The IP Experts 1 BY P. KANDIAH KASS INTERNATIONAL SDN BHD SHAPING BUSINESS STRATEGY THROUGH...
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1 “The IP Experts” BY P. KANDIAH KASS INTERNATIONAL SDN BHD • SHAPING BUSINESS STRATEGY THROUGH COMPETITIVE INTELLIGENCE STRATEGIC USE OF INTELLECTUAL PROPERTY INFORMATION
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Transcript of The IP Experts 1 BY P. KANDIAH KASS INTERNATIONAL SDN BHD SHAPING BUSINESS STRATEGY THROUGH...
1“The IP Experts”
BY P. KANDIAH
KASS INTERNATIONAL SDN BHD
•
SHAPING BUSINESS STRATEGY THROUGH COMPETITIVE
INTELLIGENCE
STRATEGIC USE OF INTELLECTUAL PROPERTY INFORMATION
2“The IP Experts”
Any business, in order to remain in business,
Needs to know i) the market;ii) the activities of its competitors;iii) the activities of related parties
– suppliers, licensees, contract manufacturers, etc.
Needs to know the risks it is exposed to
3“The IP Experts”
To remain competitive, or to grow, one needs information (read: intelligence) on market, competitors, etc.
Competitive knowledge on Companies on same or related industries
on Industry
on Country
4“The IP Experts”
Information on market obtained fromi) published informationii) surveysiii) industrial espionage
Sources of Published information – websites,– annual reports,– media,– statutory records
/ reports– Intellectual
Property Office database / reports
5“The IP Experts”
In modern economy Intangible assets are becoming more critical than tangible, or physical assets
Intangible Assets – includes IP Assets owned by a business Information on IP Assets (i) Trademarks
(ii) Patents / Utility Models
(iii) Industrial Designs
6“The IP Experts”
Information on Trademarks
Marks often applied for before product is launched in market Able to know what new products and what
competitors are involved inMarks advertised according to NICE Classification Able to know who are new players in your industry
In which countries applied for by competitors Able to know marketing strategy of competitors
7“The IP Experts”
8“The IP Experts”
Information on Industrial Designs (ID)
Law requires Industrial Design application be made before ID is disclosed to publicID Gazette gives information on applicants, goods on which design is applied Able to extract intelligence on scope of research
by competitors Who the designers are (in some countries)
9“The IP Experts”
10“The IP Experts”
Information on Patent
Most valuable of IP information
All granted patents in any country are published
Now patent applications filed 18 months from date of application
Information contained in published patent is uniform throughout the world
11“The IP Experts”
12“The IP Experts”
Utility Patent (Not Design Patent)
Country of Grant
Title of Invention
Details of Inventor
First filed in Malaysia
Classification of field of Technology
Close Prior Art. Same field of Technology
Start of Patent Rights
Brief of Description
Representative Drawing of Invention
Anatomy of a Granted Patent
13“The IP Experts”
Important patent databasesJPOhttp://www.jpaa.or.jp/english/patent
PCT Published Patent Applications http://www.wipo.int/pctdb/en/index.isp
US Granted Patents http://patft.uspto.gov/netahtml/PTO/search-adv.htm
US Published Applications http://appft1.uspto.gov/netahtml/PTO/search-adv.htm
EPO http://ep.espacenet.com/advancedSearch?locale=en_EP
IPOShttp://www.ipos.gov.sg
MyIPOhttp://www.myipo.gov.my
14“The IP Experts”
Useful Information from Patents
Patent Description – detailed enough to enable person skilled in the art
to reproduce the invention WITHOUT further
research
– Best method / mode of working the invention
Patent Claims – Scope of monopoly claimed
Duration of Patent – Max 20 years from date of filing
15“The IP Experts”
Useful Information from Patents (cont’d)
Age of technology – From date of first application
Owner of technology – Licensing Assignment purposes
Inventor – Contactable - experts in the field of technology
Closest prior art – Cited by patentee and patent examiner
16“The IP Experts”
Patent Class Index – Ability to search for other patents in same / related field of
technology
– Universal Classification (WIPO)
– Easier to search in other patent databases
17“The IP Experts”
Patent Database – Publishes all granted patents in the country since the first granted
patent in the country
– Automatic machine translation available in some countries,
e.g. JP
– Bibliographic page published in the English language
18“The IP Experts”
“Baking Bread”
Search on US Patent Database discloses 437 patents
Search on Baking Bread and Wheat Flour discloses 135 patents
Search on Baking Bread and Rice Flour discloses 41 patents
Example of Use of Patent Database
19“The IP Experts”
Patent Database – search for state of art in a field of technology
– use of prior art information• to obtain information on new technology• to challenge validity of any granted patent• to develop new product / technology
20“The IP Experts”
All trademark and patent applications are published before grant of right
Possible to oppose grant based on valid grounds
E.g. applicant is not true owner,
examiner had not considered relevant prior art, prior user (in
Trademark matters), etc.
Easier, cheaper to oppose application at IP offices, rather than through Court proceedings
21“The IP Experts”
PCTUSPTO Patent Database can be analyzed to JPO provide strategic information
e.g. growth and decline of specific technology areas
Field of R&D done in certain countries / technology areas
22“The IP Experts”
