Module I

Intellectual Property Management:

Introduction and Overview

Study Note:

This module should take you about 5 hours to study.

Learning objective
When you have completed this module you should be able to:
Describe the community of interest for intellectual property management
(IPM);
Explain the interrelationship between legal advocacy and IPM; and
List the advantages of IPM.

Prescribed Reading

1. Jose Tavares de Araujo Jr.,Schumpeterian Competition and its Policy

Implications (introductory reading), April 1999, SICE Foreign Trade Information
System,
http://www.sice.oas.org/compol/Articles/schumcop.asp

2. Ian Ellis and Kenan Patrick Jarboe, Intangible assets in capital markets,
May/June 2010. Intellectual Asset Management,
www.athenaalliance.org/pdf/IAM_41_IntangibleAssets.pdf

3. Nicholas Varchaver, Whos Afraid of Nathan Myrvold?, June 26 2006

http://money.cnn.com/magazines/fortune/fortune_archive/2006/07/10/8380798/in
dex.htm

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Recommended Reading

1. WIPO The Economics of Intellectual Property, January 2009,

http://www.wipo.int/export/sites/www/ip-
development/en/economics/pdf/wo_1012_e.pdf (read Chapters1, 2 and 6)

2. Josh Lerner, Monetizing IP: The Executives Challenge, June 9th, 2008,
Harvard Business School Working Knowledge,
http://hbswk.hbs.edu/item/5925.html

1 Intellectual Property Management Introduction

In this module the community of entities interested in the management of

intellectual property is identified. The justification for the establishment of
intellectual property management (IPM) as a discipline separate from the legal
practices of intellectual property rights (IPR) protection and enforcement is
explained. To establish the distinction, the differences between the profession
and practise of "Management" and the "Law" are outlined. This module also
highlights the importance of IPM. This, to date, has largely been a legal
endeavour. The purpose of this module is to lay a foundation for the proactive
management of IP amongst the diverse community of interests.

2 The Community of Interests

The world of business is changing at a breathtaking pace. During the last two
decades, the development of information technology and the arrival of the
Internet have created the Global Village we all live in today. Applications of new
technologies spread quickly around the world. As a result, ever more people
become familiar with these new technologies through the products they use in
their everyday lives. The age of mass production of the 1970s has given way to
the age of knowledge. Managing technology and its ability to differentiate market
offerings is the key to economic success.

Today, many companies in industrialized countries have decided not to

manufacture the products they develop and sell. It is difficult for them to maintain
or gain a competitive edge in manufacturing given the low cost, and skilled labor
available in, for instance, developing economies. Thus research and

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development as well as marketing and sales have become increasingly important
as a source of competitive advantage. The assets companies possess in the
form of technologies, designs and brands, is what increasingly determines their
value.

This growing significance is keyed to fundamental shifts in how value is created

and measured in global equity markets where the shares of firms from many
countries are bought and sold on a daily basis. While access to raw materials,
energy sources and robust markets remain important components of competitive
advantage, globalization and commoditization of production inputs coupled with
their price volatility has shifted long term competitive advantage towards those
that know how to innovate through new combinations. To quote the economist
Joseph Schumpeter:
innovation the carrying out of new combinations is the key to
entrepreneurial profits. [innovation] is the only way to create new
economic value over the long term1

Technological innovation takes place through research and development of new

products or processes. Business innovation is systemic and requires careful
consideration of all aspects of the business. Innovation in the Schumpeterian
sense comes from new combinations on all dimensions of the business system.
Business innovation is diverse. Scholars have recently characterized twelve
dimensions of business innovation such as innovation of offerings, customer
care, platforms and networking. 2 It will be discussed in detail in Module III.

Innovation is typically realized through the management decisions of those in the

market to allocate resources (investment) to change the competitive posture of
their firms on one or multiple dimensions of the existing business system. The
pursuit of profitable combinations of business is a competitive market race
amongst established firms and entrepreneurs that has no finish line. These often
go toward investments that maximize profits and increase their competitive
advantage.
Investments of all kinds carry a finite risk of failure. Investments in the knowledge
needed to realize the successful commercialization of innovations carry the
additional risk that they may be copied, used, or appropriated by competitors at
relatively low cost. The barriers to market entry are lower when the nature of the
offering is encoded in intangible knowledge (inventions, original expressions,
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brands) rather than tangible resources (precious metals, energy), which are more
difficult to appropriate.

Companies need a proper incentive for taking the financial risk for developing
new products or knowledge and therefore should be allowed to make an
appropriate financial return on their R&D efforts. If not, the flow of money for
innovative activities would dry up and the race to find new solutions to problems
or to improve existing inventions would end. If inventors and innovators could
not rely on some means to protect the knowledge they create, they would be at a
disadvantage in view of rivals who did not incur the often very high costs of
creating the knowledge. Such rivals would presumably be able to imitate at a
much lower cost or, in the extreme cases, at zero cost. 3 By obtaining patent,
trademark, design, trade secret and copyright rights, companies transform their
ideas into intellectual property. When companies register their ideas and
technologies to secure ownership, the results of a companys intellectual efforts
gain tangible value.

WIPO Member States agree on the importance of the continued encouragement

of innovation and the securing of the associated knowledge as intellectual
property. The Member States of WIPO have spent considerable resources to
build the global infrastructure for allocating property rights for inventors (patents,
trade secrets), creators (copyrights, designs), and providers of goods and
services (brands, marks, trade dress, geographical indications and appellations
of origin).

As a result, companies can use their intellectual property in a variety of ways.

Traditionally, they applied it to protect their own products. However, they may
also extract value directly from their portfolio of intellectual property by selling it,
licensing it, pooling it or exchanging it. This whole new market with buyers and
sellers of intellectual property is the vital nucleus of todays intellectual property
economy and the subject of this basic course on intellectual property
management.

The management of Intellectual property is an emergent subject of interest to

individual inventors, creators, firms, their agents, governments, economists,
financiers (OECD, World Bank, UNIDO), investors and intergovernmental
organizations (such as WIPO and its constituents). Intellectual property

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management is a highly sophisticated topic and requires an understanding of IP
law, technology, economics and finance. The common interest among these
seemingly disparate levels of society is the practise of innovation and the
corresponding promise of wealth creation.

Reflecting on this point, all other activities of management beyond new

combinations seem like housekeeping or the pursuit of an efficiency frontier that
has diminishing returns (for example mergers, acquisitions and other efficiencies
sought during market maturity).

3. Legal Advocacy and IPM

3.1 The role of legal practitioners

Legal professionals who are licensed to practice the law by various jurisdictions
typically take an oath to always render sound legal advice and serve their client
accordingly. This is a serious, ethical commitment that takes on a posture of
advocacy. This community of legal professionals is generally useful in resolving
disputes about the rule of law. While there are transaction costs, legal
professionals play a critical role in making markets and their environments
predictable and indeed manageable.

Legal professionals are classically trained using the lenses of doctrine and the
corresponding tools of contract, policy legislation and case law. In acting as
intellectual property professionals, intellectual property practitioners are the
agents of their clients (managers) and know how to procure rights from the
various granting entities and enforce them, when necessary, in a court of law or
other legal dispute resolution forum.

3.2 The role of managers

Entrepreneurs, executives and managers, on the other hand, typically have
responsibility of a different sort: something akin to fiduciary responsibility.
Fiduciaries are charged with the responsible management of firm assets for the
benefit all stakeholders (shareholders, employees, etc.). To manage is to

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actively reconcile opportunity with market context and allocate resources to
realize a profitable end. This requires knowledge of management disciplines
such as economics, marketing, operations, finance, accounting, technology,
organizational form, distribution and all possible combinations thereof.

Management must be done in a manner that is consistent with the legal

environment. Legal professionals act as advisors to keep fiduciaries on the right
side of the law.

3.3 The need for IP management

Historically, intellectual property was always primarily within the domain of

intellectual property practitioners. 4 IP involves legal processes such as filing,
prosecuting, maintaining and enforcing. Even though the main purpose of having
IP was to protect the competitive position of the companys products and
markets, IP was almost universally thought of as a legal process, and therefore
the responsibility for IP decisions fell outside the responsibilities of managers.

Daines notes that companies' perceptions about IP management started to

change as soon as the economic implications of IPRs became apparent.
Companies started to make money from IP rights. For example, patent licensing
became a major industry for pharmaceutical companies. 5 IPM became a critical
success factor. Intellectual property now makes up a large proportion of a
companies' market value, and IP management can no longer be left to
technology or legal departments alone.

Managers need visibility and control over the things they "manage. For example,
managers want to know: 6

Why do we need it?

Where do we need it?
What will it cost?
What has it earned (or will it earn)?
What business objectives does it support?
Who is using it and how?
How should we use it and why?
Why is it important?
Who else has some?
What it is worth?

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Questions like these are not easily answered by lawyers. Patent agents file
patent applications when they are instructed to do so by their clients. The patent
agent pre-supposes that the client knows why, when and where a patent should
be filed. However, IPM requires an integration of the legal processes of IP
acquisition, IP maintenance, IP exploitation and IP enforcement with business
strategies and objectives. Daines notes that although "this is really a very simple
concept it is easier said than done". 7

Hatcher8 notes that in the long term it is essential that IP be integrated into a
business and the business into the IP. He notes that it seems "...both logical and
a practical necessity... to fully equip management with the IP fundamentals for
modern business".

In many large firms, IPM has become the differentiating factor in new business
systems/models. As intangibles emerge as an asset class, large investment
banks and boutique private equity firms alike have begun raising and investing
funds targeted at intellectual property and other intangible assets (IA). Broadly
defined, these firms are targeting the traditional venture capital space, looking for
promising early stage innovation and inventions. However, rather than looking for
entrepreneurs and start-up companies, these firms are looking to invest in IP and
IA for development and commercialisation purposes, even before the start ups
are formed. While funds and firms often differ in structure, these enterprises work
with companies either to buy the IP/IA or invest in the company for
commercialisation of the IP/IA 9.

This means that the firms are further formulating strategies that focus on lead-
time, before products are developed, to strengthen competitively the existing and
relatively strong industries while at the same time building up dynamically as a
function of available resources and competitor analysis around their strengths. A
good example of this is the recent surge of R&D investments and policy focus
given to environmentally non-polluting products and companies in corresponding
businesses.

This growing focus on knowledge and innovation has placed IP rights under the
spotlight and highlighted the need to learn the best practices for IPM.
Internationally, as access to data on IP has improved, examples and cases of
IPM at national and international levels are emerging. Read the extract below on
how two countries secured market advantage for their coffee through different IP
strategies.

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Example
Coffee is the second most traded commodity in the world after oil. Altogether, we
drink over 400 billion cups each year. To retailers in wealthy countries, coffee
means consumers willing to pay $4 for a cappuccino. To many farmers in
developing countries, it means hard toil to earn less than a dollar a day. Seeking
to narrow this gap, growers and governments in coffee producing countries are
using a range of IPR to differentiate their coffee in the market place and achieve
higher returns.

Representatives from two of the worlds great coffee-producing nations, Ethiopia

and Colombia, told their stories at WIPOs 2007 International Symposium on
Geographical Indications in June.

Ethiopia and the Starbucks Story

Some 15 million people in Ethiopia depend on the coffee

sector, which generates 60 percent of the country's wealth.
(Courtesy EIPO)

The story began in 2004, when the EIPO began working with partners to identify
a mechanism which would lead to a greater share for Ethiopias coffee growers
of the high retail prices fetched by their Harrar, Sidamo and Yirgacheffe coffees.
Following extensive studies and consultations, a project proposal was developed
to capture the intangible value of selected fine coffees. A consortium of
stakeholders led by Mr. Mengistie was formed, including representatives of
farmers cooperatives, coffee exporters and government bodies. The key, they
agreed, was to achieve wider recognition of the distinctive qualities of these
coffees as brands to position them strategically in the expanding specialty coffee
market, while at the same time protecting Ethiopias ownership of the names so
as to prevent their misappropriation.
... The stakeholders opted for a trademark-based solution. The EIPO began filing
applications to register the names Harrar/Harar, Sidamo and Yirgacheffe as
trademarks in key market countries. In a novel move, this was to be combined
with the offer of royalty-free licenses to foreign coffee companies to create a
network of licensed distributors, who, in return would actively promote Harrar,
Sidamo and Yirgacheffe to consumers in the specialty coffee market. As Mr.
Mengistie stated: The theory is: make the pie bigger. Let the market pay,

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Objections

But in summer 2006 the strategy had threatened to unravel. The U.S. Patent
and Trademark Office (USPTO) had approved the application to register
Yirgacheffe. But the National Coffee Association (NCA), representing U.S. coffee
roasters, objected to the EIPOs applications to trademark first Harrar, then
Sidamo. The grounds for opposition in both cases were that the name had
become too generic a description of coffee, and as such was not eligible for
registration under U.S. trademark law. The USPTO turned down the application
for Harrar in October 2005 and for Sidamo in August 2006.

Starbucks, which was widely held in media reporting to have been a driving force
behind the objection, publicly offered to assist the EIPO in setting up a national
system of certification marks to enable the farmers to protect and market their
coffee as robust geographical indications. These systems are far more
effective than registering trademarks for geographically descriptive terms, which
is actually contrary to general trademark law and customs, said the company in
a statement. But the EIPO and its advisors disagreed. The designations, they
argued, referred not to geographical locations but to distinctive coffee types.
Moreover, appropriate intellectual property tools had to be chosen to meet
specific needs and situations. You have to understand the situation in Ethiopia,
Mr. Mengistie explained. Our coffee is grown on four million very small plots of
land. Setting up a certification system would have been impracticable and too
expensive. Trademarking was more appropriate to our needs. It was a more
direct route offering more control.

....

So what was the solution? In essence, Starbucks agreed to sign voluntary

licensing agreements which immediately acknowledge Ethiopias ownership of
the Harrar, Sidamo and Yirgacheffe names, regardless of whether or not a
trademark has been granted. Legal commentators have honed in on the use of
the term designation in the agreement as a means of circumventing the
obstacle caused by the status of the Harrar and Sidamo applications. Yes,
acknowledges Mr. Mengistie, designation is used here as a broader term than
trademark, to encompass some of the trademarks that are still pending
registration. It is not related to certification.

...

The media coverage has had the effect of greatly increasing public knowledge of,
and interest in, Ethiopias coffees. Partly because of this recognition, we have
begun to see increases in their price, says Mr. Mengistie. I learned from the
coffee farmers' cooperatives and exporters just three months ago that the price of
Yirgacheffe had already increased by $0.60 cents to $2 a pound.

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Colombia 50 Years of Evolving Strategies

Colombias coffee growers have a long history of developing strategies to protect

and promote their coffee. Luis Fernando Samper, Intellectual Property Director of
the National Federation of Coffee Growers of Colombia (FNC), which represents
the interests of 560,000 small coffee growers, offers this instructive account of
the road they have traveled.

During the late 1950s, the price of Colombian coffee plummeted from US$0.85 to
0.45 per pound due to an excessive supply of coffee on the world market. The
market was dominated by the coffee roasters, who would blend coffee beans
from various unspecified origins in their products in order to give themselves the
flexibility that would maximize their profit margins. As a result, public awareness
of the origin of coffees was low. Only 4 percent of consumers in the U.S., the
largest coffee market at the time, were aware that Colombia produced coffee.
This, the federation of growers felt, had to change. The FNC thought: Our coffee
is good, said Mr. Samper. We have to tell consumers where it comes from. So
Colombia became the first coffee producing country to embark on an active
strategy of differentiating and marketing its product.

They began by putting a face on Colombian coffee literally. With the help of a
New York advertising agency, the FNC created the character of Juan Valdez, to
represent the archetypal Colombian coffee grower. Television commercials
shown in North America in the 1960s featured Juan Valdez in the coffee fields
with his faithful mule, painstakingly selecting and hand-picking the ripest beans.
Consumers began to respond to the message that Colombian beans are grown
and harvested with great care, with little help from machines, in ideal climatic
conditions with plenty of rain, sun and fertile volcanic soil. Demand grew. Many
coffee roasters began marketing their products as Colombian coffee. And a
number launched high end products consisting exclusively of Colombian coffee.

From branded ingredient to certification mark

To obtain a license to use the Juan Valdez trademark, a product must consist of

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 100% Colombian coffee and meet quality standards stipulated by the coffee
growers federation. (Photo FNC)

A number of coffee roasters and marketers proved unwilling to fulfill the

conditions of the trademark license agreement that would allow them to use the
Juan Valdez ingredient brand alongside their own product brand. So a
complementary strategy was devised to capture this segment. Working with the
FNC, the Republic of Colombia registered the word Colombian, in relation to
coffee, as a certification mark in the U.S. and Canada. The formal standards
attached to these certification marks now provided a guarantee that the actors in
the market place would meet minimum quality standards when selling Colombian
coffee, thereby protecting its hard-earned reputation.

...
Yet the certification mark route was not proving an easy ride. The FNC found
enforcing their certification marks in North America difficult and expensive, and
their lawyers had to make regular presentations to the USPTO so as to prevent
registrations of trademarks containing the word Colombian which would give
brand owners the right to sell products containing little or no Colombian coffee.

Stepping forward Geographical indications

The way forward, the FNC concluded, lay in the use of geographical indications
(GIs).

Colombia already had in place the same legislation as Peru for the protection of
GIs, and in December 2004 the FNC presented the Colombian government with
an application to recognize Caf de Colombia as a GI. Within three months it was
ratified. In 2005, the FNC broke new ground by applying to protect Caf de
Colombia as a Protected Geographical Indication under the European Union
(EU) system - the first time this had ever been done for a product from a country
outside the EU following the opening of the EU system for non-European GI
products. After some ups and downs along the way, the EU procedure concluded
successfully in June of 2007, when the two-year period of opposition expired. By
September the formal recognition of Caf de Colombia as a Protected
Geographical Indication under the EU system became official.

Summing up, Mr. Samper highlighted the attraction of GIs for the Colombian
coffee industry, where origin is a key tool for differentiating and adding value to
the product, but where coffee marketers prefer to downplay origin in order to gain
flexibility. Unlike trademarks and certification marks, GIs are intrinsically linked to
attributes and quality standards related to origin. GI systems, which guarantee
origin and methods of production, he concluded, are set to flourish in todays
climate of increasing demand from consumers for more and better information

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about the products they consume.

Source: Elizabeth March Making the Origin Count: Two Coffees (Geographical
Indications to Colombian and Ethiopian Coffees), September 2007, WIPO
Magazine

Intellectual property assets have increasing market significance and need to be

the subject of resource allocation and proactive, opportunistic leveraging. Hence,
the inclusion of intellectual property as a distinct subject of practice, study and
research amongst managers.

Quick quiz: SAQ 1

Why does IPM require more than just legal knowledge?
Model Answer:
IP practitioners are trained to secure rights in intellectual property primarily
by interacting with complex government agencies tasked with such
functions. In this way legal professionals help to maintain predictable and
manageable markets. Entrepreneurs, executives and managers, on the
other hand, possess skill sets allowing them to acquire an intimate
understanding of the goals and strategies of a business. The combination
of IP knowledge and management principles enable managers to make
IP-specific decisions to further the interests of the stakeholders of the
business.

Key point:
IP is a source of sustainable differentiation and competitive advantage to
firms and individuals who innovate. Global equity markets are beginning to
measure intangible and IP value and hence it must be managed.

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4. IPM Imperatives

The management of intellectual property is a core competency for the manager

of a successful enterprise. Intellectual property has become the asset of the 21st
century. Mark Getty noted that oil had an immense impact on the industrialization
of the 20th century. He added:

IP is the oil of the 21st century.

In todays competitive business world, management must understand the

importance of IPR to a companys overall business goals and must develop and
implement an IPM strategy in accordance with those goals. In developing a
business strategy, management needs to understand the potential benefits of
IPR. For example, IPR can attract money from investors, provide revenue from
licensing, prevent competitors from entering the market, and allow for premium
pricing of a product or service. Understanding how IPR can benefit a company
will guide how that company can implement its IPM strategy. At the core of this
strategy will be the desire to both stimulate and capture creativity within the
company. The remainder of the modules will discuss in more detail how and why
to develop and implement an IPM strategy.

Suggested Reading: There is ample literature in the on line environment discussing

benefits of intellectual property to increase incentives to innovate and on the related
economic growth and competition in the market place. It is important to note that a firm
has other mechanisms, including exploitation of lead time, moving rapidly down the
learning curve, the use of complementary manufacturing capabilities and secrecy10 and
other government incentives for economic growth. During your study of the course, you
are expected to expand your knowledge through extra reading of the suggested
materials, and using key word searches to attain a broader view of how micro-economic
management decisions by a firm interplay with factors specific to each firm to maximize
their competitive advantage. This module focuses on how Intellectual Property has
become one of the important tools of management, through strategic decision making by
the firm and indeed by policy makers. The Prescribed Reading and Recommended
Reading lists mentioned at the beginning of this Module are non-exhaustive lists of
academic and industry literature chosen to broaden your understanding of IPM.

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5. Module Summary
The justification for the establishment of IPM as a discipline separate from the
legal practices of IPR protection and enforcement is driven by fundamental shifts
in how value is created and measured in global equity markets where the shares
of firms from many countries are bought and sold on a daily basis. While access
to raw materials, energy sources and robust markets remain important
components of competitive advantage, globalization and commoditization of
production inputs coupled with their price volatility has shifted long term
competitive advantage towards those that know how to innovate through new
combinations.

The world of business is changing at a breathtaking pace. During the last two
decades, the development of information technology and the arrival of the
Internet have created the Global Village we all live in today.

The assets companies possess in the form of technologies (patents), designs

and brands, is what increasingly determines their value. By establishing patents,
trademarks, designs, trade secrets and copyrights, companies transform their
ideas into intellectual property. Companies, therefore, carefully register their
ideas and technologies to secure their ownership. In this process, the results of a
companys intellectual efforts gain tangible value.

Historically, intellectual property was always primarily within the domain of

lawyers. Legal professionals play a critical role in making markets and their
environments predictable and indeed manageable. There are many interests of
communities in managing intellectual property to benefit society and economic
growth, in particular. Entrepreneurs, executives and managers on the other hand
typically have responsibilities of a different sort: Something akin to fiduciary
responsibility. Fiduciaries are charged with the responsible management of firm
assets to benefit all stakeholders (shareholders, employees etc.). To manage is
to actively reconcile opportunity with market context and allocate resources to
realize a profitable end. This requires knowledge of management disciplines
such as economics, marketing, operations, finance, accounting, technology,
organizational form, distribution and all possible combinations thereof.

This means that IPM does not only rely on appropriation and protection of
knowledge created by the firm. Instead, it combines these with the best
opportunities in the market which are dictated by a firms specific factors such as

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size, (capability, or innovation strategy), knowledge-specific factors (tacit vs.
codified), technology specific (e.g. product vs. processes innovations), industry
specific factors (e.g. life-cycle stage and appropriability regimes), and the
countrys legal environment (i.e. what can be protected through different legal
mechanisms) 11.

Companies started to make money from IP rights. For example, universities

started to make money licensing their patents and patent licensing became a
major industry for pharmaceutical companies. 12 IPM became a critical success
factor. Intellectual property now makes up a large proportion of companies'
market value, and IP management can no longer be left to technology or legal
departments alone.

The management of intellectual property is a core competency for the manager

of a successful enterprise.

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1
J. A. Schumpeter, The Theory of Economic Development English translation,
1934.
3
WIPO Publication, The Economics of Intellectual Property, January 2009,
http://www.wipo.int/export/sites/www/ip-
development/en/economics/pdf/wo_1012_e.pdf.
4
Greg Daines "What is IP Management Software and Who Needs It?" May 19th,
2009 http://ideanomics.com/category/economics/.
5
Greg Daines "What is IP Management Software and Who Needs It?" May 19th,
2009 http://ideanomics.com/category/economics/.
6
Greg Daines "What is IP Management Software and Who Needs It?" May 19th,
2009 http://ideanomics.com/category/economics/.
7
Greg Daines "What is IP Management Software and Who Needs It?" May 19th,
2009 http://ideanomics.com/category/economics/ .
8
JS Hatcher "MBA Courses and IP: Introduction Tangible IP, January 14th.
2009 http://www.tangible-ip.com/2009/mba-courses-and-ip-introduction.htm.
9
Ian Ellis and Kenan Patrick Jarboe Intangible assets in capital markets,
Intellectual Asset Management, May/June 2010
www.athenaalliance.org/pdf/IAM_41_IntangibleAssets.pdf
10
WIPO Publication, The Economics of Intellectual Property, January 2009, at
http://www.wipo.int/export/sites/www/ip-development/en/economics/pdf/wo_1012_e.pdf

11
WIPO Publication, The Economics of Intellectual Property, January 2009, at
http://www.wipo.int/export/sites/www/ip-development/en/economics/pdf/wo_1012_e.pdf

12
Greg Daines "What is IP Management Software and Who Needs It?" May
19th, 2009 at http://ideanomics.com/category/economics/.

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