Benchmarking National - PRO INNO Europe

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84 BENCHMARKING NATIONAL AND REGIONAL SUPPORT SERVICES FOR SMES IN THE FIELD OF INTELLECTUAL AND INDUSTRIAL <strong>PRO</strong>PERTY (ii) to help increase survival rates for innovative start-ups. For this purpose, incubators offer a range of services such as provision of office space and/or laboratory facilities with the necessary infrastructure, advice on how to set-up and manage a company or networking services. A part of the offered services may also deal with IPR. The benchmarking study results indicate – in line with findings from other studies20 – that most technology centres, if they offer IPR support services, do so mainly through referring to outside IPR experts (e.g., in the form of “open days” with patent attorneys). This limitation to a signposting function is mostly determined through size constraints – most incubators simply do not have enough manpower to offer in-depth consulting on IPR issues in-house; furthermore, the scarcity of staff trained in IPR matters has to be noted again (see also section 5.3.4). While the scope of the IPR services provided is thus consequently rather small, the significance of the support provided should not be underestimated: First, because many of the SMEs supported operate in business environments where patents play an important role (e.g., high-tech industries such as bio-tech or ICT hardware sectors) and, second, because incubators have, more than centrally offered support services, direct contact to the entrepreneurs/tenants on site. Technology centres can thus also be important carriers and distribution channels for information on larger IPR support programmes. Thematic programmes In section 5.1, it was noted that most services which offer support to SMEs in the field of IPR are not explicitly focussed on certain technology fields or industries. Thematic programmes can be defined or differentiated from other programmes by exactly this trait – they offer a broad range of support to actors (universities and/or companies) in a specific technology field (frequently in the fields of biotechnology or nanotechnology). Services offered within such a programme may include, for example, the support of large and long-term cooperative research projects in academia, grants to single researchers (e.g., for writing their doctoral theses and/or mobility grants), networking activities or promotional activities for the technology field as whole (e.g., the organisation of “summer schools” for high school students). Advice on IPR is often a service element, too, not the least because most of the technology fields addressed operate – similar to incubators – in an industry environment where patenting is of special relevance. IPR support is made available by these kinds of thematic programmes as a resource on a stand-by basis for all involved parties (among which may also be SMEs), and in many ways similar to that of technology centres. Often, the service consists of referral activities based on contractual relations with IPR specialists (e.g., patent attorneys); sometimes a patent attorney is even employed directly by the programme. Patent attorneys interviewed in the course of the underlying benchmarking study and working for such programmes stated that offering IPR counselling within a thematic programme is a sensible approach, if the actors addressed are rather new to the topic of IPR. Once the IPR know-how matures, this type of support has, however, its limitations. Both with respect to incubators/technology centres and thematic programmes, one can conclude that their closeness to the SME target group can be considered the biggest asset and make these type of services an 20 A study by WIPO (WIPO, 2003b) indicates that, while 60 % of 63 interviewed incubators in <strong>Europe</strong> had a person in charge of IPR, most offered only basic advice, and tenants were usually referred to other institutions (with which often different types of contractual agreements existed). For example, only 12 % of the incubators assisted directly with the drafting of patent filings; by contrast, 71 % referred to external partners. Issues related to enforcing IP rights, to negotiating license agreements and to valuing IP were, on average, handled in a similar manner. More direct help from the incubators seems to be available with regard to advice concerning confidentiality agreements and trade secrets and – surprisingly – with patent information searches: 90 % of the incubators would have patent searches conducted on behalf of the tenants, and 41 % would even conduct such patent searches in-house. A size effect – the larger the incubator, the higher the chance to find broader in-house IPR support – was, as could be expected, noted.
important carrier in the field of IPR support. Bearing limitations regarding resources in mind, embedded services are mostly in a well-defined position to complement larger, national offerings, mainly by external referral and signposting activities on a regional level. 5.4.4 Patent database and information search services Patent database search services are an important pillar of the public IPR support system for SMEs in a variety of countries (e.g., in Austria, The Netherlands, Denmark (over the website of the Danish Patent Office), in Italy or in Germany). In very small countries, such as Liechtenstein, patent search services offered by specialised departments of general-purpose libraries constitute even the main type of public support service available for SMEs in the field of IPR. Against this background, it seems important to take a closer look at the specific goals, the modes of operation and key success factors for such services. The usefulness of patent information and its under-usage by SMEs The main rationale behind offering patent database search services is, on the one hand, seen in the fact that unnecessary and redundant R&D can be avoided. According to the Austrian service serv.ip, for example, the patent office estimates that around € 150 mio are saved each year, because companies find out that what they were to research and/or patent was already invented. On the other hand, using patent information may also serve a number of other functions: In a study conducted by Hall, Oppenheim and Sheen ten motivations to use patent information–in addition to the avoidance of double research costs–were identified (Hall, Oppenheim & Sheen, 2003): 1. For purely technical information/educational purposes 2. For finding out if something is patentable 3. For competitive positioning (in order to stay informed about what competitors do) 4. To check for possible infringement (i.e., to check whether another company infringes a firm’s patent rights or whether the firm infringes another company’s patent rights) 5. For finding new areas to get into and/or opportunities for licensing in 6. For “inventing around” other patents 7. For costing/pricing intelligence, in case information on production and/or operating costs can be derived from the patent filings (which is said to be often the case) 8. For problem solving (in order to get ideas for solving similar problems inhouse) 9. For information about manufacturing processes (processing generally entails a good deal of tacit knowledge which a company, even if it holds a patent, will try to keep to itself. Nonetheless, a lot of information about such processes can be found in patent databases) 10. For improving the success rate of patent applications Despite of the benefits described, the – sparsely available – empirical data on this issue suggests that SMEs hardly use patent database search services. Evidence to this end has been collected by the Hall, Oppenheim & Sheen study. The study investigated the use of patent information with 390 SMEs in patent-affine industries in the UK. The findings indicate that 44 % of the enterprises never use patent information and 80 % of those companies that carry out searches do so only once a year or less frequently. A size effect was observed, i.e., larger firms had a higher propensity to conduct patent searches than smaller ones. Within the scope of the underlying benchmarking study, the usage of information channels utilised by users of IPR support services for innovative undertakings 85 TOWARDS GOOD PRACTICES – THE REAL WORLD OF IPR SUPPORT SERVICES
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PRO INNO Europe paper N° 4 BENCHMA
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PRO INNO Europe The innovation poli
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Contents Executive Summary 9 1 Intr
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4. Case Study: Innovation by patent
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Executive Summary Background 1. The
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under all circumstances), but rathe
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overall policy level, which primari
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the fact that the business perspect
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and evaluation). Hence, there is a
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20 BENCHMARKING NATIONAL AND REGION
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3 SMEs in the IPR world 3.1 SMEs an
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amount of time (mostly up to 20 yea
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In contrast to arrangements for pat
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3.3 Usage Patterns of IP protection
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Page 117: ANNEX I - CASE STUDIES The case stu
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Table 10 Overview of public availab
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Nr. B* Country Title of the Service
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European Commission Benchmarking na
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ISBN 978-92-79-06926-0 NB-AX-07-004
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