Protéger sa propriété intellectuelle en innovation ouverte

Sylvie PonchautDirecteur général- BioWin

1. Open innovation basics.

Henry Chesbrough defined open innovation as follows:

“Open innovation is a paradigm that assumes that firms can and should use external ideas as well as internal ideas, and internal and external paths to market, as the firms look to advance their technology”

Open innovation consists of networking with other companies, R&D facilities, interacting with start up ventures, public research institutes, ‐universities, external suppliers and sharing and accessing outside information and technology.

Open innovation does not refer to free knowledge or technology. While “open source” refers to royalty-free technologies, open innovation refers to collaborative networking, and may involve significant payment of license fees.

Key aspects of Open innovation:◦Networking◦Collaboration◦Entrepreneurship◦IP management◦Global Vision◦Access to information and knowledge

management ◦Access to finance

2. Intellectual property management in open innovation:

Tips and tricks for:- the development of the project proposal phase- the research phase- the development and commercialisation phase

Development of the project proposal

Identify your partners Carfully examine prior art (scientific litterature and patent databases) Elaborate your project proposal and clearly define what the proposed collaboration is intended to achieve. Establish clear intent and define a clear business focus. Draft the planning and the budget. Include a detailed description of the technical workpackages and a credible exploitation plan.

IP Strategy

  Be carefull with confidentiality issues: sign a confidentiality agreement as

early as possible Discuss about partners’ rewards as soon as possible Align the partners’ interests. Industry and academia often have different

goals, incentives, processes and working practices. Spend sufficient time and effort to understand what each has to offer and

each requires. Discuss about governance and coordination of the collaborative

program Speak about dissemination strategy of the results (publications and

public disloure) especially when you collaborate with academia Clearly identify your pre-existing know-how Provide the right professional skills for the negotiation of the

consortium agreement

Research phase

R&D

Strategy

Research planning phase

Research phase Research Breaktrough

Set objectives and identify milestones. Research,develop strategies, validate in vitro and in vivo models, experiment, repeat and confirm, verify. Generate validated outpouts.

IP Strategy

Keep laboratory notebooks

Be careful with confidentiality issues

Locate third party rights and eventually decide to make or to buy the technology you need.

Update information concerning competitors’ IP and disseminate it your partners

Develop the appropriate IP/patent strategy:•To apply or not to apply? Costs-benefit analysis, patents vs trade secret, defensive publication, …•When to apply?•What to apply for? Some features of a product may be protected by more than one IP right.•Where to apply? national, international protection,…•Legal, technical advice and choice of the patent agent.

Development and commercialisation phase

Devel. &

marketing

strategy

Development Marketing Check the stability of the outcomes Select and develop the best prototype Optimise the performance

Seek partners Negotiate agreements (license, distribution, …).

IP strategy

Develop a proactive (rather than reactive) IP strategy: • License in.• Protect the product by various forms of IP Rights.• Make defensive publications.

Check prior art again and check third party positions. Then, develop strategies to gain access to overlapping IP owned by others if needed to allow the product to be commercially developed/put on the market.• Licensing in .• Cross-licensing.• « Invent around ».• Develop strategic research and commercial alliance.• (Oppose or invalidate the patent right).

Revise, if necessary, IP protection strategies.

Consider effective ways for protecting and promoting trademarks.

The portofolio of registered patents (and eventually trademarks) will need careful management.

Monitor the marketplace for possible infringement and enforcement action.

Thank you!