Réveil en Form' - 15 juin 2016 Protéger sa propriété intellectuelle en innovation ouverte Sylvie Ponchaut

1. Protéger sa propriété intellectuelle
en innovation ouverte
Sylvie Ponchaut
Directeur général- BioWin

2. 1. Open innovation basics.

3. 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”

4. 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.

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

6. 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

7. 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

8. 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.

9. 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.

10. Thank you!