Intellectual Property for Managers

Massimiliano Granieri

• Publisher: LUISS University Press
• Year: 2015
• ISBN:
  9788861052161
• Topic: Law
• Subtopic: Copyright Law
• Index: Law

The knowledge society demands a more active involvement of managers, scientists and policymakers in the field of intellectual property. While within the province of law and legal studies, intellectual property can no longer be the exclusive domain of a single profession. Its transformation into a koinè is a precondition for new generations of students manage intellectual assets as the ultimate resource of institutions in the knowledge-based society. This book aims at making intellectual property rights understandable to students, managers, scientists and to provide them with a technical and documented view about one of the last durable means to retain competitive advantage on the market for firms that invest in innovation.

1. Foreword

After years of teaching academic courses, seminars, workshops and professional training sessions, I eventually decided I had to dare and to leave the public more than my notes and some titles of books or papers that never really fit their needs.

The book is aimed at students of technical disciplines, as well as of schools of economics and business, but I would not be surprised if young entrepreneurs or, at the opposite, old-style managers found it useful to run their companies in a way that is more sensitive to the opportunities offered by a savvy management of intangible assets, and intellectual property specifically.

The chapters that follow are an attempt to couple academic knowledge with cases and practical insights I derived by interacting with inventors, managers, patent examiners, attorneys, successful (sometimes disappointed) entrepreneurs and “startuppers” in the last ten years. Readers will tell the author if such combination, in a second best world, proves effective. This is by no means the ultimate work on intellectual property; yet, the opportunities offered by e-publishing allowed me to provide students with a previous quick online edition. Now the initial project receives an improvement and comes back to the brick-and-mortar world, with a second, paper edition. LUISS University Press and Daniele Rosa are hereby acknowledged for supporting the idea of a paper edition in a prestigious academic publishing company.

A number of people inspired this book and somehow contributed ideas or made it possible. This is the occasion to acknowledge their friendship and help; I write their names as they come to my mind. They are Roberto Pardolesi, Domenico Golzio, Alberto Di Minin, Giuseppe Conti, Arturo Pironti, Roberto Viola, Francesco Della Porta, Agostino Cavazza, Andrea Piccaluga, Jacques Darcy, Giovanna Oddo, Stefano Marzani, Fabio Pagliai, Piergiorgio Grossi, Raffaele Oriani, Maria Isabella Leone, Roberto Caso, Laurent Manderieux, Simona Marzetti, Eva Milella, Francesco De Michelis, Camilla Bonati, Andrea Marcello Grimani, Marzio Fachin, Rosa Castro, Andrea Renda, Riccardo Pietrabissa, Luca Larcher, Claudio Giuliano, Claudio Rumazza, Gianni Pancot, Silvia Libianchi, Massimiliano Mostardini, Rupert Mayer, Alessandro Sannino. I learned a lot from all of them; but I bear full and exclusive responsibility for mistakes of this book.

Above all, I am indebted to the several generations of my students at the Department of Business and Management of LUISS Guido Carli in Rome for their patience and passion; they have been the cavies of my academic experiments. The good news is that some of them survived and did well.

Between Bologna and Roma, January 2014

2. Introduction and Methodology

2.1. intellectual property for students of technical schools, economics, management, science and technology

This is a book of intellectual property (IP) management and practice aimed at students. Although the content can be partially close to that of an IP book that is commonly used in law schools, the following pages are specifically thought and tailored for students of disciplines other than law, such as economics, management, engineering, science and technology. Students that, later in their professional life, will have multiple and subsequent professional identities, as inventors/creators, managers, consultants, entrepreneurs, venture capital or private equity investors, bankers, and policy makers, within firms and organizations of all sizes, in a variety of industries where IP is crucial, such as media and entertainment, fashion and luxury, biotechnology and pharmaceuticals.

As shown in the table (Figure 1a-b) based on the latest Eurostat data, graduates in technical disciplines in Europe largely outnumber the graduates in law disciplines (as part of the social sciences). Paradoxically, non-law students receive no or minimal education in IP or in patent law, traditionally offered, if ever, only to students enrolled in law courses.

As a result of the massive investment in Science and Technology (S&T) and with the perspective of a gigantic framework program (Horizon 2020) that will provide resources to the European Research Area for the years to come, the numbers of S&T-trained graduates is increasing significantly. Notwithstanding the intensity, there is no chance all the investments in research and development (R&D) and in science and technology will result in a tangible and durable industrial development and economic growth if we do not prepare our students to become also a little bit of a manager of the knowledge they will create and share and if we do not transfer to them the sense that what is intangible can be way more important that other physical resources. Some actions, at all levels, have been started in the last decade in such a direction [Fishman 2010]. Crucial to this strategy, as in almost all fields, is to ensure continuity and consistency of all the initiatives.

The European Commission in its Communication “Investing in research: an action plan for Europe”, COM(2003) 226 of April 4, 2003, has clearly declared it considers fundamental “ensuring that before completing graduate studies all students, especially those from science engineering and business schools, receive basic training and awareness accordingly on IP rights and technology transfer”. The European Patent Academy – a branch of the European Patent Office – has started a program of roving workshops to bring the issue of IP academic education to the attention of chancellors, deans, and policy makers. Moreover, it has prepared a series of teaching materials to acquaint people with the overreaching world of IP; one of such materials is the well-known Patent Teaching Kit, that is also being translated in other European languages.

The situation improved ever since, but we are still very far from the optimum.

There is a “long felt need” for materials addressing the subject of IP in a way understandable and receivable to students of technical and managerial disciplines and a necessity to rejoin IP to the main aspects of corporate strategy. Engineers and scientists, as well as MBAs or students in economics, leaving university should have IP as one of the facets of the whole knowledge they will use to make their way in their future profession: academic, technical or managerial. At the bottom line, they should not treat IP as an exotic topic to be handled only by specialists. IP should be seen as a daily tool of management, assisting any professional involved in the hard work of innovation and in the attempt to secure a competitive advantage in an overly aggressive and competitive globalized world.

It is extremely important what professor Strauss wrote about the teaching of patents; the same argument can be expanded to include intellectual property rights in general [Strauss 2008: 14]:

Teaching patents does not only involve teaching national, regional and international substantive patent law, patent granting and revocation, as well as enforcement proceedings, but requires a holistic approach: making the modern technologies understandable, critically reflecting the economic impact of patents as exclusive rights, and presenting and analyzing the respective national and international legal framework.

Way too often IP is approached as an exclusive topic for lawyers, big multinational corporations involved in huge litigations worldwide and specialists. Undoubtedly, IP is a topic for lawyer. But not only for lawyers, not only a tool to harness in case of litigation, not necessarily a luxury item that only the richest organizations can afford. Both in practice and a scientific theme, IP is much more pervasive and meaningful than what is typically believed and this book aims at providing evidence of this [Yu 2008].

2.2. intellectual property and the world of small and medium enterprises

When referred to firms, IP practice is not a one-fits-all topic. Generating and managing IP rights can be extremely different in large companies, innovative SMEs, rampant start-ups or public research organizations (PROs). Large corporations have usually huge resources, but can be slow in motion, whereas SMEs and start-ups or academic spin-offs are ultimately premised on IP, but have limited access to resources. As a methodological remark, any discourse involving IP and its use has to be done in context.

It is constantly repeated that small and medium enterprises (SMEs) are the backbones of the European economies and their ability to innovate is a key for Europe to grow and prosper. Our today students will be managers of tomorrow’s SMEs; some of them will even venture in starting their own business. All this is way too clear; what is often neglected instead is that SMEs have not the same organizational strength of large corporations and sophistication in terms of human resources is poor, due to economic and dimensional constraints. Sometimes SMEs are blamed because they are unable to come up with new products and even more frequently the blame is on the failure to protect the innovation and to exploit it adequately. Those critiques may be correct and yet they sound ungenerous if we recall for a moment the reality of SMEs.

For very few of our small (not to mention micro) companies it is justified to hire a full time IP manager, as human resources are costly; if the workload does not justify the cost, then it is probably wiser to save money and to devote resources to more efficient uses. IP specialized resources are a clear example of such dynamics. A decision to cut the budget for human resources translate inevitably into a failure to have people able to manage internally issues of intellectual property protection and exploitation. Even in most developed countries, the situation is far from optimal. A survey of the UK Intellectual Property Office revealed a very low rate of business owners aware of what patent protection is about [Moules 2009]. Data from Australia confirm that 67.1% of businesses with zero to four employees use no forms of protection when it comes to IP [Hammond 2012]. Those date confirm that the problem of resources is intertwined with one of culture and competence.

Education becomes more and more strategic especially inside technical and business schools.

Due to unescapable financial and dimensional constraints, the only viable solution to turn SMEs into competitive machines (particularly as far as European SMEs are concerned), while preparing top-class students, is to make sure companies can rely on future employees with basic IP culture and competence, so that while filling any position in the organizational chart junior resources can constantly provide input on how IP should be protected and wisely managed.

Such conclusion explains why IP education for non-lawyers becomes crucial for the economy. In-house lawyers are not the main professional figure in SMEs; the usual workforce is made of engineers, accountants, researchers, managers. Those professionals are the natural vehicle of a new culture within the company and academic education is the natural way to provide students with the required IP background; waiting too long and postponing IP education to post-graduate studies can be acceptable (although not the best option) for Ph.D. students, but it is certainly negative for human resources that are making their way into the job market soon after graduation. Those students are the natural carriers of fresh new ideas into companies and the primary source of a fruitful knowledge transfer about IP rights, their practice, their management, their strategic use.

2.3. speaking the language of ip within organizations

When teaching students with different backgrounds and cultures, a professor soon understands that each course requires appropriate materials for students to read and consult before and after class. The scope of the courses that led to this book has been also to correct the perception that IP rights, and more specifically patents, are the “end point” or a “by-product” of an innovation process: patents can be the starting point for innovation; they can inspire and guide innovation as well as corporate strategies. Probably stretching too much the idea of monopoly, it is forgotten the fact that patents and intellectual property rights can be a powerful source of technical information and an initial input for research programs and inventive processes, as well as a source of competitive intelligence.

An IP education benefits students at large. Students that chose a course of IP should be able to learn the general concepts of IP, to read and understand a patent document (not necessarily only in its technical content), and should have a clear idea of how important is patent information. Moreover, they should know how IP can be instrumental to corporate strategies and which new business models are enabled by ownership or control of IP rights.

None ever thought that after following an IP course students could be able to replace a patent attorney in drafting patent applications or in the prosecution; professional training, as well a good technical background is required for those willing to become patent agents. The expectation, confirmed by the experience, is that students from technical disciplines can communicate more effectively and efficiently with patent attorneys, better documenting their inventions and the prior art, better identifying the problem and the solution proposed. The consequence would be in terms of most appropriate and timely choices of protection, quality in filing the...