confidentiality reports it

is very important to

establish a clear and

specific definition of the

information that is to be

protected, as well as its

scope.

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1. Factors relating to the procedure to obtain the protection: cost,time, duration of the benefits deriving from the protection and levelof protection.

2. Factors relating to the invention: inventions excluded by law,novelty, inventive activity, complexity, whether the invention is aproduct or process, life cycle and interest the competitors show in it.

3. Factors relating to the innovation strategy: geographical scope ofthe protection and possibility of granting licences.

Table 1 compares the different protection methods in function of thesefactors.

With regards the first group of factors, obtaining the patent right is acostly and time-consuming procedure7, but on the other hand awards aright of exclusive monopoly for a substantial time period –generally 20years– which implies a significant legal security. In contrast, the concessionprocedure for utility models is faster8 and less costly than that of thepatent right; it is less demanding and generally awards the right withoutpreviously examining the novelty or the inventive activity, thereby impl-ying less legal security. Industrial secrets are less costly than the industrialproperty rights, although they can occasionally end up being as expensivein view of the continuing need to keep the invention secret. In addition,the firm can enjoy the benefits of the invention as long as it manages tokeep it secret. However, as we have already said this method offers littlelegal security.

As far as the invention aspects are concerned, the patent right demandsthat the invention be legally admitted9, that it be novel world-wide andthat it present a high level of inventive activity. This protection is moreappropriate for inventions with relatively long life cycles –in view of theslow process for granting the patent–; for inventions in which it is easy tocarry out inverse re-engineering and for those that provoke a high degreeof interest among competitors. The utility model, similarly to the patent,is regulated by laws that exclude certain inventions from protection, andthis method is more suited for inventions of products and for those that

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(7) It can take between 2

and 4 years.

(8) It is generally 6

months.

(9) For example, patent

laws –barring

exceptions such as in

the US– do not admit

the protection of

inventions in software.


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Table 1. Evaluation of protection methods

Patents Utility Models Industrial Secrets

PROCEDURE

Cost Costly Less costly than patents Generally less costly

Time Slow Fast Fast

Duration of benefits Generally 20 years Generally 10 years Until it is made public

Legal Security Strong Less than patents Weak

INVENTION

Legal exclusion Yes Yes Not regulated

Novelty Necessarily global National Not regulated

Inventive activity High Less than patents Not regulated

Complexity Not decisive Not decisive High

Invention of product Adequate Adequate Generally inadequate

Invention of process Adequate Adequate Highly adequate

Especially appropriate Especially appropiateLife cycle Long when short when short

Interest of competitors High High Low

INNOVATIONSTRATEGY

Costly and Less costly and moreBroad geographical important international international Not decisivescope differences differences than for

patents

Granting licences Adequate Adequate More complex




provoke strong interest among competitors. However, it demands a lowerlevel of inventive activity, less novelty10 and is suited for innovations witha short life cycle. The industrial secret is open to all types of inventions,regardless of its novelty, inventive activity, and life cycle, and is more sui-ted for those inventions that provoke little interest among the competitors,those whose extreme complexity hampers their imitation and for inven-tions of processes, since these are easier to keep secret.

Among the factors relating to the innovation strategy we should consi-der the geographical areas in which the firm desires to exploit its inven-tion. In this regard, a wide coverage by means of a patent is costly, and thefirm would face important international differences, although there aresupra-national routes designed to overcome these. With regards the utilitymodel, the international differences are much greater, a reflection of theirmore embryonic development in the supra-national sphere. In the case ofindustrial secrets, this aspect is not decisive, since if the rest of the charac-teristics are favourable a wide coverage does not entail too many difficul-ties. And finally, as far as granting licences is concerned, this is easier inthe case of patents and utility models because they are supported by anindustrial property right that facilitates transference.

Evaluating these protection methods we should also bear in mind thesector to which the firm belongs, since this affects the characteristics ofsome of the innovations generated and favours, in these cases, the use ofcertain methods. In this regard, Brouwer and Kleinknecht (1999) analysethe different propensities to patent among sectors, and find that the phar-maceutical and chemical sectors patent the most. In contrast, utilitymodels are preferred in industrial sectors such as toys, clocks and watches,or the optical, microtechnical and micromechanical sectors, since on manyoccasions these sectors generate small technical inventions with a short lifecycle (EU Commission, 1997).

Finally, one should remember that the various methods can –and inde-ed on occasions should– be employed in combination. Thus, industrialsecrets can be used to complement patents or utility rights, since in order

(10) For example, in

Spain only the national

state of the technique is

taken into account, i.e.,

novelty is only

demanded at the

national level.

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to obtain protection from these rights inventions cannot be made publicbefore the application is made11. Another possibility is to use the protec-tion of a utility model along with the patent right, in those cases where theinvention can opt for both rights, with the aim of protecting it by the uti-lity model during the long process of granting the patent (EU Commission,1997).

4. The patent rightIn the rest of this work we shall focus on the patent right, the most impor-tant and controversial of the industrial property rights. But before exami-ning in more detail the most important decisions that must be taken whena firm decides to take out a patent on an invention, we shall briefly lookat the origin of this right, along with the theories that justify its existence.

4.1. Origin of patent right and theories justifying its existenceMany studies place the origin of the patent right in the Statute ofMonopolies, approved by the English Crown in 1623, insofar as this is thefirst law from a modern nation that is framed outside the traditional sys-tem of royal privileges. But in the 15th Century there already existedhighly-developed patent systems in Venice, and during the following cen-tury the royal houses and governments of many countries in western andcentral Europe conceded monopoly privileges to inventors. However, itwas after 1623 that the systems of privileges were replaced by statutorypatent systems. At the end of the 18th Century countries such as France,the United States and Great Britain had statutory systems in place.

The growth of this patent system has been very controversial.Undoubtedly, the hardest battle was fought between 1850 and 1875, whenopponents demanded not merely the reform of the system but its totalabolition (Machlup and Penrose, 1950). However, a strong reaction, in theshape of numerous propagandistic actions in favour of the system and itsbenefits, alongside economic conditions more favourable to protectionismthan to free trade, led to the rapid collapse of the anti-patent movement.

(11) However, in

countries such as the US

there is a period of grace

allowing the patent

applicant to make the

invention public without

forfeiting the right to its

eventual award.

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Since then the patent system has continued to expand and grow instrength, it being unrealistic today to consider the possibility of its aboli-tion. Although it is still a subject of some controversy on the economic andpolitical stage, the debate has now moved on from the existence or other-wise of the system, centring more on aspects such as the extent of the cove-rage that this right should give, its scope or its duration.

Throughout the development of the patent system theories have beenadvanced to justify its existence, and indeed they continue to appeartoday; some of these theories have been severely criticised. These theoriescan usefully be classified into those based on natural rights and thosebased on arguments of political economy (Penrose, 1974). The first theo-ries justifying the existence of a patent system were theories of naturalrights, and they were founded on the natural right of man to possess hisown inventions.

However, these theories were severely criticised by opponents of thepatent system, leading its champions to use arguments from political eco-nomy instead to defend it. Thus, numerous theories based on economic rea-soning have been advanced, analysing the patent right in terms of socialcosts and benefits. Mazzoleni and Nelson (1998a, b) consider that there areat least four different theories, each with its own variants in function of thecontext within which the invention is produced: (1) invention motivationtheory, which assumes, in its most classical version, that patents are theincentive required by firms to produce inventions, which justifies the costof the temporary monopoly granted to the patentee; (2) motivation of deve-lopment and commercialisation of inventions theory, which sustains thatmaintaining a patent in the early stage of the invention process ensures thatif the development is technologically successful, the firm can appropriatethe economic rewards; (3) invention diffusion theory, whereby patents donot necessarily have to encourage invention, but they do foster and provi-de a vehicle for the diffusion of the technical information that is the basisof new inventions; and (4) control of exploitation theory, which is the mostrecent, and sustains that an initial discovery or invention is open to a wide

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range of developments and subsequent inventions, and if a broad-scopepatent is obtained the firm can proceed in an orderly manner.

These theories explain the reality in part, and they are not mutuallyexclusive12; any one of them may be the most appropriate, depending onthe conditions under which the invention is produced and its exploitationenvisaged13.

4.2. Protection via patentsIf, after previously evaluating the protection methods, a firm opts for thepatent right, it will have to make important decisions, among which weshould highlight: when it should apply for the patent, the geographicscope for which protection is envisaged and the route or routes throughwhich the application will be pursued (see Figure 2).

With regards the right time to apply for the patent, the firm has to takethe following into account: (1) in general, it must make the applicationbefore allowing any diffusion of the invention, since otherwise it will bre-ach the novelty requirement of this process14; (2) it must describe theinvention in sufficient detail to enable an average expert in the area con-cerned to reproduce it –hence it cannot make the application when theinvention is still at an early stage– ; (3) it must be the first to apply for pro-tection for the invention, since if a competitor gets there first its applica-tion will inevitably be rejected; and (4) it must realise that granting pro-cesses for patents are extremely slow. Thus, as long as a firm can describeits invention, and there is no specific reason to delay application for apatent, it should do so as soon as possible.

The firm must also decide what geographic scope it requires for itspatent protection, since protection limited to the firm’s country of origin–a strategy used in the past– is no longer sufficient given the high level ofinternationalisation of today’s firms. In this decision it is important to con-sider factors relating both to the invention itself and to the patent systemof the country or countries in which protection is sought. Among the for-mer we might mention: (1) the situation of the largest current and poten-

(12) Although some of

their variants do present

incompatibilities. For

more information see

Mazzoleni and Nelson

(1998a, b).

(13) For this reason, only

in the first of the

international conferences

leading to the

International Convention

for the Protection of

Industrial Property did

the delegates attempt to

establish the basic

justification of patents, in

view of the impossibility

of coming to an

agreement about which

of the various theories

was correct. In the

subsequent conferences

delegates refrained from

explicitly discussing what

the fundamental nature of

the law of patents should

look like. Everyone

concurred that

international agreement

on certain regulations

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tial markets where the invention can be commercialised successfully; (2)the markets where the competition is operating; (3) the countries wheresignificant incomes can be obtained by granting licences; and (4) the coun-tries where it may be interesting for the firm to have relations with otherfirms via joint projects.

The firm should also bear in mind factors relating to the system ofgranting the patents in the different countries, such as the cost of protec-

was convenient for all

countries; but prudently,

delegates were left free

to support the patent

systems theory that they

found most satisfactory

according to their own

criteria.

(14) Although in some

countries, such as the

US, there is a period of

grace during which

diffusion of the

invention is permitted.

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Figure 2. Protection via patents


Rejected

AbandonmentMaintenance

Periodicevaluation

To verify that a patentis not infringed

INVENTION

Evaluating the protectionmethods:

(Patents, Utility Models, Industrial Secrets)

Other methodsPatent

Decide:¿When?¿Where?¿What routes?

Granted

Applicant Patent(s)



tion, the routes available for protecting the patent, or the punitive measu-res available when the patent right is infringed. Finally, a fundamental fac-tor in the final decision of where to seek patent protection is the financialresources of the firm (Carroll, 1997). This consideration is necessary sincethe firm has to assume the costs of granting the patent in the various coun-tries, not forgetting the cost of exploiting the innovation in each of them15.

However, the definitive choice of where to seek patent protection canbe delayed for some time, since if the firm requests for a priority date tobe assigned in its first patent application, it can subsequently extend thepatent to whichever countries it wishes during the year following this date.Hence, the first application for a patent tends to be in the firm’s countryof origin.

Once the firm has chosen where to seek protection it must choose theroute through which to apply for it. At present, a firm that wishes to pro-tect its inventions with a patent internationally has three possibilities: thenational route, the regional routes or the international route. Generallyfirms start via the national route, although when the invention presentsevident potential for success, the first application may be made using bro-ader routes. Subsequently, in function of the value of the patent, the appli-cation can be widened to other countries via the different routes.

In the national route a firm must request a patent country by countryin the entire geographic space in which it seeks protection. This route exis-ted prior to the development of the patent systems at the internationallevel. However, the growth in international trade and the globalisation ofthe economy made it clear that there was a need to harmonise intellectualproperty rights and to establish supra-national routes through which theycould be granted.

Among these supra-national routes we might mention: (1) regionalroutes, which allow firms to apply for patents in a group of countries in aparticular zone, such as the European area16, the Euro-Asian area17, theOAPI (African Intellectual Property Organisation)18 and the ARIPO(African Regional Industrial Property Organisation)19. These routes sim-

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(15) Although

exploitation by the firm in

those countries where it

seeks patent protection is

one of the most common

options, it is not the only

one. There are others,

such as granting licences

to other firms, which do

not require such

important resource

outlays. Moreover, there

are also times when a

firms protects its

inventions in countries to

prevent the competition

from entering its field,

but without the clear

intention to exploit them

for the moment.

(16) This route is

regulated by the Munich

Convention of 1973, and



plify and cut the costs of applying for patents, facilitate trade and fosterthe transference of technology in the countries of the zones where they areapplied; and (2) the international route or PCT, which establishes a pro-cedure for applying for patents at the international level via a single appli-cation valid in all the countries that have signed the agreement. In thiscase, each contracting state assumes the responsibility to award or denythe patent, according to its own laws of intellectual property, such that anapplication made via the PCT route that reaches the end of the processwill have passed through two phases: the international phase, regulated bythis treaty; and the national/regional phase regulated by the legislation ofeach country (national) or group of countries (regional) that have signedthe treaty.

In evaluating these routes the firm must take into account the totalcost, with particular relevance among cost factors coming from the appli-cation for the patent itself, carrying out searches and formulating reportsinherent in the processes, the fees of the patent lawyers, and when neces-sary, the fees for translating the applications. On the other hand, it is alsofundamental to evaluate the time period in which this outlay must bemade, the duration of the granting process in the different routes, the lan-guage in which to make the application and the requirements that must bemet for the firm to successfully complete the process. Moreover, the firmmust also bear in mind that the proposal to create a community patent hasrecently been resurrected, with the aim being for the patent to be valid inall EU countries20.

Once the firm has chosen its moment, the countries in which it wishesto seek protection and the routes through which it intends to apply, it isready to start the patent application process. At the end of the process,which depending on the route lasts between two and three years, the firmis either awarded or denied the patent.

However, a firm’s administration of its patents does not end at themoment these are awarded, since the rights must be kept valid by thepayment of fees and it has a definite duration. The firm needs, therefore,

arose to get round the

obstacles to the free

circulation of

merchandise deriving

from the need to obtain

protection for inventions

in Europe via the

different national patent

systems. This procedure

assumes the existing

differences between the

various national

processes with regards

applying for and

granting patents and

currently affords

protection in 28

European countries:

Austria, Belgium,

Bulgaria, Cyprus, Czech

Republic, Denmark,

Estonia, Finland, France,

Germany, Greece,

Hungary, Ireland, Italy,

Liechtenstein,

Luxembourg, Monaco,

the Netherlands, Poland,

Portugal, Romania,

Slovak Republic,

Slovenia, Spain,

Sweden, Switzerland,

Turkey and the UK.

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to evaluate them periodically, in order to decide whether to continuepaying the fees in all the countries where protection has been obtained, oralternatively whether some of them have lost their interest, either becausethe invention has become obsolete, because the firm has not been able tocommercialise it or because it did not eventually grant the licences that itexpected to grant in these markets.

The abovementioned process, similarly to what happens when evalua-ting the protection methods, should also be carried out in a systematic wayfor each of the inventions that the firm wishes to protect via patents.Finally, and regardless of the protection method employed, before a firmcommercialises an invention it must ensure that it does not infringe anyexisting patents, or it will be in danger of committing an offence (Reid,1997).

5. Final conclusionsThe competitiveness of firms depends to a large extent on their capacity toinvest in research, knowledge and technology. In this sense, for firms to beable to recover the resources invested in innovation processes and preventcompetitors from imitating them, it is vital that they protect their inven-tions.

There are various options available to firms to accomplish this func-tion, among which the most significant are the patent right, the utilitymodel and industrial secrets; firms must choose the most suitable methodfor each invention. However, this choice is not easy and should not begeneralised to all the inventions of the firm, but rather it has to be facedeach time a new invention is produced.

Thus, the firm will systematically evaluate these alternatives in func-tion of numerous factors such as those relating to the granting procedure,the characteristics of the invention and the innovation strategy. Moreover,the sector to which the firm belongs conditions the characteristics of someinventions, affecting, therefore, the choice of the method to employ.Finally, we must bear in mind that these methods are not always mutually

(17) This is regulated by

the convention on Euro-

Asian patents (1994) and

came into being after the

disintegration of the

USSR, which created a

situation unfavourable for

the protection of

inventions in the territory

of the independent states.

(18) The OAPI is

regulated by the Bangui

Convention of 1977,

which revised the

agreement signed in

Libreville (Gabon) in

1962.

(19) The ARIPO is

regulated by the Harare

Protocol.

(20) Similarly to what

occurs with the EU brand

registry, where with a

single application

through just one office

and by means of a single

payment, a brand can be

registered in the entire

territory of the EU.

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exclusive, but that they can occasionally be combined to provide the firmwith more efficient protection for its invention.

If, after the evaluation process a firm considers that the most suitableprotection method is the patent, it will have to make some important deci-sions, such as the right time to apply for the patent, the geographical scopeand the route to use. Moreover, it needs to evaluate its current patents perio-dically to decide if it should maintain or alternatively abandon them. In thisway, the administration of patents by the most innovative firms can beco-me highly complex, since apart from applying for numerous patents everyyear, they must also analyse the position of their currently valid patents.

In order to facilitate the administration of this right, and achieve a trueintegration between the patent strategy and the firm’s strategy in general, thefirm should have staff familiar with the patent system. These individualsmust remain up-to-date concerning the evolution of patent legislation, inaspects as relevant as the inclusion or exclusion of inventions that are legallypatentable (for example, in the case of software), or the evolution of regu-lations governing the routes through which this right can be obtained.

6. BibliografyARUNDEL, A. and STEINMUELLER, E. (1998): “The use of patent

databases by european small and medium-sized enterprises”,Technology Analysis and Strategic Management, Vol. 10, n.º 2, pp.157-173.

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