Model IPR Support Services for SMEs

Part III

Dr. Rajendra Prasad
25 January 2011

Introduction

We have thus far covered in our previous two articles some of the best and noteworthy practices in providing public IPR support services from several countries, viz., Japan, South Korea, Denmark, Australia, Canada and United States of America. We wish to conclude our topic with some more noteworthy best practices in other countries, e.g., Switzerland, United Kingdom, Austria, and France in this first issue of Volume 2 of our newsletter in 2011.

It must be kept in mind that the IPR support service systems for SMEs are invariably faced with considerable challenges even in those countries such as those described in these articles which have, by comparison, good offerings in place.

Swiss Federal Institute of Intellectual Property (IPI)

This institute with its headquarter in Berne, is known as national competence centre and regarded as the first major source of information regarding IPR and the protection of technology and know-how in Switzerland. It is the federal agency for intellectual property matters, yet distinctly different from other national patent offices. The IPI, like all other national patent offices receives applications for patents, trademarks and designs and grants them to the applicants. However, it does not examine a patent application with regard to its novelty or inventive step. Furthermore, the Institute is (i) responsible for drafting legislation in the field of IPR, (ii) acts as a consultant to the Federal Council and other federal bodies concerning IPR matters, and (iii) represents Switzerland in IPR matters at the international level (WIPO, OECD, TRIPS etc.).

The IPI is operated as a legal entity, registered with the Switzerland's Commercial Register, and acts autonomously but its budget is largely independent from the Swiss federal budget. Its funding is provided through the income generated by way of IP services and registration fees. The present structure of IPI is the result of a reform process started in 1996.

An outstanding feature of the working of IPI is the extensive support actions for SMEs and IPR awareness raising initiatives through the publication of booklets and documents, public seminars, lectures and workshops. Some of the important services offered by IPI, especially for SMEs are described in the following paragraphs:

Platform for Small and Medium Enterprises

An online portal on IP matters for SMEs at the above site is functional for use of SMEs. The visitors to the site can easily learn the basics of patent, design, trademark, copyright and geographical indications. The web-pages have been designed very tastefully and are easy to understand and provide contact numbers for any questions on protection of innovations and creations.

The IP Advisory Network

This is perhaps one of the most interesting and useful services not known to exist anywhere else. Patent attorneys from Switzerland and Liechtenstein, as part of this network, offer advice to small and medium-sized enterprises as well as individuals, free of charge for up to 45 minutes, on questions concerning patent protection and the copyright protection of software. The initial consultation takes place in the chambers of the participating attorney and is conducted by a qualified person. For this free consultation available only once, one can contact the Patent Attorney of one's choice who is a member of the IP Advisory Network which is a joint project of the IPI and the three Swiss patent attorney associations.

IP Search

One of best professional services from IPI is the 'IP Search' for IP professionals and others from variety of databases with additional support services both for patents and trade marks. Regular training programmes are offered in various secondary schools and universities in order to promote the usage of IPR. Similar programmes, sometimes moderately priced, in association with local business development agencies, chambers of commerce etc. are also offered periodically.

A special noteworthy programme of the IPI is the service "Assisted Patent Search" for SMEs, through which entrepreneurs may conduct, with the help of an IPI employee, up to half a day of research in free patent databases at the premises of the IPI.

Intellectual Asset Centre, Glasgow (IAC)

IAC is a unique centre supported by the Scottish Government that assists businesses in deriving value from their intellectual assets in a holistic view. It came into being as a realisation of the fact that the value of unexploited intellectual assets (IA) lying in Scottish companies were judged to be worth several billion pounds. The centre therefore terms it core activity as 'Intellectual Asset Management (IAM)' bringing focus on capturing and managing knowledge, and exploiting it for commercial gain through protection of both tangibles and intangibles.

The Centre has produced a range of tools that can be downloaded and used freely; the tools available include questionnaires, diagnostics, glossaries and lexicons, business simulations, IA registers and audit tools.

Support to companies is provided by way of information booklets, simulations games and case studies in a variety of events and workshop programmes, which are often run in conjunction with other partner organisations.

INPI, the National Industrial Property Institute (Institut national de la propriété industrielle), France

The French INPI is the national intellectual property office of France, in charge of patents, trademarks and industrial design rights. It provides a wide range of services to enterprises, directly, through an extensive web-based information system and through regional offices. These services cover all forms of intellectual property and are offered by way of information provision, training and counselling.

Pre-diagnosis of Industrial Property

Since 2004, INPI has been offering 'pre-diagnostic' audit that consists of an evaluation of the potential of an enterprise in terms of its industrial property. This service seems to me a most pro-active approach of a national patent office anywhere. The pre-diagnoses are made by INPI experts together with those trained in industrial property from regional chambers of commerce and industry or other consultants specially recruited by the INPI. The cost of producing a pre-diagnosis study amounts to upwards of 1500 € which is entirely funded by the INPI or co-financed by the Regional Council; the service to the company is, however, totally free.

Each pre-diagnosis study is carried out in key four steps. In the first step, the internal and external environment of the target company is studied along with the competition it faces. In the second step, analysis of company's products and services, organizational set up and its financial situation is carried out with a visit to the company. In the third step, a report is generated highlighting the potential progress the company could make and the possible courses of action, resources and tools for implementation. In the last and final step, a discussion with company representatives is held to clarify the consequences of the action identified as part of pre-diagnosis.

The results of a pre-diagnosis are kept confidential and consume about two half-day interactions. The result of such intellectual property audit is that enterprises are not only pointed in the right direction, in terms of registering industrial property, but the enterprise management is helped to develop a whole new perspective on the significance of IP management.

Several thousand IP pre-diagnostic analyses are reported to have been carried out since 2004 and each pre-diagnosis is regularly monitored resulting into a high satisfaction rate among clients many of whom have already sought protection of their IP.

Austria Wirtschaftsservice (AWS)

AWS is a state-owned bank of Austria specifically geared to supporting small and medium enterprises and to strengthen their competitiveness.

Innovation Protection Programme (IPP), Austria

IPP was established by AWS in 2006 as a response to the needs of SMEs in relation to the international protection of their intellectual property. It therefore provides its clients from SME sector both the funding for IPR protection in emerging markets and with regional expertise. The "Emerging markets" are defined as all non-OECD member countries, though the emphasis is on China, India, and Russia. Fluent speakers of Mandarin and Russian provide regional and legal knowledge, both through the Vienna headquarters and the Shanghai branch office. AWS has also built up a network of specialized lawyers in the IP field in China, India, and Russia.

IPP Services

While AWS is geared to raise IPR awareness among Austrian entrepreneurs through training and to help them protect and manage their IPR portfolios, IPP provides risk assessment, monitoring and investigation of infringements and support for legal and administrative action in complex environments such as China, India, and Russia. Essentially, however, the programme provides support and assistance for Austrian small and medium sized enterprises in protecting their intellectual property rights in these countries keeping an eye on the IPR regimen and prospects of enforcement of IP.

Lobbying with governments in the target countries is also considered an important background activity by these institutions. Further details of these services can be seen on the websites of AWS and INNOVACESS, which is a consortium of a network of the national patent offices of the European Union, the European Patent Office and the Office for Harmonization in the Internal Market. INNOVACESS is supported by the European Commission.

The main objective with the INNOVACESS network is to provide general information on domestic, foreign and international intellectual property rights to small and medium-sized companies and academia in Europe.