Waiting for the Organiser… The webinar will begin shortly Intellectual Property: a Case Study of Success Stories, Strategies and opportunities for European Startups in South-East Asia South-East Asia IPR SME Helpdesk Franck Fougere 25 May 2017 2 Welcome to the Webinar! Mitchel Smolders Project Executive South-East Asia IPR SME Helpdesk 25 May 2017 Copyright © 2017 South-East Asia IPR SME Helpdesk. All rights reserved. Webinar Interaction Tools ? ! ? !? Turn on full screen here Raise your hand here Send the IP expert a question here Webinar 24 hour technical support number: http://support.gotomeeting.com ‘Contact Us’ section 25 May 2017 Copyright © 2017 South-East Asia IPR SME Helpdesk. All rights reserved. Snapshot: Helpdesk Free Services IP Guides & Enquiry Helpline Website www.ipr-hub.eu Newsletters Blog www.youripinsider.eu E-learning & Business Tools Training Workshops & Live Webinars 25 May 2017 Copyright © 2017 South-East Asia IPR SME Helpdesk. All rights reserved. Speaker’s bio Name: Mr. Franck Fougere Firm: Ananda Intellectual Property, Orbis Limited Location: Bangkok, Thailand and Hong Kong Email: [email protected] Franck is Managing Partner and Founder of Ananda Intellectual Property, one of Thailand’s leading IP law firms, and of Orbis Limited, a Business Advisory consultancy also based in Hong- Kong, China, Thailand, Singapore and the Philippines. His practice includes patent and trademark prosecution, anti- counterfeiting and IP litigation (notably trademark and copyright infringement) in Thailand and throughout Asia. Franck is recognized as one of Thailand’s leading IP professional and won in 2013 the ILO client choice award for best patent practitioner. He has authored numerous articles, expert studies and guides such as the EABC Guidebook on Intellectual Property. He is a former President of the Franco-Thai Chamber of Commerce, a current Foreign Trade Advisor for the French Government and a regular WIPO expert on trademark and copyright issues. 25 May 2017 Copyright © 2017 South-East Asia IPR SME Helpdesk. All rights reserved. Intellectual Property: a Case Study of Success Stories, Strategies and opportunities for EU Startups in SEA OUTLINE 1) Main Challenges for Startups Poll I Poll II 2) Mitigation Strategies and Key Recommendations 3) Opportunities for EU Startups in South East Asia Case Study 1: Elephant Parade® Case Study 2: Perfumist© 4) Watch Outs, Tips and Conclusions 25 May 2017 7 Copyright © 2017 South-East Asia IPR SME Helpdesk. All rights reserved. Main challenges for start-ups • CHALLENGE 1: Identifying IP assets – Invention Patents A PATENT COVERS THE FUNCTION, OPERATION OR CONSTRUCTION OF AN INVENTION. TO BE PATENTABLE, A FUNCTION MUST BE NEW, INNOVATIVE, HAVE AN INDUSTRIAL APPLICATION AND BE DESCRIBED IN SUCH A FASHION TO PERMIT REPRODUCTION OF THE PROCESS. 25 May 2017 8 Copyright © 2017 South-East Asia IPR SME Helpdesk. All rights reserved. Main challenges for start-ups • CHALLENGE 1: Identifying IP assets: Design Patents A DESIGN MEANS ANY FORM OR COMPOSITION OF LINES OR COLORS WHICH GIVES A SPECIAL APPEARANCE TO A PRODUCT AND CAN SERVE AS A PATTERN FOR A PRODUCT OF INDUSTRY OR HANDICRAFT. THE DESIGN MUST BE (I) NEW AND (II) CAPABLE OF INDUSTRIAL APPLICATION. https://www.china-iprhelpdesk.eu/sites/default/files/pdf/04112016_DESIGNS_PPT_FRANCK_FOUGERE_002_HD_Revised.pdf 25 May 2017 9 Copyright © 2017 South-East Asia IPR SME Helpdesk. All rights reserved. Main challenges for start-ups • CHALLENGE 1: Identifying IP assets – Invention Patents/Petty Patents/ Design Patents 25 May 2017 10 Copyright © 2017 South-East Asia IPR SME Helpdesk. All rights reserved. Main challenges for start-ups • CHALLENGE 1: Identifying IP assets: Trademarks LANCOME ANY SIGN THAT CAN BE REPRESENTED GRAPHICALLY (WORDS, SYMBOLS, IMAGES, ETC...) WHICH IS USED TO DIFFERENTIATE IN THE MARKET PRODUCTS OR SERVICES FROM DIFFERENT COMPANIES. TO BE VALID THE SIGN SHALL BE DISTINCTIVE AND AVAILABLE AND NOT PROHIBITED BY LAW. RULES OF TERRITORIALITY AND SPECIALITY Smells marks (GOODS/SERVICES) Sound marks Taste marks Holograms TRADEMARKS ARE USUALLY PROTECTED FOR 10 Moving marks YEARS AND RENEWABLE. IT IS RECOMMENDED TO USE A REGISTERED MARK EVERY 3 OR 5 YEARS. 25 May 2017 11 Copyright © 2017 South-East Asia IPR SME Helpdesk. All rights reserved. Main challenges for start-ups • CHALLENGE 1: Identifying IP assets: Copyright COPYRIGHT PROTECTION EXTENDS TO A WIDE RANGE PHYSICAL EXPRESSIONS OF IDEAS INCLUDING THE FOLLOWING. •LITERARY WORKS (ADVERTISEMENTS, BOOKS, MAGAZINES, NEWSPAPERS…) •COMPUTER SOFTWARE •MUSICAL WORKS •DRAMATIC WORKS (CHOREOGRAPHY, DANCING, ACTING…) •ARTISTIC WORKS (SUCH AS WORKS OF PAINTING AND DRAWING, SCULPTURES, LITHOGRAPHY, WORKS OF ARCHITECTURE, PHOTOGRAPHIC WORKS, ILLUSTRATIONS, OTHER FORMS OF APPLIED ARTS) •AUDIOVISUAL WORKS •CINEMATOGRAPHIC WORKS •AUDIO RECORDINGS •DATABASES etc. 25 May 2017 12 Copyright © 2017 South-East Asia IPR SME Helpdesk. All rights reserved. Main challenges for start-ups • CHALLENGE 1: Identifying IP assets: Copyright IT IS THE EXPRESSION OF THE IDEA AND NOT THE IDEA ITSELF THAT IS PROTECTED, IN OTHER WORDS, A COPYRIGHT PROTECTS THE FORM OF EXPRESSION RATHER THAN THE SUBJECT MATTER OF THE WORK AND A CONCRETE ‘VERSION’ IS ALWAYS NECESSARY. COPYRIGHT DOES NOT PROTECT IDEAS OR PROCEDURES, PROCESSES OR SYSTEMS OR METHODS OF USE OR OPERATION OR CONCEPT, PRINCIPLES, DISCOVERIES OR SCIENTIFIC OR MATHEMATICAL THEORIES. PROTECTION LAST 50 TO 70 YEARS AFTER DEATH OF THE AUTHOR. 25 May 2017 13 Copyright © 2017 South-East Asia IPR SME Helpdesk. All rights reserved. Main challenges for start-ups • CHALLENGE 1: Identifying IP assets: Other IP DOMAIN NAMES KNOW-HOW KNOW-WHY TRADE SECRETS: TRADE SECRETS A TRADE SECRET IS A CONFIDENTIAL FORMULA, PRACTICE, GEOGRAPHICAL PROCESS, DESIGN, INSTRUMENT, PATTERN, OR INDICATIONS COMPILATION OF INFORMATION USED BY AN ENTERPRISE TO OBTAIN AN ADVANTAGE OVER COMPETITORS WITHIN PLANTS BREEDER’S RIGHT THE SAME INDUSTRY OR PROFESSION. INTEGRATED CIRCUIT LAYOUT IN SOME JURISDICTIONS SUCH SECRETS ARE REFERRED TO TRADITIONAL AS "CONFIDENTIAL INFORMATION", WHILE IN OTHERS THEY ARE A SUBSET OR EXAMPLE OF CONFIDENTIAL KNOWLEDGE… INFORMATION. AN EXAMPLE OF THIS WOULD BE THE FORMULA OR RECIPE OF A PRODUCT E.G. COCA COLA. REGISTRATION OF TRADE SECRETS IS AVAILABLE IN SOME COUNTRIES. 25 May 2017 14 Copyright © 2017 South-East Asia IPR SME Helpdesk. All rights reserved. Poll I- What IP right do you believe is the most important for you to protect? 1) Patent for invention/Petty patent? 2) Design patent? 3) Trademark? 4) Copyright? 5) Other IP (ex: trade secret)? . 25 May 2017 15 Copyright © 2017 South-East Asia IPR SME Helpdesk. All rights reserved. Main challenges for start-ups • Challenge 2: Prioritization Startups usually do not prioritize IP as they are confronted with other priorities such as: - Developing a proof of concept/prototype; - Product launch/ marketing expenses; - Human resources; - Finding suitable business partners/investors etc.; - And making profits! 25 May 2017 16 Copyright © 2017 South-East Asia IPR SME Helpdesk. All rights reserved. Main challenges for start-ups • Challenge 3: Costs IP can be expensive: example of trademark costs in ASEAN for one trademark REPORTING OF FOR ONE MARK IN ONE PROVISION FEES FOR FILING PUBLICATION AND TOTAL CLASS APPLICATION PAYMENT OF REGISTRATION FEES THAILAND 385 115 500 PHILIPPINES 650 550 1,200 INDONESIA 880 330 1,210 LAOS 450 200 650 CAMBODIA 560 380 940 MYANMAR 950 Included 950 VIETNAM 650 120 770 SINGAPORE 850 450 1,300 MALAYSIA 850 400 1,250 BRUNEI 975 805 1,780 TOTAL FEES (excl. VAT 7%) USD 7,200 USD 3,350 USD 10,550 25 May 2017 17 Copyright © 2017 South-East Asia IPR SME Helpdesk. All rights reserved. Main challenges for start-ups • Challenge 3: Costs For patents, costs are much higher and in average of 3,000 USD per country (excluding annuities…) Copyright recordation is cheap (budget of 700 USD for an international protection under the Berne Convention- however protection may not be available everywhere: ex: Cambodia). It is essential to find a budget that suits your immediate and longer term protection needs as well as someone who understands your business plan. Spending a lot is not necessarily a sign of a healthy business, spending nothing does not look good either. 25 May 2017 18 Copyright © 2017 South-East Asia IPR SME Helpdesk. All rights reserved. Main challenges for start-ups • Challenge 4: Lack of IP strategy Startups tend to underestimate the importance of a sound IP strategy. This can be very costly: Ex of common mistakes: - Launching a product/disclosing an invention or design before a patent is filed means no future exclusivity; - Starting a brand without checking availability or getting a registrability opinion; - Forgetting essential contracts to secure confidentiality or to trace ownership of IP rights, especially copyright (ex: the Winklevoss twins/Facebook); - Missing opportunities to license/sell IP assets; - Turning off potential investors: Investors more likely to invest when IP is well managed. Thumb rule: The more IP is central to your business, the more resources you need to direct to protect it. 25 May 2017 19 Copyright © 2017 South-East Asia IPR SME Helpdesk. All rights reserved. Main challenges for start-ups • Challenge 5: Is protection really available? It is a mistake to consider than no protection is available: Read summaries of thousand of court decisions and not just the newspapers. In fact, ASEAN countries (except Myanmar) have quite robust IP protection legal frameworks.