Making intellectual property work for business - World Intellectual ...

Patent
monitoring services
Valuation
of intangible assets
Setting up IP services | Providing consultancy services
In a study by the Austrian Institute for SME Research20 , users of patent
search services identified the following factors as being important for
developing successful patent search services:
■■
Ease of access and identification, which indicates the necessity of correctly
marketing and promoting patent database search services;
■■
Competence of staff is a key issue as expertise is necessary for carrying out
patent searches, as well as for helping interpret the results; and
■■Timely
delivery is important because of the concept of patent priority and the
need to adhere to deadlines in litigation cases and R&D projects.
Trademark research also avoids inefficient use of company resources and
employee time. Companies, and in particular SMEs, may develop marketing strategies
and even print materials using trademarks or designs which are already protected by
others within the market. Even when a company has registered trademarks in its own
country, any export using that trademark to another country should be preceded by a
trademark search in the countries of interest.
Business membership organizations should keep in mind that patent and trademark
search services could be a potential “conflict zone between private and public
service providers” 21 as most IP Offices consider such searches as a key service. Based
on the characteristics of local service providers, organizations should analyse whether
to develop such a service or provide it through an agreement with a third party.
WIPO GOLD is a free public resource which provides a one-stop gateway to
WIPO’s global collections of searchable IP data (see below).
Monitoring services analyse patent applications published by national, regional or
international offices on a regular basis. Some business membership organizations have
developed different tools to identify and make a pre-selection of all new patents that
are published in the territory of interest because it is difficult for individual companies
to monitor the volume of new patents. With this information, companies can follow
changes in technological fields in a defined period of time and the innovation strategy
within its market. They can also find out what the most dynamic fields of technology
are in the country or even in the world. Monitoring services can be customized to focus
on, for example, an emerging area of technology, a competitor’s activity, the legal status
of particular patents, or statistics.
Most companies do not know the value of their intangible assets 22 . However, in some
cases with highly innovative companies, the value of the company’s intangible assets
may exceed the value of all the tangible assets. An accurate assessment of the value
of a company’s intangible assets can help businesses to better exploit their IP through
licensing and other means of trading (e.g. in the form of securities), to increase their
asset value, to obtain financing and to take informed investment and marketing decisions.
Company reporting requirements and assessment for taxation may also require
such valuation. As per current standards, self-generated IP cannot be reflected on the
balance sheets.
Different methods have been used for valuing IPR including industry standards,
ratings or rankings, discounted cash flow, use of the rule-of-thumb, real options and
Monte-Carlo analysis, and auctions. There are now an increasing number of professionals
specializing in IPR valuation, especially of brands and patents, who use different
20 “Benchmarking National and Regional Support Services for SMEs in the Field of Intellectual and
Industrial Property”, Austrian Institute for SME Research: 2007 Benchmarking report page 85 to 87
21 “Benchmarking National and Regional Support Services for SMEs in the Field of Intellectual and
Industrial Property”, Austrian Institute for SME Research: 2007 page 83
22 ICC publication “Current and Emerging Intellectual Property Issues for Business: a roadmap for Business
and Policy Makers” 2010 edition
A handbook for setting up intellectual property services 39