SIST-TS CEN/TS 16555-4:2015
(Main)Innovation management - Part 4: Intellectual property management
Innovation management - Part 4: Intellectual property management
This Technical Specification provides guidance to assist an organization to identify, capture, and safeguard intellectual property, in order to:
- provide organizations with an overview of the fundamental principles of intellectual property management, in the context of the innovation process;
- promote best practices in intellectual property matters that result in efficiently acquiring intellectual property, while increasing the organizations’ ability to effectively address intellectual property owned by third parties.
This Technical Specification is applicable to all types of organization, including the public sector. Special consideration has been given to the needs of SMEs.
Innovationsmanagement - Management von Intellectual Property
Diese Technische Spezifikation ist ein Leitfaden zur Unterstützung von Organisationen bei der Ermittlung, Erfassung und beim Schutz von geistigem Eigentum, um:
- Organisationen einen Überblick über die wesentlichen Grundsätze des Managements des geistigen Eigentums im Rahmen des Innovationsprozesses zu geben;
- beste Verfahrensweisen in Belangen geistigen Eigentums zu fördern, die effizient zur Erlangung geistigen Eigentums führen, während die Fähigkeit der Organisation zur effektiven Handhabung von geistigem Eigentum im Besitz von Drittparteien verbessert wird.
Diese Technische Spezifikation ist für alle Arten von Organisationen anwendbar, einschließlich des öffentlichen Sektors. Die Bedürfnisse kleiner und mittelständischer Unternehmen (KMU) wurden besonders berücksichtigt.
Management de l'innovation - Partie 4 : Management de la propriété intellectuelle
La présente Spécification technique fournit des lignes directrices pour aider un organisme à identifier, acquérir et protéger la propriété intellectuelle, afin de :
- fournir aux organismes un aperçu général des principes essentiels du management de la propriété intellectuelle, dans le contexte du processus d'innovation ;
- promouvoir les meilleures pratiques en matière de propriété intellectuelle, afin d'acquérir efficacement une propriété intellectuelle, tout en augmentant la capacité des organismes à traiter efficacement la propriété intellectuelle détenue par des tierces parties.
La présente Spécification technique s'applique à tous les types d'organisme, y compris au secteur public. Une attention particulière a été portée aux besoins des PME.
Upravljanje inovacij - 4. del: Upravljanje intelektualne lastnine
Ta tehnična specifikacija zagotavlja navodila za pomoč organizaciji pri opredelitvi, zajemu in varovanju intelektualne lastnine, da bi:
– organizacije dobile pregled nad temeljnimi načeli upravljanja intelektualne lastnine v okviru procesa inovacij;
– se spodbujale najboljše prakse v zadevah intelektualne lastnine, ki vodijo v učinkovito pridobivanje intelektualne lastnine, hkrati pa bi se izboljševala sposobnost organizacij za učinkovito obravnavanje intelektualne lastnine v lasti tretje strani.
Ta tehnična specifikacija se lahko uporablja za katero koli vrsto organizacije, tudi za javni sektor. Posebna pozornost je namenjena potrebam malih in srednje velikih podjetij.
General Information
Standards Content (Sample)
SLOVENSKI STANDARD
SIST-TS CEN/TS 16555-4:2015
01-februar-2015
Upravljanje inovacij - 4. del: Upravljanje intelektualne lastnine
Innovation management - Part 4: Intellectual property management
Innovationsmanagement - Management von Intellectual Property
Management de l'innovation - Partie 4 : Management de la propriété intellectuelle
Ta slovenski standard je istoveten z: CEN/TS 16555-4:2014
ICS:
03.100.40 Raziskave in razvoj Research and development
03.100.50 Proizvodnja. Vodenje Production. Production
proizvodnje management
03.140 Patenti. Intelektualna lastnina Patents. Intellectual property
SIST-TS CEN/TS 16555-4:2015 en,fr,de
2003-01.Slovenski inštitut za standardizacijo. Razmnoževanje celote ali delov tega standarda ni dovoljeno.
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SIST-TS CEN/TS 16555-4:2015
TECHNICAL SPECIFICATION
CEN/TS 16555-4
SPÉCIFICATION TECHNIQUE
TECHNISCHE SPEZIFIKATION
December 2014
ICS 03.100.40; 03.100.50; 03.140
English Version
Innovation management - Part 4: Intellectual property
management
Management de l'innovation - Partie 4 : Management de la Innovationsmanagement - Teil 4: Management des
propriété intellectuelle geistigen Eigentums
This Technical Specification (CEN/TS) was approved by CEN on 27 October 2014 for provisional application.
The period of validity of this CEN/TS is limited initially to three years. After two years the members of CEN will be requested to submit their
comments, particularly on the question whether the CEN/TS can be converted into a European Standard.
CEN members are required to announce the existence of this CEN/TS in the same way as for an EN and to make the CEN/TS available
promptly at national level in an appropriate form. It is permissible to keep conflicting national standards in force (in parallel to the CEN/TS)
until the final decision about the possible conversion of the CEN/TS into an EN is reached.
CEN members are the national standards bodies of Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia,
Finland, Former Yugoslav Republic of Macedonia, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Lithuania,
Luxembourg, Malta, Netherlands, Norway, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and United
Kingdom.
EUROPEAN COMMITTEE FOR STANDARDIZATION
COMITÉ EUROPÉEN DE NORMALISATION
EUROPÄISCHES KOMITEE FÜR NORMUNG
CEN-CENELEC Management Centre: Avenue Marnix 17, B-1000 Brussels
© 2014 CEN All rights of exploitation in any form and by any means reserved Ref. No. CEN/TS 16555-4:2014 E
worldwide for CEN national Members.
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Contents Page
Foreword .3
Introduction .4
1 Scope .5
2 Normative references .5
3 Terms and definitions .5
4 Concept and purpose of intellectual property management .6
5 The intellectual property strategy .8
5.1 The role of top management .8
5.2 Interactions with various functions .9
5.3 Competences and skills requirements . 10
5.4 Budget and cost control . 11
5.5 Communication . 11
6 Implementation of the IP strategy . 12
6.1 Traceability . 12
6.2 IP decision making . 12
6.3 Strategic intelligence and risk management . 13
6.4 IPR portfolio development, management and exploitation . 14
6.4.1 Structuring IPR portfolio . 14
6.4.2 Analysis of the potential IPR . 14
6.4.3 Intellectual property exploitation . 15
6.4.4 Acquisition, sale, concession and licensing (-in and -out) of third parties IP rights . 16
Annex A (informative) Authenticated documentation to record IP . 17
Annex B (informative) Innovation and invention disclosure . 18
Annex C (normative) Methods and criteria for the assessment of IP rights . 19
C.1 Objectives and principles . 19
C.2 Strategic criteria. 20
C.3 Qualitative criteria. 22
C.4 Quantitative criteria . 23
Annex D (informative) IP and standardization . 26
D.1 General . 26
D.2 Various strategies of the organization relayed by intellectual property . 27
Annex E (informative) Intellectual property management in a collaborative environment . 28
E.1 Introduction . 28
E.2 Definition . 28
E.3 Scope of collaborative contexts . 29
E.4 Different types of collaboration in the innovation process . 29
E.5 Legal . 30
E.6 Collaboration to create; impact of financing sources on IP ownership, assignment . 31
E.7 General best practices to comply with . 31
Bibliography . 33
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Foreword
This document (CEN/TS 16555-4:2014) has been prepared by Technical Committee CEN/TC 389 “Innovation
Management”, the secretariat of which is held by AENOR.
Attention is drawn to the possibility that some of the elements of this document may be the subject of patent
rights. CEN [and/or CENELEC] shall not be held responsible for identifying any or all such patent rights.
This document is not intended for the purpose of certification.
The CEN/TS 16555 series consists of the following parts with the general title Innovation management:
— Part 1: Innovation Management System;
— Part 2: Strategic intelligence management;
— Part 3: Innovation thinking;
— Part 4: Intellectual property management;
— Part 5: Collaboration management;
— Part 6: Creativity management;
— Part 7: Innovation management assessment.
Part 7 is in preparation.
According to the CEN-CENELEC Internal Regulations, the national standards organizations of the following
countries are bound to announce this Technical Specification: Austria, Belgium, Bulgaria, Croatia, Cyprus,
Czech Republic, Denmark, Estonia, Finland, Former Yugoslav Republic of Macedonia, France, Germany,
Greece, Hungary, Iceland, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Norway, Poland,
Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and the United Kingdom.
3
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Introduction
This Technical Specification CEN/TS 16555-4 is linked to CEN/TS 16555-1:2013 (especially to
CEN/TS 16555-1:2013, 11.4).
The effective management of intellectual property, developed as a lever and a tool to support the process of
innovation, is a necessary prerequisite for organizations' development, growth and protection of their
competitiveness. Intellectual property management thus supports, gives rise to and enhances outcomes of the
innovation process.
Intellectual property management includes observation and analysis of third parties' intellectual property, for
instance, for the purpose of achieving freedom to operate for an organization's products.
In order to adequately address intellectual property management, the organization should consider the
following:
— intellectual property strategy, as an integral part of the organization's business strategy;
— intellectual property strategy, as an integral part of innovation management strategy;
— the safeguarding of the potential intellectual property throughout the entire organization;
— methods used to manage and use intellectual property as a support of business strategy, for example
traceability, protection);
— applicable legislation in the territories or regions under consideration;
— costs of obtaining and maintaining intellectual property and possible enforcement costs which could
ensue;
— differences in the contribution of various public authorities to acquiring IP rights and promoting practices
throughout the world;
— methods of protecting ‘know-how’, where appropriate.
In this Technical Specification, the terms intellectual property and intellectual property rights are precisely
defined, and are given a broad and general definition in Clause 3.
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1 Scope
This Technical Specification provides guidance to assist an organization to identify, capture, and safeguard
intellectual property, in order to:
— provide organizations with an overview of the fundamental principles of intellectual property management,
in the context of the innovation process;
— promote best practices in intellectual property matters that result in efficiently acquiring intellectual
property, while increasing the organizations’ ability to effectively address intellectual property owned by
third parties.
This Technical Specification is applicable to all types of organization, including the public sector. Special
consideration has been given to the needs of SMEs.
2 Normative references
Not applicable.
3 Terms and definitions
For the purposes of this document, the following terms and definitions apply.
3.1
background
pre-existing IP that a party brings to a collaborative joint venture
3.2
foreground
intellectual property and/or intellectual property rights that are collectively generated by the one or more of
parties within a collaborative joint venture
3.3
freedom to operate
state wherein a product or service is not exposed to IP other than own IPR or licensed-in IPR
3.4
intellectual property (IP)
part of intellectual assets owned by a person or organization as a result of creations of the mind or the intellect
Note 1 to entry: Intellectual property can be either registered (i.e. statutory) or unregistered (i.e. non statutory or
owned by default without any specific registration action).
3.5
intellectual property rights (IPR)
legally protected intellectual property which can be registered and unregistered
3.6
side ground
IP that may be generated by a party during the period of the collaborative joint venture, but specifically
excluded from the scope of the joint venture
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4 Concept and purpose of intellectual property management
IP management involves identifying, tracing along time, deciding on publishing and potentially safeguarding IP
on an individual IP level. IP to be managed includes technical inventions, trademarks, software, know-how,
etc.
Core aspects of IP management are:
— identifying and managing IP created within the organization;
— identifying IP held by other organizations;
— managing the organization's IP rights portfolio through the discovery, acquisition, maintenance, trading
and relinquishing of IP rights (see 6.4);
— identifying, mitigating and managing risks emerging from other organizations' IP rights and determining
level of freedom to operate for innovation created by the innovation process. An innovation created by the
innovation process may achieve a high level of freedom to operate or may, by hedging against risks from
other organizations, create legal risks for them;
— supporting the innovation process and safeguarding results emerging from it.
The organization should begin the IP management process by identifying and tracing IP, then making
management decisions as to how to deal with such identified IP. These decisions depend of the type of IP.
IP management should take appropriate measures to secure confidentiality with respect to otherwise
unprotected IP such as know-how, invention disclosure, trade secret, or yet unfiled patent applications.
Intellectual property can be protected by a variety of legal rights. Some IP rights come into existence
automatically (e.g. copyright), some need to be registered (e.g. patents), and for some registration is an option
which can provide additional benefits (e.g. trademarks). In some cases there are strict criteria and dates which
should be adhered to. This applies particularly to patents (for technical inventions), where premature public
disclosure, or failing to meet deadline dates can invalidate the protection. Since IP rights can vary between
jurisdictions, it is important to check the rules in the countries where protection is required.
In all cases, it is important to be able to provide evidence of creation, in case challenged. In practice this
means that evidence, legally acceptable in a court of law, should be kept to prove date of creation,
contributors and their relative contributions.
For technical inventions:
— keeping IP proprietary by means of confidentiality or by means of legal protection;
— making IP public to ensure the IP remains publicly available and cannot be protected by others;
— documentation and register maintenance of use of IP;
NOTE See Annex A.
— registering of or licensing-in of other organizations' IP rights to achieve freedom to operate;
— licensing-out the organization's IP;
— challenging other organizations' IP rights to achieve freedom to operate.
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For trademarks:
— acquisition of trademarks;
— observing use of organization's trademarks;
— observing other organizations' trademark activities;
— challenging other organizations' trademark IP rights if they conflict.
For copyrights including software:
— documentation of creation and use of copyright-protectable creations such as printed publications,
software, etc.
For designs:
— application of design rights and patents;
— observing other organizations' design protection activities;
— acquisition of or licensing-in other organizations' design rights and patents to achieve freedom to operate;
— invalidating other organizations' design rights and patents to achieve freedom to operate.
The organization should refer to 6.2 and Figure 1 below for criteria to be applied in IP decision making.
Figure 1 — IP decision tree
The IP rights portfolio management should be customized to suit the particular product field, the level of
collaborative activity and the protection required in each territory (see 6.4).
The IP management process should continuously monitor and be administratively interlinked with the
innovation process (see Figure 2).
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Figure 2 — Interaction of IP in the innovation process
The purpose of IP management is to support the innovation strategy (see CEN/TS 16555-1) and to safeguard
results emerging from it.
IP management is the management of an organization's IP assets to support organization's innovation and
growth. This also involves the management of any legal rights associated with the IP, which includes obtaining
the legal protection and enforcing it as appropriate.
An innovation created by the innovation process may either provide a positive outcome with freedom to
operate or a negative outcome where infringement is likely on IP which is the property of another organization.
Even the IP relative to this innovation may protect against risks from such other organizations by creating
legal risks for them in return.
5 The intellectual property strategy
5.1 The role of top management
The organization should have an intellectual property strategy. The organization should include IP as a
consistent component of its innovation management strategy and likewise of the organization's business
strategy.
In developing an IP strategy, the following should be considered:
— intellectual property as a guarantee of the organization's exclusive use of its own innovations (“freedom to
operate”);
— intellectual property as a competitive advantage or as a response to exogenous constraints of a market,
or market segment;
— intellectual property as an element of the organization's asset base for attracting investors;
— intellectual property as a decision support tool for structuring partnerships and research programmes for
research bodies, whenever transfer of technology (and if appropriate of intellectual property assets) to
industry is contemplated;
— intellectual property as a contributor to market value (through increase of the assets base).
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Top management should define and ensure that the overall organization strategy, including the innovation
management strategy, is applied to:
— areas for strategic development: core business technologies, timelines and milestones in terms of
strategy deployment, etc.;
— research and development business model and policy: internal development, joint development,
acquisition, outsourcing, sale, licensing (in, i.e. subscription to licenses from third parties, or out, i.e.
granting licenses from own IP to third parties), etc.;
— participation in standardization and regulation bodies;
NOTE 1 See Annex D and Annex E for more details.
— management of operating risks relating to the IP of third parties (risks of infringement of known third party
IP, of opposition by previously unknown third party IP, restrictions on freedom to operate, etc.);
— appoint an IP management structure responsible for implementation of the intellectual property strategy,
for management of the portfolio of associated IP rights, and for development of the organization's IP
assets (detection, creation, protection, monetization, etc.);
— definition of missions and tasks for the IP management structure, in accordance with the organization's
policy, consistent with related resources and budgets, and consistent with the recognized strategic value
of intellectual property within the innovation management strategy;
— identification of the framework of responsibilities and empowerment, the definition of functional and
hierarchical lines of reporting, for the IP management structure;
— structure and manage collaborative innovation projects with regards to their IP creations and IPR
assignment components, thus IP management contribute to the success of the collaborative
management (see CEN/TS 16555-5 for information).
NOTE 2 It is the IP management structure's responsibility to propose an efficient intellectual property strategy in line
with the organization's strategy and with its explicit objectives for value creation.
Top management should establish and approve:
— a strategy for the IP management that supports the innovation management strategy;
— an organizational structure and process that secures the integration of the IP management structure into
the deployment of the organization's strategy;
— a set of competences and resources (e.g. human, infrastructure, tools and methods) securing the
availability of all the skills required to execute the process and implement the IP strategy.
IP management responsibilities should be clearly identified, documented and shared with the rest of the
organization, in particular in the framework of their interactions with other functions in the organization.
These responsibilities can be assumed by a single person or a team; the IP management may report to the
top management, be part of the top management team, or even assumed by the top management itself. As an
IP strategy cannot be outsourced, its deployment can be partially delegated to an outside consultant (patent
attorney or IP counsel, for example).
5.2 Interactions with various functions
The IP management should interact with relevant functions within the organization, as a contributor to the
success of their own missions depending on the size of the organization. For example:
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— executive committee;
— operational management;
— risk and quality management (in particular legal and technology related risks impacting on the freedom to
operate);
— licensing (if this function is separate from the others): proposal and preparation of licensing programmes,
interactions with IP counsels, development of the portfolios of licensable IP assets, negotiations, etc.;
— R&D: innovations, technical analyses, competitive analyses, counterfeit detection, technology scouting
(monitoring of third-party technologies of interest for the business's development), technical and legal
analyses including freedom-to-operate analyses;
— legal: contractual aspects (confidentiality, purchase, sale, partnership and licensing contracts, etc.),
processing of anti-counterfeiting litigation, assignment of intellectual property ownership in collaborative
R&D programmes, in employment of interns or temporary collaborators for innovative projects, etc.;
— marketing: business plan (margins, market shares, etc.), information on markets, growth factors and
macro trends, counterfeiting detection, choice of brands, development of products and services offerings,
etc.;
— finance-accounting-tax management: budget, license fees paid or received, accounting for and reporting
of intellectual property assets, (example: compliance with US IFRS rules concerning valuation of
intangible assets);
— purchasing: subcontracting of all or part of developments, validation of freedom to operate on purchased
components, technologies or tools;
— strategy: role of IP assets in mergers and acquisitions, diversification or divestitures (withdrawals from
strategic segments, assets portfolios rationalization, etc.).
5.3 Competences and skills requirements
The IP management should have access to the following competencies:
— specialized skills, internal and/or external, for management of intellectual property in all of its aspects
(detection, creation, protection, monetization);
— resources for raising awareness and for training, which addresses all personnel whose duties and
responsibilities likely expose them to the issues of intellectual property: freedom of operation, protection
of knowledge and IP, value creation, monetization of intangible assets.
Top management should explicitly exert “make vs buy” choices in terms of mastering internally the resources
and skills necessary for efficient deployment of the IP strategy, or outsourcing these resources. Top
management should periodically revisit these choices as well as the positioning of the IP management within
the organization, since resources and management structure required for efficient implementation of the IP
strategy can evolve.
The corresponding framework could be a yearly IP specific hiring and training plan, jointly designed by top
management and the human resources function, explicitly meant to meet the requirements and key success
factors of the selected intellectual property strategy.
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5.4 Budget and cost control
The organization should execute rolling forecasts and allocate an appropriate budget for the IP management
structure, in compliance with the investment policy and consistent with the financial requirements of the
efficient management of the IP rights portfolio.
The organization should record and monitor expenditures directly and indirectly linked to the IP management
structure and its activities, through financial tools such as dedicated cost accounting. This monitoring should
be run on a periodic basis, detailed by type of expenditure (salaries, official fees, filing and maintenance costs,
taxes, litigation costs, royalties revenues, etc.) as well as by technology or innovation and by type of IP asset
(patent, brand, design or model, domain, database, know-how).
EXAMPLE
— For patents, monitoring may concern each title per country of filing, and should differentiate the costs of filing and
granting of titles from the yearly maintenance costs (annuities), since the latter may be used as adjustment variables
in budgetary arbitrations;
— for licenses taken out by the organization, monitoring may concern licenses for patents, brands, designs and domain
names and identify the specific corresponding profit and loss accounts.
The organization should consider divestiture from specific IP rights in specific circumstances such as budget
constraints, technology strategy or geographic arbitrages (withdrawal from markets or countries), mergers and
acquisitions, etc. The organization should establish a process to select the IP rights to be reserved or retained
in such circumstances as against those to be abandoned or sold, using as guidelines the requirements of its
corporate, technology and marketing strategies. This realignment process between the global budget and the
organization's strategy should not be only part of expenditure control measures but should be also a positive
tool to ensure an adequate return of investment on IP rights investments.
The IP management structure should anticipate extraordinary costs linked to opposable third party IP rights
and restrictions on freedom to operate. In the event of confirmed exposure to such opposable third-party
rights, the IP management should recommend the constitution of financial provisions for the implementation of
suitable corrective action plans, including litigations. Wherever applicable, such financial provisions should
cover any estimate of future compensations that might be paid as a result of litigations, licensing-in, or any
other corrective action prompted by the opposable third party IP rights.
5.5 Communication
The organization should communicate its IP strategy both internally and externally:
a) Internal communication should address:
1) visibility and legitimacy of the IP management structure responsible for implementing the IP strategy
and in particular managing the portfolio of IP rights;
2) visibility, legibility and consistency of the IP st
...
SLOVENSKI STANDARD
kSIST-TS FprCEN/TS 16555-4:2014
01-september-2014
Upravljanje inovacij - 4. del: Upravljanje intelektualne lastnine
Innovation management - Part 4: Intellectual property management
Innovationsmanagement - Management von Intellectual Property
Management de l'innovation - Partie 4 : Management de la propriété intellectuelle
Ta slovenski standard je istoveten z: FprCEN/TS 16555-4
ICS:
03.100.40 Raziskave in razvoj Research and development
03.100.50 Proizvodnja. Vodenje Production. Production
proizvodnje management
03.140 Patenti. Intelektualna lastnina Patents. Intellectual property
kSIST-TS FprCEN/TS 16555-4:2014 en,fr,de
2003-01.Slovenski inštitut za standardizacijo. Razmnoževanje celote ali delov tega standarda ni dovoljeno.
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kSIST-TS FprCEN/TS 16555-4:2014
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kSIST-TS FprCEN/TS 16555-4:2014
TECHNICAL SPECIFICATION
FINAL DRAFT
FprCEN/TS 16555-4
SPÉCIFICATION TECHNIQUE
TECHNISCHE SPEZIFIKATION
June 2014
ICS 03.100.40; 03.100.50; 03.140
English Version
Innovation management - Part 4: Intellectual property
management
Management de l'innovation - Partie 4 : Management de la Innovationsmanagement - Management von Intellectual
propriété intellectuelle Property
This draft Technical Specification is submitted to CEN members for formal vote. It has been drawn up by the Technical Committee CEN/TC
389.
CEN members are the national standards bodies of Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia,
Finland, Former Yugoslav Republic of Macedonia, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Lithuania,
Luxembourg, Malta, Netherlands, Norway, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and United
Kingdom.
Recipients of this draft are invited to submit, with their comments, notification of any relevant patent rights of which they are aware and to
provide supporting documentation.
Warning : This document is not a Technical Specification. It is distributed for review and comments. It is subject to change without notice
and shall not be referred to as a Technical Specification.
EUROPEAN COMMITTEE FOR STANDARDIZATION
COMITÉ EUROPÉEN DE NORMALISATION
EUROPÄISCHES KOMITEE FÜR NORMUNG
CEN-CENELEC Management Centre: Avenue Marnix 17, B-1000 Brussels
© 2014 CEN All rights of exploitation in any form and by any means reserved Ref. No. FprCEN/TS 16555-4:2014 E
worldwide for CEN national Members.
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FprCEN/TS 16555-4:2014 (E)
Contents Page
Foreword .4
Introduction .5
1 Scope .6
2 Normative references .6
3 Terms and definitions .6
4 Concept and purpose of intellectual property management .7
5 The intellectual property strategy .9
5.1 The role of top management .9
5.2 Interactions with various functions . 10
5.3 Competences and skills requirements . 11
5.4 Budget and cost control . 12
5.5 Communication . 12
6 Implementation of the IP strategy . 13
6.1 Traceability . 13
6.2 IP decision making . 13
6.3 Strategic intelligence and risk management . 14
6.4 IPR portfolio development, management and exploitation . 15
6.4.1 Structuring IPR portfolio . 15
6.4.2 Analysis of the potential IPR . 15
6.4.3 Intellectual property exploitation . 16
6.4.4 Acquisition, concession and licensing (-in and-out) of third parties IP rights . 17
Annex A (informative) Authenticated documentation to record IP . 18
Annex B (informative) Innovation and invention disclosure . 19
Annex C (normative) Methods and criteria for the assessment of IP rights . 20
C.1 Objectives and principles . 20
C.2 Strategic criteria. 21
C.3 Qualitative criteria. 23
C.3.1 General . 23
C.3.2 Techniques . 23
C.3.3 Legal . 24
C.3.4 Ability to structure research and to develop partnerships . 24
C.4 Quantitative criteria . 24
C.4.1 General . 24
C.4.2 Rating-based assessment . 24
C.4.3 Financial assessment . 25
C.4.4 Quality/price ratio, threshold effect, etc . 26
C.4.5 Volume/portfolio effect . 26
Annex D (informative) IP and standardization . 27
D.1 General . 27
D.1.1 Standards goals . 27
D.1.2 Common goal between standardization and intellectual property rights management:
favour development and distribution of (the) innovation . 27
D.2 Various strategies of the organization relayed by intellectual property . 28
Annex E (informative) Intellectual property management in a collaborative environment . 29
E.1 Introduction . 29
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E.2 Definition . 29
E.3 Scope of collaborative contexts . 30
E.4 Different types of collaboration in the innovation process . 30
E.5 Legal . 31
E.6 Collaboration to create; impact of financing sources on IP ownership, assignment . 32
E.7 General best practices to comply with . 32
Bibliography . 34
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Foreword
This document (FprCEN/TS 16555-4:2014) has been prepared by Technical Committee CEN/TC 389
“Innovation Management”, the secretariat of which is held by AENOR.
This document is currently submitted to the Formal Vote.
This document is not intended for the purpose of certification.
The CEN/TS 16555 series consists of the following parts with the general title Innovation management:
— Part 1: Innovation Management System;
— Part 2: Strategic intelligence management;
— Part 3: Innovation thinking;
— Part 4: Intellectual property management;
— Part 5: Collaboration management;
— Part 6: Creativity management;
— Part 7: Innovation management assessment.
Part 7 is in preparation.
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Introduction
This Technical Specification CEN/TS 16555-4 is linked to CEN/TS 16555-1:2013 (especially to its
Subclause 11.4).
The effective management of intellectual property, developed as a lever and a tool to support the process of
innovation, is a necessary prerequisite for organizations' development, growth and protection of their
competitiveness. Intellectual property management thus supports, gives rise to and enhances outcomes of the
innovation process.
Intellectual property management includes observation and analysis of third parties' intellectual property, for
instance, for the purpose of achieving freedom to operate for an organization's products.
In order to adequately address intellectual property management, the organization should consider the
following:
— intellectual property strategy, as an integral part of the organization's business strategy;
— intellectual property strategy, as an integral part of innovation management strategy;
— the safeguarding of the potential intellectual property throughout the entire organization;
— methods used to manage and use intellectual property as a support of business strategy, for example
traceability, protection, etc.);
— applicable legislation in the territories or regions under consideration;
— costs of obtaining and maintaining intellectual property and possible enforcement costs which could
ensue;
— differences in the contribution of various public authorities to acquiring IP rights and promoting practices
throughout the world;
— methods of protecting ‘know-how’, where appropriate.
In this Technical Specification, the terms intellectual property and intellectual property rights are precisely
defined, and are given a broad and general definition in Clause 3.
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1 Scope
This Technical Specification provides guidance to assist an organization to identify, capture, and safeguard
intellectual property, in order to:
— provide organizations with an overview of the fundamental principles of intellectual property management,
in the context of the innovation process;
— promote best practices in intellectual property matters that result in efficiently acquiring intellectual
property, while increasing the organizations’ ability to effectively address intellectual property owned by
third parties.
This Technical Specification is applicable to all types of organization, including the public sector. Special
consideration has been given to the needs of SMEs.
2 Normative references
Not applicable.
3 Terms and definitions
For the purposes of this document, the following terms and definitions apply.
3.1
background
pre-existing IP that a party brings to a collaborative joint venture
3.2
foreground
intellectual property and/or intellectual property rights that are collectively generated by the one or more of
parties within a collaborative joint venture
3.3
freedom to operate
state wherein a product or service is not exposed to IP other than own IPR or licensed-in IPR
3.4
intellectual property (IP)
part of intellectual assets owned by a person or organization as a result of creations of the mind or the intellect
Note 1 to entry: Intellectual property can be either registered (i.e. statutory) or unregistered (i.e. non statutory or
owned by default without any specific registration action).
3.5
intellectual property rights (IPR)
legally protected intellectual property which can be registered and unregistered
3.6
side ground
IP that may be generated by a party during the period of the collaborative joint venture, but specifically
excluded from the scope of the joint venture
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4 Concept and purpose of intellectual property management
IP management involves identifying, tracing along time, deciding on publishing and potentially safeguarding IP
on an individual IP level. IP to be managed includes technical inventions, trademarks, software, know-how,
etc.
Core aspects of IP management are:
— identifying and managing IP created within the organization;
— discovering IP held by other organizations;
— managing the organization's IP rights portfolio through the discovery, acquisition, maintenance, trading
and relinquishing of IP rights (see 6.4);
— identifying, mitigating and managing risks emerging from other organizations' IP rights and determining
level of freedom to operate for innovation created by the innovation process. An innovation created by the
innovation process may achieve a high level of freedom to operate or may, by hedging against risks from
other organizations, create legal risks for them;
— supporting the innovation process and safeguarding results emerging from it.
The organization should begin the IP management process by identifying and tracing IP, then making
management decisions as to how to deal with such identified IP. These decisions depend of the type of IP.
IP management should take appropriate measures to secure confidentiality with respect to otherwise
unprotected IP such as know-how, invention disclosure, trade secret, or yet unfiled patent applications.
Intellectual property can be protected by a variety of legal rights. Some IP rights come into existence
automatically (e.g. copyright), some need to be registered (e.g. patents), and for some registration is an option
which can provide additional benefits (trademarks). In some cases there are strict criteria and dates which
should be adhered to. This applies particularly to patents (for technical inventions), where premature public
disclosure, or failing to meet deadline dates can invalidate the protection. Since IP rights can vary between
jurisdictions, it is important to check the rules in the countries where protection is required.
In all cases, it is important to be able to provide evidence of creation, in case challenged. In practice this
means that evidence, legally acceptable in a court of law, should be kept to prove date of creation,
contributors and their relative contributions.
For technical inventions:
— keeping IP proprietary by means of confidentiality or by means of legal protection;
— making IP public to ensure the IP remains publicly available and cannot be protected by others;
— documentation and register maintenance of use of IP;
NOTE See Annex A.
— registering of or licensing-in of other organizations' IP rights to achieve freedom to operate;
— licensing-out the organization's IP;
— challenging other organizations' IP rights to achieve freedom to operate.
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For trademarks:
— acquisition of trademarks;
— observing use of organizations' trademarks;
— observing other organizations' trademark activities;
— challenging other organizations' trademark IP rights if they conflict.
For copyrights including software:
— documentation of creation and use of copyright-protectable creations such as printed publications,
software, etc.
For designs:
— application of design rights and patents;
— observing other organization's design protection activities;
— acquisition of or licensing-in other organization's design rights and patents to achieve freedom to operate;
— invalidating other organization's design rights and patents to achieve freedom to operate.
The organization should refer to 6.2 and Figure 1 below for criteria to be applied in IP decision making.
Figure 1 — IP decision tree
The IP rights portfolio management should be customized to suit the particular product field, the level of
collaborative activity and the protection required in each territory (see 6.4).
The IP management process should continuously monitor and be administratively interlinked with the
innovation process (see Figure 2).
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Figure 2 — Interaction of IP in the innovation process
The purpose of IP management is to support the innovation strategy and to safeguard results emerging from
it.
IP management is the management of an organizations' IP assets to support organizations' innovation and
growth. This also involves the management of any legal rights associated with the IP, which includes obtaining
the legal protection and enforcing it as appropriate.
An innovation created by the innovation process may either provide a positive outcome with freedom to
operate or a negative outcome where infringement is likely on IP which is the property of another organization.
Yet the IP relative to this innovation may age against risks from such other organizations by creating legal
risks for them in return.
5 The intellectual property strategy
5.1 The role of top management
The organization should have an intellectual property strategy. The organization should include IP as a
consistent component of its innovation management strategy and likewise of the organization's business
strategy.
In developing an IP strategy, the following should be considered:
— intellectual property as a guarantee of the organization's exclusive use of its own innovations (“freedom to
operate”);
— intellectual property as a competitive advantage or as a response to exogenous constraints of a market,
or market segment;
— intellectual property as an element of the organization's asset base for attracting investors;
— intellectual property as a decision support tool for structuring partnerships and research programmes for
research bodies, whenever transfer of technology (and if appropriate of intellectual property assets) to
industry is contemplated;
— intellectual property as a contributor to market value (through increase of the assets base).
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Top management should define and ensure that the overall organization strategy, including the innovation
management strategy, is applied to:
— areas for strategic development: core business technologies, timelines and milestones in terms of
strategy deployment, etc.;
— research and development business model and policy: internal development, joint development,
acquisition, outsourcing, sale, licensing (in, i.e. subscription to licenses from third parties, or out, i.e.
granting licenses from own IP to third parties), etc.;
— participation in standardization and regulation bodies;
NOTE 1 See Annex D and Annex E for more details.
— management of operating risks relating to the IP of third parties (risks of infringement of known third party
IP, of opposition by previously unknown third party IP, restrictions on freedom to operate, etc.);
— appoint an IP management structure responsible for implementation of the intellectual property strategy,
for management of the portfolio of associated IP rights, and for development of the organization's IP
assets (detection, creation, protection, monetization, etc.);
— definition of missions and tasks for the IP management structure, in accordance with the organization's
policy, consistent with related resources and budgets, and consistent with the recognized strategic value
of intellectual property within the innovation management strategy;
— identification of the framework of responsibilities and empowerment, the definition of functional and
hierarchical lines of reporting, for the IP management structure;
— structure and manage collaborative innovation projects with regards to their IP creations and IPR
assignment components, thus IP management contribute to the success of the collaborative
management (see CEN/TS 16555-5 for information).
NOTE 2 It is the IP management structure's responsibility to propose an efficient intellectual property strategy in line
with the organization's strategy and with its explicit objectives for value creation.
Top management should establish and approve:
— a strategy for the IP management that supports the innovation management strategy;
— an organizational structure and process that secures the integration of the IP management structure into
the deployment of the organization's strategy;
— a set of competences and resources (e.g. human, infrastructure, tools and methods) securing the
availability of all the skills required to execute the process and implement the IP strategy.
IP management responsibilities should be clearly identified, documented and shared with the rest of the
organization, in particular in the framework of their interactions with other functions in the organization.
These responsibilities can be assumed by a single person or a team; the IP management may report to the
top management, be part of the top management team, or even assumed by the top management itself. As an
IP strategy cannot be outsourced, its deployment can be partially delegated to an outside consultant (patent
attorney or IP counsel, for example).
5.2 Interactions with various functions
The IP management should interact with relevant functions within the organization, as a contributor to the
success of their own missions depending on the size of the organization. For example:
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— executive committee;
— operational management;
— risk and quality management (in particular legal and technology related risks impacting on the freedom to
operate);
— licensing (if this function is separate from the others): proposal and preparation of licensing programmes,
interactions with IP counsels, development of the portfolios of licensable IP assets, negotiations, etc.;
— R&D: innovations, technical analyses, competitive analyses, counterfeit detection, technology scouting
(monitoring of third-party technologies of interest for the business's development), technical and legal
analyses including freedom-to-operate analyses;
— legal: contractual aspects (confidentiality, purchase, sale, partnership and licensing contracts, etc.),
processing of anti-counterfeiting litigation, assignment of intellectual property ownership in collaborative
R&D programmes, in employment of interns or temporary collaborators for innovative projects, etc.;
— marketing: business plan (margins, market shares, etc.), information on markets, growth factors and
macro trends, counterfeiting detection, choice of brands, development of products and services offerings,
etc.;
— finance-accounting-tax management: budget, license fees paid or received, accounting for and reporting
of intellectual property assets, (example: compliance with US IFRS rules concerning valuation of
intangible assets);
— purchasing: subcontracting of all or part of developments, validation of freedom to operate on purchased
components, technologies or tools;
— strategy: role of IP assets in mergers acquisitions, diversification or divestitures (withdrawals from
strategic segments, assets portfolios rationalization, etc.).
5.3 Competences and skills requirements
The IP management should have access to the following competencies:
— specialized skills, internal and/or external, for management of intellectual property in all of its aspects
(detection, creation, protection, monetization);
— resources for raising awareness and for training, which addresses all personnel whose duties and
responsibilities likely expose them to the issues of intellectual property: freedom of operation, protection
of knowledge and IP, value creation, monetization of intangible assets.
Top management should explicitly exert “make vs buy” choices in terms of mastering internally the resources
and skills necessary for efficient deployment of the IP strategy, or outsourcing these resources. Top
management should periodically revisit these choices as well as the positioning of the IP management within
the organization, since resources and management structure required for efficient implementation of the IP
strategy can evolve.
The corresponding framework could be a yearly IP specific hiring and training plan, jointly designed by top
management and the Human Resources function, explicitly meant to meet the requirements and key success
factors of the selected intellectual property strategy.
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5.4 Budget and cost control
The organization should execute rolling forecasts and allocate an appropriate budget for the IP management
structure, in compliance with the investment policy and consistent with the financial requirements of the
efficient management of the IP rights portfolio.
The organization should record and monitor expenditures directly and indirectly linked to the IP management
structure and its activities, through financial tools such as dedicated cost accounting. This monitoring should
be run on a periodic basis, detailed by type of expenditure (salaries, official fees, filing and maintenance costs,
taxes, litigation costs, royalties revenues, etc.) as well as by technology or innovation and by type of IP asset
(patent, brand, design or model, domain, database, know-how).
EXAMPLE
— For patents, monitoring may concern each title per country of filing, and should differentiate the costs of filing and
granting of titles from the yearly maintenance costs (annuities), since the latter may be used as adjustment variables
in budgetary arbitrations;
— for licenses taken out by the organization, monitoring may concern licenses for patents, brands, designs and domain
names and identify the specific corresponding profit and loss accounts.
The organization should consider divestiture from specific IP rights in specific circumstances such as budget
constraints, technology strategy or geographic arbitrages (withdrawal from markets or countries), mergers and
acquisitions, etc. The organization should establish a process to select the IP rights to be reserved or retained
in such circumstances as against those to be abandoned or sold, using as guidelines the requirements of its
corporate, technology and marketing strategies. This realignment process between the global budget and the
organization's strategy should not be only part of expenditure control measures but should be also a positive
tool to ensure an adequate re
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