The Handbook of European Intellectual Property Management

Part 1 A more efficient market for ideas

1.1 Europe's IP architecture

Laurent Manderieux, L Bocconi University, Milan

The EU - but not only the EU; The new EU-wide integrated IP rights: big success and much use; Partly integrated rights: harmonized rights can sometimes be of real help to companies; The European Patent Organization: a convenient European alternative route for obtaining patents; What about the future?

1.2 The strategic role of IP in European business

Ed Round, Marks & Clerk

1.3 IP in the knowledge economy

Bo Heiden and Ulf Petrusson, CIP

From blocking to building block; Managing (intellectual) assets, property and capital; The transformation to knowledge-based business models; A framework for developing knowledge-based business models

1.4 IP and open innovation

Hélène Raybaud and Yves Morel, Schlumberger

Open innovation: the new equation of globalization; Open innovation at Schlumberger; IPR and open innovation; In conclusion

1.5 Managing patents as assets

Lars Kellberg, Novo Nordisk

Getting the most valuable patents; From core technology to marketing claims and unique selling points; Securing freedom to operate through an enhanced bargaining position; Successful execution is at least as important as designing the strategy; Drafting patent applications for worldwide protection

1.6 Europe's different IP cultures

William Bird, Bird Goën

Part 2 Acquisition of IP rights in Europe

2.1 Patents

Peter Indahl, International Patent Bureau

Integrate the filing strategy with your business plan; Your company size and position in the market; The patent offices available in Europe; Substantive examination or pure registration; The first filing: national or European; The first filing: international; Quality of the first filing

2.2 Trade marks

Gabriella Modiano, Modiano Josif Pisanty & Staub

All roads lead to Europe; National filing system; The international trade mark system; The CTM system: Europe's unitary answer; A unitary (and unique) weapon against potential infringers in the European Union; The (positive) fate of historical national trade mark applications: the creation of 'seniority'; A single market: use in few countries, valid in 27 states; The expansion of the CTM in an ever-growing Europe

2.3 Copyright in Europe

Jan Nilsson, Ström & Gulliksson Intellectual Property Consulting

Copyright protection; Legal provisions; Rights to a work under copyright protection; Free use of works; The copyright symbol [!c!]; Legal measures against infringers; UK copyright law; French copyright law; New developments

2.4 Designs

Elisabeth Murray, Mathys & Squire

What is a design?; Legal protection for designs in the European Union; Protection of designs under the Community Design Regulation; Rights obtained under the Community Design Regulation; Taking action against infringement; Benefits of registration under the Community Design Regulation; Applying for registration; When to file; Third parties' rights; Summary

Feature: Utility models

Daniela Carosi, Italian Patent and Trademark Office

2.5 Trade secrets

Ruth Soetendorp, Centre for Intellectual Property Policy & Management, Bournemouth University

What is a trade secret?; How does a trade secret differ from confidential information?; What information can constitute a trade secret?; How does the law protect trade secrets?; International recognition of trade secret protection; Trade secrets and confidential information - some practical suggestions

Part 3 Commercializing IP in Europe

3.1 Innovation rights

Jean-Louis Somnier, Novagraaf Technologies

Innovation: a holistic view, going beyond technology alone; Entering Europe with an innovation: options for IP rights protection; IP protection of an innovation: a critical business decision

3.2 Building an international knowledge business

Christina Nordström, Swedish Patent and Registration Office

ClimateWell; Elekta

Feature: international innovation

Daniela Carosi, Italian Patent and Trademark Office

3.3 IP and proof of concept

Dan Richardson and Dr Paul McEvoy, Technology from Ideas, and Cathal Lane, Tomkins & Co

Environment and people; Sourcing ideas; Selection/filtering; Development; Key activities; Sale; Summary and future trends

3.4 Business-university collaboration

Lawrence Cullen, UK Intellectual Property Office

Purpose; The Toolkit; Using the Toolkit; Use of the Toolkit; Recent updates; Collaboration in Europe; The future: business-to-business model agreements; Conclusion

3.5 Managing IP in collaborative ventures

Martin A Bader, BGW AG Management Advisory Group

Collaboration = dilution of intellectual assets?; Collaborative success factors; Conclusions

3.6 Licensing as a growth strategy in Europe

Martin Sandford, Licensing Executives Society, Britain & Ireland

Risk perspective; Intellectual property; What is a licence?; Licensee selection; Common pitfalls - what can go wrong; When would licensing be inappropriate?; Conclusions

3.7 Innovation support in the new Europe

Eva Bakos and Andras Haszonits, Hungarian Patent Office

Situation of Hungarian SMEs according to the VIVACE Survey 2 6; Economic incentives for innovation and the application of IPR; The VIVACE programme; Conclusions

Part 4 Technology and patents

4.1 Creating a patent position in Europe

Alan Senior, J A Kemp & Co

The building blocks; Litigation; Building a position with the blocks

4.2 European patents: differences from the United States

Timothy J May and Beth Z Shaw, Finnegan Henderson

Introduction; Filing and prosecuting patent applications in the United States and Europe; Post-grant procedures; Litigation/enforcement

4.3 Prior art searching

Dean Parry, Patent Seekers

It's a complex system; The standard route to gaining a patent; How does a patent office process your patent application?; Common misconceptions; Light at the end of the tunnel; A few helpful suggestions

Feature: Assisted patent searches

Professor Heinz Muller and Dr Alban Fischer, Swiss Federal Institute of Intellectual Property

4.4 Portfolio building

Sue Scott, Abel & Imray

How to develop your filing strategy; In which countries should you file patent applications?; The value of different types of claim; Claim types: a pharmaceutical case study; Portfolio review

4.5 Patent exceptions

John Brunner and James Warner, Carpmaels & Ransford

In what way are medical inventions excluded from patentability?; Ways of protecting medical inventions in practice at the EPO; Computer software and EPO patents; Patents for plant and animal varieties

4.6 Patent clearances

Micaela Modiano, Dr Modiano Associati

European opposition: a single procedure and a single result; Third party observations: steering prosecution at no cost; Double attack; Summary

4.7 Patents on a budget

Keith Loven, Loven & Co

Do you have an invention?; Do you need a patent?; Decide on a sensible patenting strategy

Part 5 Creative and digital rights

5.1 Issues in European copyright

Andrew Yeates, Sheridans

The benefit of flexibility for copyright; To harmonize or not to harmonize, that is the question; Gowers Review of Intellectual Property; Summary

5.2 Copyright and the digital economy

Emanuel Meyer, Swiss Federal Institute of Intellectual Property

5.3 Digital policy management

Mark Isherwood, Rightscom

Defining the problem; Digital policy management; Some DPM building blocks; Standards development and interoperability

5.4 Digital distribution and Creative Commons

Paula le Dieu, Magic Lantern Productions

Copyright - the Swiss army knife of distribution tools; Creative Commons - some rights reserved; Magnatunes; DRM - the sledgehammer of distribution tools

Part 6 Brands and trade marks

6.1 Taking products and services to market across Europe

Brian Morgan and Esther Gottschalk, Marks & Clerk

Before a launch; After a launch

6.2 Managing brand and design portfolios in Europe

Silas Brown, Briffa

Trade mark protection; Registered designs; A balance of risks; Conclusion

6.3 Building a strong (European) trade mark

Sofia Arenal, Mewburn Ellis

Selection; Registration; Beyond registration

6.4 Defending brands

Lisa Lovell, Brand Enforcement

Awareness; Intelligence; Enforcement; Periodically revise your IP enforcement strategy; The benefits of implementing a consistent IP enforcement strategy

Part 7 Company knowledge

7.1 Intellectual assets management

Iain Russell, Intellectual Assets Centre

The knowledge gap; Why is this important to businesses?; Why are these assets 'hidden' and does it matter?; Why focus on IA management and what does it encompass?; How to manage intellectual assets; How to measure and communicate value; Which approach should be adopted?

7.2 Inventions by employees

Walter Holzer, GMX

7.3 IP and the web

Silas Brown, Briffa

Trade marks on the web; Master of your domain; Digital content on the web; Conclusion

7.4 Database rights

Robert Lands, Finers Stephens Innocent LLP

The database right; The British Horseracing Board case

Part 8 IP as an asset

8.1 Valuing IP, intangibles and goodwill

Kelvin King, Valuation Consulting

Relevant accounting standards; Corporate governance; IPR and the valuation expert; Methods for the valuation of IPR; Conclusion

8.2 Brand valuation

David Haigh, Brand Finance

Approaches to 'brand' valuation; Steps in an economic use valuation; 'Existing use to existing owner'; Conclusions

8.3 The monetization of intellectual property

Guido von Scheffer, Stephan Lipfert and Juliane Ostler, IP Bewertungs AG (IPB)

General questions; The capital market's view of R&D; Intermediates and external IP logistics; Patent value funds (PVF); Alternative commercialization options - patent live auctions

8.4 Patent evaluation

Poul-Erik Nielsen, Danish Patent and Trademark Office

Patents as a strategic weapon; Substantial content of IPscore 2.0[r]; Evaluation methodology for IPscore 2.0[r]

Part 9 IP and corporate finance

9.1 Raising finance through IP

Hugh Dunlop, R G C Jenkins & Co

IP assets from early-stage investment to IPO; Raising seed capital; Beyond seed capital - venture capital; Summary of IP assets

9.2 Investors and IP risks

Peter Finnie, Gill Jennings & Every

A risk management approach to IP; A structured approach; IP strategy; Conclusions

9.3 IP and acquisitions

Omar Baki, Ann Danared, Barry Franks, Anders Holmberg and Peder Oxhammar, Brann Patentbyrå

Important questions; Levels of analysis; Due diligence process; The due diligence report

9.4 IP and private equity

Malte Köllner, Triangle Venture Capital Group

Part 10 Selected IP jurisdictions

10.1 (to come)

10.2 The United Kingdom

Jacqueline Needle, Beck Greener

The cost and incidence of patent litigation; UK litigation procedures; Is the cost of enforcement a reason to avoid protection?; How to avoid litigation

10.3 IP in France

Christian Nguyen van Yen, Marks & Clerk

10.4 IP in Italy

Gabriella Modiano and Micaela Modiano, Dr Modiano & Associati

Using available rights; Litigation speeded up; Looking to the future

Feature: Changes in the Italian IP system

Daniela Carosi, Italian Patent and Trademark Office

10.5 IP in Spain

Miguel Vidal-Quadras Trias de Bes, Amati Vidal-Quadras Advocats

Changes in the regulations related to IP; Changes in litigation regulations and judicial proceedings; Changes in the IP agents; Conclusions

10.6 The Nordic countries

Annelise Holme, Holme Patent A/S

Denmark; Finland; Sweden; Norway

10.7 Benelux

Bernhard Kügele, Novagraaf (International) and Pieter de Ruijter, Novagraaf (Netherlands)

The Netherlands; Belgium; Luxembourg; European Patents; Court proceedings; Trade marks in Benelux

10.8 IP in Ireland

Olivia Catesby, Tomkins & Co

10.9 The accession states

Michael Blakeney, Queen Mary Intellectual Property Research Institute, University of London

Accession; Former Communist countries; Case studies

Feature: IP in Slovenia

Janez Kukec Mezek, Slovenian Intellectual Property Office

Part 11 IP protection

11.1 Litigation strategies for European IP registered rights

Georgie Collins, Bevan Brittan

Pan-European patent injunctions - past, present and future; Community Trade Marks and Community Design Right; The future: COMPAT, EPLA and the Enforcement Directive; Considerations when deciding where to litigate; Checklist of key strategies for a claimant; Checklist of key strategies for a defendant

11.2 Differences in patent litigation

Nigel Stoate, Simon Cohen and Matthew Burman,Taylor Wessing

The legal system; Disclosure; Evidence; Cost; Duration; Legal aspects; EPO proceedings; Conclusion

11.3 Opposition at the European Patent Office

Alan MacDougall and Chris Hamer, Mathys & Squire

What challenges can be made; How to build a case; Once you have built a case, what next?; What is needed to file the opposition; What happens after filing the opposition; How long it takes and how much it costs; Help with an opposition; Can you get an award of costs?; What happens to a European Patent when an opposition is pending; Can you appeal the decision?; What happens after filing the appeal; Can you appeal the Board of Appeal's decision?; Tips for opposition/appeal strategy

11.4 IP insurance

Matthew Hogg, Kiln

Inherent risks of IP; IP value; Risk and insurance; IP defence insurance; IP enforcement insurance; IP value insurance; Open source compliance insurance