Towards Intellectual Property Rights Management

Back-office and Front-office Perspectives

Dolores Modic, Nadja Damij

• Publisher: Palgrave Macmillan
• Year: 2018
• Print ISBN: 9783319690100
• eBook ISBN: 9783319690117
• Topic: Negocios y empresa
• Subtopic: Gestión de la información

This book provides insights into the intellectual property rights (IPR) managerial practices of key IPR executives from a range of multinational companies, including major research and development firms. It identifies gaps in IPR management and considers the Tabular Application Development (TAD) methodology IPR process optimisation model. The authors adopt an interdisciplinary approach, providing a conceptual framework derived from practice and enriched with theoretical insights, and offering organisational recommendations. In taking into account both Back and Front office processes, Towards Intellectual Property Rights Management will help businesses navigate the maze of IPR and maximise the value they get from innovation.

© The Author(s) 2018

Dolores Modic and Nadja DamijTowards Intellectual Property Rights Managementhttps://doi.org/10.1007/978-3-319-69011-7_1

Begin Abstract

1. Untangling the Intangibles: The Scope of IPR Management Research

Dolores Modic¹ and Nadja Damij²

(1)

Kyushu University, Fukuoka, Japan

(2)

Northumbria University, Newcastle upon Tyne, UK

Abstract

This book provides insights into the intellectual property rights (IPR) managerial practices of key IPR executives from a range of multinational companies, including major research and development firms. It identifies gaps in IPR management and considers the Tabular Application Development (TAD) methodology IPR process optimization model. The authors adopt an interdisciplinary approach, providing a conceptual framework derived from practice and enriched with theoretical insights and offering organizational recommendations. Taking into account both Back- and Front-office processes towards intellectual property rights management will help businesses navigate the maze of IPR and maximize the value they get from innovation .

Keywords

Intellectual property rights management Back-office Front-office IPR experts interviews

End Abstract

1.1 Scope and Research Problem

Our book begins with the simple question, “Why bother considering intellectual property rights management issues?” Today we are living in a world riddled with intellectual property rights (IPRs) and characterized by the so-called intellectual property rights paradox. As Alkaersig et al. (2015) have recently put it, “Large firms do it and small firms do it” (consult Box 1.1), or as Rivette and Kline (2000) wrote more than 15 years ago, “Patents aren’t just for big companies anymore.” Yet, especially smaller companies are still struggling with the “why’s” and “how’s” of intellectual property rights.¹ The paradox between the rise of IPR applications and grants on one side and IPRs’ sub-optimal efficiency leads us to conclude that the management of intellectual property rights, including their processes, is of key importance to the business’ success.

Box 1.1 How do the big do it? Introductory evidence from patent and trademark data of world top 2000 R&D investor firms

Patenting is a highly concentrated phenomenon; according to the OECD report World Corporate Top R&D Investors: Innovation and IP bundles (2015), the world’s top 2000 R&D investors (together with their affiliates) own approximately 70% of all patent families worldwide in the five most important patent offices (European Patent Office, US Patent and Trademark Office, Korean Intellectual Property Office, Japan Patent Office, Chinese Intellectual Property Office). These IPR savvy companies differentiate their filing strategies across patent offices depending upon the technological field of the invention to protect. They rely on global knowledge to develop their technologies; hence both the invention processes of the patented technologies and the registration processes are highly international. Furthermore, patent and R&D data show that patenting is indeed an expensive endeavour with much heterogeneity across the industries. Electrical equipment companies spend in R&D on average €2M per patent family and pharmaceuticals €32M per patent family. Trademarks are mostly used for goods or related goods and services. Top R&D investors often use differentiated trademarks across markets adapting them to the consumers’ expectations. The latter requires alignment between IP and marketing activities . The world of trademarks is however a more diversified one; top corporate R&D investors own on average 8% (for 2012) of all trademarks. In addition, only a few companies present technology/product combination in line with the profile of the industry in which they operate. Patents and trademarks are often bundled together and used as complementary protection mechanisms—thus displaying one side of the comprehensiveness of IPR management .

Discussions around how intangible assets , such as patents, trademarks, or design rights, are different from tangible assets are lively. However, they usually centre on the three-dimensional scope or expression of the tangibles—a fact that brings along different deliberations when dealing with one or the other, as shown in Chap. 2. But how are intellectual property rights different from other intangibles? In short, their distinctive feature is their more (not only legally) formalized nature, their geographical and temporal limitations, and the fact that they are intentionally communicated with the outside world. For example, while a trade secret loses its power once it is no longer contained inside the firm, the publication of an IPR allows for the creation of a legal foundation to employ different IPR actions. We highlight how IP(R) executives differ between tangibles and intangibles. In Chap. 5 we present how this differentiation affects the management of IP assets in practice.

Regardless of whom you ask—either an IPR Rookie or practically any of our interviewees coming from the IPR savvy world’s top R&D investor firms—handling intellectual property rights is complex. IPRs are entangled in various ways. Firstly, different intellectual property rights are bundled together with each other and with other intangibles. Secondly, IPR processes are aligned with and integrated into other business processes in firms. Thirdly, different administrative, legal, and business aspects need to be taken into account, if we are to strive for efficient management of IPRs. This is a lot to consider all at once. Hence, our struggle is to try to “untangle” them in the reality permeated with uncertainty .

There seems to be a distinction between intellectual property (IP) management, innovation management, and intellectual property rights (IPR) management. Although they all centre on the management of innovation and the rights connected to them, their focus and activities differ. We will explain this first in theory and then evaluate the existence of a sui generis IPR management in practice. By doing so, we will consolidate the terminology used by researchers on one side and by practicing IP(R) executives on the other.

The overall scheme should be that we try to focus on those inventions and IP rights that are really valuable to a company. We do not need patents for themselves, we need them to add value to the company.

…

In invention management you start with money and try to build ideas. On the other hand, in innovation management you try to take ideas and make money from them. /…/Intellectual property rights/…/are the bridge between the two. They are the bridge between having good ideas and between having inventions to creating innovations.

Chief IP Counsel,

German conglomerate manufacturing and electronics company

Some practitioners argue that IPR management deals with co-creating ideas, reducing innovations to practice, as well as making money out of them (with the emphasis on the latter). Similarly, business process management deals with business processes that are viewed as a collection of activities that take one or more kinds of input and creates an output that is of value to the customer (Brady et al. 2001) and on which firms can monetize (see Fig. 1.1).

Fig. 1.1

Schematics IPR process as business process

IPR management hence means managing the so-called Back-office (legal and administrative) as well as the so-called Front-office processes, which are concerned with how IPRs can benefit the business. We emphasize that a holistic approach to efficient IPR management concerns itself in equal measures with both Back-office and Front-office. This is done by establishing a two-way link between research and legal departments on one hand and legal, marketing, and sales departments as well as top management on the other. IPR processes should be viewed as business processes that add value and influence the performance of companies.

Business process management is essential to ensure long-term business success based on flexible, market-responsive structures that simultaneous...

Table of contents

• Cover
• Front Matter
• 1. Untangling the Intangibles: The Scope of IPR Management Research
• 2. From Tangibles to Intangibles and from Back-Office to Front-Office
• 3. Innovation Property Rights Process Management
• 4. Interviewing IPR Executives
• 5. IPR Management to Business Management
• 6. IPR Characteristics in Practice: Back-Office to Front-Office
• 7. IPR Management in Action: The Road to “Better” IPR Management
• 8. Conclusion
• Back Matter