1. From Invention To Patent: Protecting New and Innovative Business Ideas: The Importance of Proper Management of Trade Secrets and Patents
Guriqbal Singh Jaiya
Director, SMEs Division
WIPO (

2. Short Guides on IP for Business
Published
Making a Mark (Trademarks)
Looking Good (Designs)
Inventing the Future (Patents)
Creative Expression (copyright)
In the pipeline
Trade Secrets
Flash Version

3. Useful Book
Intellectual Property Management: A Guide for Scientists, Engineers, Financiers, and Managers
By Claas Junghans and Adam Levy
© 2006 WILEY-VCH Verlag GmbH & Co. KGaA, Weinheim, Germany
ISBN-13:
ISBN-10:
170 pages

4. Key Message
By establishing a culture of identifying, cultivating and strategically using its IP assets, an enterprise can increase its revenue, have an edge over its competitors and position itself well in the market.
Ignoring IP altogether is in itself an IP strategy that may prove costly to the enterprise in the long- term.

5. Dr. Horst Fischer, Corporate Vice President, Siemens AG
“Any company wishing to prosper in the next millennium will also have to efficiently manage its IP portfolio”.
“For this reason it has become essential that every manager in the enterprise - not just those working in the corporate legal department - appreciates and understands not only what IP is, but how it can be more effectively exploited."

6. What are IP Rights? Industrial Property Rights
Patents and Utility Models (or “short-term patents”)
Trademarks
Industrial Designs
Geographical Indications
Trade secrets
Topographies of integrated circuits
Copyright and Related Rights
New Varieties of Plants
Non-original databases

7. Trade Secrets Definition Examples Protection Strategies
Using; sharing (CA/NDA/NCA)
Licensing; strategic alliances; partnerships
Audit
Competitive intelligence; espionage
Re-assess risk & value: Internal/external

8. Actual Vs Legal Trade Secrets
Actual secrets: Trespass or theft
Legal trade secrecy is not actual or absolute secrecy.

9. Definition: Identify Trade Secrets
Considerations in determining whether information is a trade secret:
Whether known outside the company
Whether widely known by employees and others involved with the company
Have measures been taken to guard its secrecy/confidentiality

10. Identify Trade Secrets Contd...
What is the value of the Information to your company?
What is the potential value to your competitors?
How much effort and/or money spent in collecting/developing it?
How difficult would it be for others to acquire, collect or duplicate it?

11. Definition
Formula, pattern, device or compilation of information, unknown to others, that gives competitive advantage
Common law or statute
Unlimited Duration / No registration
Cost (of maintaining secrecy, security, ; surveillance, litigation)
Reverse engineering; independent development

12. Examples Unpatented inventions Future product designs/models
Valuable nonpublic company documents: Drawings, blueprints, laboratory notebooks, test data and training manuals
Marketing, purchasing, planning and customer information
Financial, accounting, recruiting and legal information

13. Examples Contd... Strategic plans Product concepts Financial reports
Customer lists
Employee files
Engineering plans
Production manuals

14. You may get a lot!
In a single misappropriation act a biotechnological trade secret may be obtained which represents:
(1) the blueprint (DNA);
(2) the machinery (expression system used)
(3) the factory itself (host cell contining the recombinant DNA under control of the expression system)

15. Stealing may be Easy!
Micro-organisms: vast numbers, microscopic size and self replicating!
Italian subsidiary of a US pharmaceutical house dipped handkerchief into fermentation vat at his own retirement party!

16. Integrated Security Environment
Identify key corporate assets/ “crown jewels”
Integrate and Balance security components in interlocking layers to protect against perceived risk profile
Communicate, train, and educate employees to distribute ownership of the security process throughout the employee (weakest Link)
Monitor and Reassess to adapt to changing risk profile

17. Protection Strategies
Identify Trade Secrets
Develop Protection Policy; Document it
Educate Employees; Monitor Compliance
Restrict Access
Mark Documents
Physically Isolate and Protect
Maintain Computer Secrecy

18. Protection Strategies Contd...
Restrict Public Access to Facilities
Deal Cautiously with Third Parties; Confidentiality Agreements and Nondisclosure Agreements
Be Careful and Consistent with Unsolicited Submissions
Security/Trade Secret Audit; internal / external
Coordination of integrated security enterprise-wide

19. Protection Policy Advantages of a Written Policy Transparency
Clarity (how to identify and protect)
How to reveal (in house or to outsiders)
Demonstrates commitment to protection; important in litigation

20. Educate Employees Prevents inadvertent disclosure; employment contract
Unscrupulous employees (personal gain)
Terminated employees (revenge)
Former employee (inadvertent loss, hired by competitor, or becomes competitor)
Educate and train (on hiring give copy of policy, periodic training and audit, exit interview, retirement); proactive role

21. Educate Employees Contd...
Make known that disclosure of trade secret may result in termination and/or legal action
Confidentiality agreements/non disclosure agreements/ Non compete agreements
Transform every employee into a potential security officer; every employee must contribute to maintain the security environment
Human and procedural security must be proactive; clear communication and repetition

22. Restrict Access
On a “Need to know basis”

23. Mark Documents
Uniform system of marking documents
Paper Based
Electronic

24. Physically Isolate and Protect
Separate locked depository; authorization
Access control (third parties; unauthorized )
Log of access; document reviewed or taken
Surveillance of depository/company premises
Shredding
Oversight; audit trail
Labs, green houses, test plots, etc

25. Maintain Computer Secrecy
Authorization; access control
Mark confidential or secret; legend pop, or before and after sensitive information
Physically isolate and lock: Computer tapes, discs, other storage media
Remote access
; SMS messages
Oversight; audit rail

26. Restrict Public Access to Facilities
Log and visitor’s pass to be worn all times
Accompany visitor; sometimes CA/NDA
Visible to anyone walking through a company’s premises (type of machinery; layout; physical handing of work in progress or finished products)
Overheard conversations
Documents left in plain view
Unattended waste baskets

27. Third Parties Sharing for exploitation
Consultants, financial advisors, computer programmers/professionals, web site host, other independent professional, subcontractors, designers, partners, joint ventures
Confidentiality agreement, Nondisclosure agreements

28. Unsolicited Submissions (US)
Formulate procedures to handle US
Notify (in writing) all persons submitting US disclosures that your company will not enter into a confidential relationship
Requesting the submitter to sign an acknowledgement that your company is not obligated to use the US Information and owes no duty of confidentiality

29. IP Rights: Patents
Definition: A patent is an exclusive legal right granted for an invention that is:
New (Novelty)
Involves an inventive step (Non obvious)
Capable of industrial application
Duration: 20 years from filing/priority date
Territorial right
Requires disclosure/deposit of the invention/material
Can be licensed to third parties
Utility Models (or short-term patent): up to 10 years

30. IP Rights: Patents Patentable subject matter Exclusions
Prior art/secret prior art
Utility/best mode/trade secrets
Depository institution
Employee inventions
Joint applicants/joint inventors/independent contractors/joint owners

31. Patents Why apply for patent protection? Market exclusivity
To recover R&D investments
Facilitates licensing
Advantageous negotiating tool
Financing opportunities (venture capitalists, etc)
Favorable image and credibility
Freedom to operate
Higher market value and publicity
International expansion

32. Patents contd...
First to file/first to invent: Laboratory books/Drawing
Accelerated examination
Dependence and multi-patent products
Front page, description and drawings
Claims; technological density and claim breadth/Route of filing/amendment of claims

33. Problem-Solution Approach
Definition of closet prior art
Objective identification of technical problem
Examination, whether solution obvious from prior art
Patent Office may contrast closest prior art with technical effect of invention; definition of “objective problem to be solved” is different from problem defined in original application
Choice of prior art affects whether obvious or not

34. Case study on patent protection
Case study on the commercialization of a patented product
Croatian pharmaceutical company (Pliva) discovers new antibiotic (azythromicin)
Pliva applies for patent protection in Croatia and in various potential export markets
Large pharmaceutical multinational Pfizer searches patent databases and discovers the Pliva patent
Pliva licenses Pfizer to produce the antibiotic in the US as well as in some other countries in Western Europe while Pliva maintains the exclusive right to commercialize the antibiotic in Eastern Europe