Managing and Evaluating Intellectual Property Rights
A.Y. 2023/2024
Learning objectives
Intellectual property rights (IPRs) are a key component of today's economy. At worldwide level, they account for the large majority of large companies' assets. IPRs are a key component also for small and medium enterprises, as well as for start-ups acting in high tech industries.
This course is intended to provide students with theory and practice about how to manage IPRs proactively. To this end, students will first understand IPRs features (what makes IPRs special?), their origin and motivation (how IPRs emerged?) and the main issues scholars and practitioners are still debating (what is the role of intellectual property? are IPRs beneficial for innovation?). The first part of the course is specifically devoted to tackle these issues.
Managing also requires a deep understanding of the ways IPRs can be used to extract value. Companies can rely on IPRs to defend their position in a classic way or to proactively extract additional value through in-bound and out-bound processes. The recently emerging market for IPRs offers companies new, unprecedented options, but also bears possible risks. The second part of the course aims at tackling these topics.
This course is intended to provide students with theory and practice about how to manage IPRs proactively. To this end, students will first understand IPRs features (what makes IPRs special?), their origin and motivation (how IPRs emerged?) and the main issues scholars and practitioners are still debating (what is the role of intellectual property? are IPRs beneficial for innovation?). The first part of the course is specifically devoted to tackle these issues.
Managing also requires a deep understanding of the ways IPRs can be used to extract value. Companies can rely on IPRs to defend their position in a classic way or to proactively extract additional value through in-bound and out-bound processes. The recently emerging market for IPRs offers companies new, unprecedented options, but also bears possible risks. The second part of the course aims at tackling these topics.
Expected learning outcomes
Participants in this course will learn which are the main intellectual property rights, their features, and how to manage and to protect them. In particular, they will understand how to set up an IP protection strategy within a company, how to identify and tackle the main threats in IPRs' protection, and what the practical tools are for ensuring such protection. Additionally, they will learn the main criteria for evaluating IPRs, in order to get a better understanding on how to exploit innovations within companies.
Lesson period: Second trimester
Assessment methods: Esame
Assessment result: voto verbalizzato in trentesimi
Single course
This course can be attended as a single course.
Course syllabus and organization
Single session
Responsible
Lesson period
Second trimester
Course syllabus
Managing and evaluating intellectual property rights (Prof. Mario Benassi)
1. Introduction
1.1. Basic Info about the course and general overview
1.2. How to pass the exam
1.3. Your presentation
1.4. Your project
1.5. Why study IPR
1.6. Basic concepts
2. The landscape: profiting from Innovation
2.1. Knowledge economy: what is it?
2.2. Tacit and codified knowledge
2.3. Sources of knowledge and kinds of innovation
2.4. The innovator dilemma and the appropriability issue
2.5. First mover advantage and complementary resources
2.6. Timing of entry: the role of externalities
3. IP issues
3.1. Philosophy of intellectual property
3.2. History of the IPR system
3.3. Role of IPR in economic history and the history of technology
3.4. Role of IPR in the history of economics
4. Soft IP: copyrights and trade secrets
4.1. Copyright - scope of protection and the logic, origins and motivations
4.1.1. Digital copyright, software, open source, news
4.1.2. Pictures, photos, and image rights
4.1.3. Databases and data market (with some data protection laws concerns)
4.1.4. Exceptions and limitations
4.2. Trade Secrets - scope of protection and the logic, origins and motivations
4.2.1. Nature of a non-traditional IP right
4.2.2. Information protected
4.2.3. Pros and cons
4.2.4. Trade secrets, confidentiality and data protection laws
5. Hard IP: Patent, trademarks, designs
5.1. Patents - scope of protection and the logic, origins and motivations
5.1.1. The patenting process
5.1.2. Informational value of patents
5.1.3. The patenting system
5.1.4. Patents vs trade secrets
5.1.5. Marketing incentives: patent box
5.2. Trademarks - scope of protection and the logic, origins and motivations
5.2.1. Types of trademarks, look alikes, searches and checks, and strategy for protection
5.2.2. The trademark system
5.2.3. New types of trademarks: layout, keywords advertising, new types of signs
5.2.4. Brand protection and filing strategies
5.2.5. Selective distribution
6. Hard IP and recent trends
6.1. Designs - scope of protection and the logic, origins and motivations
6.2. Artificial intelligence and IP laws
6.3. Big data and IoTs
6.4. Internet service providers liability for IP infringements (EU Copyright reform)
7. Patent failure?
7.1. How and why IPR work (or not)
7.2. The issue of boundaries in defining property rights
7.3. The worth of patents
7.4. The cost of disputes
7.5. Possible reforms
8. Intellectual properties policies and strategies
8.1. Lecture by EPO professional
8.2. Towards an unitary European IP architecture
8.3. Exploring patent information
8.4. How to oppose a patent
8.5. How to invent around a patent
8.6. How to limit a patent
9. Intellectual properties policies and strategies
9.1. Advantages of patenting
9.2. Risks of not having a strategy
9.3. Crafting a patent strategy
9.4. The patent strategy model
10. Open innovation and intellectual property rights
10.1. The basic of OI
10.2. In-bound and out-bound processes
10.3. Does OI makes a difference?
10.4. OI and IPR agreements
10.5. Lecture
11. IP organization and management
11.1. The Ip process. Main features
11.2. IP in a large company
11.3. IP in small companies and start-up
12. Managing IP
12.1. IPR in the start-up process
12.1.1. Working with IP agents and attorneys
12.1.2. Developing a strategy
12.1.3. Clearances, searches, databases
12.1.4. Freedom to operate
12.1.5. Researching with Intellectual Property on Mind
12.1.6. Enforcement aspects in a IP strategy (PI, DNI, remedies)
12.2. Ownership and HR issues
12.2.1. IP Policies, NDA and other useful tools
12.2.2. Employees' rights, works for hire
12.2.3. Disclosures and filing decisions
12.2.4. Moral rights
13. Patent violation
13.1. Legislation heterogeneity
13.2. Violation
13.3. How to enforce IPR
13.4. Remedies and damages
13.5. Protection at customs / Border Seizure
14. Evaluating Patents
1. Evaluation issues
2. Reasons for evaluating
3. Quality of patents
4. Patents relatedness
5. Lecture
15. Economic evaluation of Patents Different perspectives in evaluating patents
1. Quantitative and qualitative methods
2. Economic and Financial Evaluation (intro)
16. Economic evaluation of Patents
1. Economic and Financial Evaluation (continued)
1.1 Cost method
1.2 Market method
1.3 Income method
1.4 Other methods
2. IP audits
3. IP due diligence in M&A operation
4. Lecture:
17. Economic evaluation of Patents
In-class exercise
18. The market for Patents
1. Basic principles of a market exchange
2. Is there a possible market for ideas (and patents)
3. Main distinguishing features of a market for patents
4. Market for patents in Europe: recent studies
5. New actors: NPE, patent trolls, patent poolers
6. Lecture:
19. Final: Written Examination
20. Final: Presentations
1. Introduction
1.1. Basic Info about the course and general overview
1.2. How to pass the exam
1.3. Your presentation
1.4. Your project
1.5. Why study IPR
1.6. Basic concepts
2. The landscape: profiting from Innovation
2.1. Knowledge economy: what is it?
2.2. Tacit and codified knowledge
2.3. Sources of knowledge and kinds of innovation
2.4. The innovator dilemma and the appropriability issue
2.5. First mover advantage and complementary resources
2.6. Timing of entry: the role of externalities
3. IP issues
3.1. Philosophy of intellectual property
3.2. History of the IPR system
3.3. Role of IPR in economic history and the history of technology
3.4. Role of IPR in the history of economics
4. Soft IP: copyrights and trade secrets
4.1. Copyright - scope of protection and the logic, origins and motivations
4.1.1. Digital copyright, software, open source, news
4.1.2. Pictures, photos, and image rights
4.1.3. Databases and data market (with some data protection laws concerns)
4.1.4. Exceptions and limitations
4.2. Trade Secrets - scope of protection and the logic, origins and motivations
4.2.1. Nature of a non-traditional IP right
4.2.2. Information protected
4.2.3. Pros and cons
4.2.4. Trade secrets, confidentiality and data protection laws
5. Hard IP: Patent, trademarks, designs
5.1. Patents - scope of protection and the logic, origins and motivations
5.1.1. The patenting process
5.1.2. Informational value of patents
5.1.3. The patenting system
5.1.4. Patents vs trade secrets
5.1.5. Marketing incentives: patent box
5.2. Trademarks - scope of protection and the logic, origins and motivations
5.2.1. Types of trademarks, look alikes, searches and checks, and strategy for protection
5.2.2. The trademark system
5.2.3. New types of trademarks: layout, keywords advertising, new types of signs
5.2.4. Brand protection and filing strategies
5.2.5. Selective distribution
6. Hard IP and recent trends
6.1. Designs - scope of protection and the logic, origins and motivations
6.2. Artificial intelligence and IP laws
6.3. Big data and IoTs
6.4. Internet service providers liability for IP infringements (EU Copyright reform)
7. Patent failure?
7.1. How and why IPR work (or not)
7.2. The issue of boundaries in defining property rights
7.3. The worth of patents
7.4. The cost of disputes
7.5. Possible reforms
8. Intellectual properties policies and strategies
8.1. Lecture by EPO professional
8.2. Towards an unitary European IP architecture
8.3. Exploring patent information
8.4. How to oppose a patent
8.5. How to invent around a patent
8.6. How to limit a patent
9. Intellectual properties policies and strategies
9.1. Advantages of patenting
9.2. Risks of not having a strategy
9.3. Crafting a patent strategy
9.4. The patent strategy model
10. Open innovation and intellectual property rights
10.1. The basic of OI
10.2. In-bound and out-bound processes
10.3. Does OI makes a difference?
10.4. OI and IPR agreements
10.5. Lecture
11. IP organization and management
11.1. The Ip process. Main features
11.2. IP in a large company
11.3. IP in small companies and start-up
12. Managing IP
12.1. IPR in the start-up process
12.1.1. Working with IP agents and attorneys
12.1.2. Developing a strategy
12.1.3. Clearances, searches, databases
12.1.4. Freedom to operate
12.1.5. Researching with Intellectual Property on Mind
12.1.6. Enforcement aspects in a IP strategy (PI, DNI, remedies)
12.2. Ownership and HR issues
12.2.1. IP Policies, NDA and other useful tools
12.2.2. Employees' rights, works for hire
12.2.3. Disclosures and filing decisions
12.2.4. Moral rights
13. Patent violation
13.1. Legislation heterogeneity
13.2. Violation
13.3. How to enforce IPR
13.4. Remedies and damages
13.5. Protection at customs / Border Seizure
14. Evaluating Patents
1. Evaluation issues
2. Reasons for evaluating
3. Quality of patents
4. Patents relatedness
5. Lecture
15. Economic evaluation of Patents Different perspectives in evaluating patents
1. Quantitative and qualitative methods
2. Economic and Financial Evaluation (intro)
16. Economic evaluation of Patents
1. Economic and Financial Evaluation (continued)
1.1 Cost method
1.2 Market method
1.3 Income method
1.4 Other methods
2. IP audits
3. IP due diligence in M&A operation
4. Lecture:
17. Economic evaluation of Patents
In-class exercise
18. The market for Patents
1. Basic principles of a market exchange
2. Is there a possible market for ideas (and patents)
3. Main distinguishing features of a market for patents
4. Market for patents in Europe: recent studies
5. New actors: NPE, patent trolls, patent poolers
6. Lecture:
19. Final: Written Examination
20. Final: Presentations
Prerequisites for admission
First year exams
Teaching methods
Lectures, presentations, discussion of case studies, key note speeches
Teaching Resources
References
· Adam Jolly, The Handbook of European Intellectual Property Management - Developing, Managing and Protecting Your Company's Intellectual Property, 2015
· Economic Valuation of Patents: Methods and Applications (New Horizons in Intellectual Property series) (9781848445482): Federico Munari, Raffaele Oriani,
· Patent Intermediaries- New Actors in the market for technology (Palgrave) Mario Benassi, Miryam Martin Sanchez)
Additional resources
WIPO
Strongly reccomended
· WIPO, Valuation of IP assets, in "IP PANORAMA", available here.
· WIPO, IP audit, in "IP PANORAMA", available here.
Suggested
· WIPO, Trade secrets, in "IP PANORAMA", available here.
· WIPO, Copyright and related rights, in "IP PANORAMA", available here.
· WIPO, IP Asset Development and Management: a Key Strategy for Economic Growth, Publication year: 2006, available here
· Intangible Asset & Intellectual Property Valuation: A Multidisciplinary Perspective By Paul Flignor and David Orozco available here
· Adam Jolly, The Handbook of European Intellectual Property Management - Developing, Managing and Protecting Your Company's Intellectual Property, 2015
· Economic Valuation of Patents: Methods and Applications (New Horizons in Intellectual Property series) (9781848445482): Federico Munari, Raffaele Oriani,
· Patent Intermediaries- New Actors in the market for technology (Palgrave) Mario Benassi, Miryam Martin Sanchez)
Additional resources
WIPO
Strongly reccomended
· WIPO, Valuation of IP assets, in "IP PANORAMA", available here.
· WIPO, IP audit, in "IP PANORAMA", available here.
Suggested
· WIPO, Trade secrets, in "IP PANORAMA", available here.
· WIPO, Copyright and related rights, in "IP PANORAMA", available here.
· WIPO, IP Asset Development and Management: a Key Strategy for Economic Growth, Publication year: 2006, available here
· Intangible Asset & Intellectual Property Valuation: A Multidisciplinary Perspective By Paul Flignor and David Orozco available here
Assessment methods and Criteria
Attending students: written exam (70%) and project work (30%)
Non attending students: oral exam (written exam if the number of students is high)
Non attending students: oral exam (written exam if the number of students is high)
Educational website(s)
Professor(s)