World Intellectual Property Organization

Awareness Raising on IP for SMEs Industrial Property Pre-diagnoses

In today’s environment of economic competition, accentuated by globalisation phenomena, Industrial Property in its various aspects (patents, trademarks, designs, secrets, licensing agreements…) is growing in importance in first world countries. In fact, the challenges of IP for a company, even just in safeguarding the development of its activity or in conserving or indeed improving its position amongst its partners or competitors are very real, and are inevitably expressed in terms of market share and jobs.

Nonetheless, on the French national level, SMEs are not sufficiently used to using IP and the competitive advantages it brings, for which, no doubt insufficient information and poorly structured strategy are largely responsible.

Against this backdrop, and faced with the important challenge of encouraging innovation, the French Government initiated a voluntarist policy for the promotion of IP in order to support innovation and competitiveness within companies. The policy materialised as the first priority of the Contract of Agreed Objectives for 2005/2008 signed by the Government and the INPI. The INPI must achieve this objective across the whole of France and strengthen its activity in the provinces by creating partnerships with Regional Councils (Conseils régionaux). Alsace and Aquitaine have already signed conventions of this type, whilst negotiations are underway with other regions.

IP “pre-diagnoses” for SMEs are one of the practical activities at the heart of this policy and of regional partnership agreements.

Presentation of IP Pre-Diagnosis

Target companies are SMEs that have little or no experience of IP, particularly of patents, and who operate preferably in the technological field.

For SMEs such as this, the IP pre-diagnosis provides a standstill which facilitates the analysis of the challenges of IP in its entirety by setting it within the general context of the company’s development, and taking all factors into account: the aim is to underline the value of an IP policy to the company, and together with its company director, to estimate what benefits the IP could bring, taking into consideration the future prospects of the company.

Within the scope of pre-diagnosis, IP includes industrial property, intellectual property, and all other means of acquiring rights to innovations and managing them, such as secrets, contracts, licenses and the management of information flows.

All the industrial property tools are included: not only patents, trademarks, and designs, but also know-how and domain names. As well as stressing the protection factor, the indirect advantages of the use of IP are also highlighted (technical, legal and information monitoring - the organization of human resources regarding confidentiality and ownership of rights - support for partnerships, acquisitions or transfers of technology by licenses and assignments - realizing value from IP assets...).

In no sense of the term is this a “technical” service. For example, the pre-diagnosis is neither a documentary search, nor the industrial property diagnosis for a specific project, nor a patent scope study, nor the drawing up of a contract. Neither is it a bait for the protection tools offered by the INPI.

This is a customised service. It includes a pre-diagnosis report which is a tool to be re-used according to the company’s needs. The expected gains for the company are:

  • a genuine diagnosis of the current state of the company regarding its needs in relation to industrial property based on an objective and qualified analysis;
  • a prospective view based on an understanding of the development prospects of the company and an understanding of the competitive advantages which can be created by industrial property;
  • recommendations and avenues for action
  • the clear identification of available skills and an openness of mind required to get a clear picture of all the players and IP costs involved.

The facilitator will require a day and a half to carry out a pre-diagnosis. This includes preparation, and getting acquainted with the company through a discussion with the company director preferably including a tour of the premises, the analysis and summary of findings, the draft of the report and finally delivery to the company.

The oral presentation within the company provides an ideal opportunity to expand on the follow-up action called for in the IP pre-diagnosis. The cost of the pre-diagnosis (1,500 €) is covered by the INPI and is free of charge for the company.

Keys to Success

1. One of the main keys to the success of the project has been the creation of a pool of facilitators up-to-speed with the new approach to IP and capable of putting it into practice.

At the outset, facilitators were sourced from the INPI, and were mainly from the Regional Action Department (Département de l’action régionale), and the Patents Department (Département des brevets). A good many of them already operated within the context of the Institute’s local services sector, and were very familiar with the difficulties faced by companies.

Each facilitator received two days methodology training primarily working together on a practical case study aided by a suggested interview guide. This training highlighted the need for a methodology guide so a working party of the first group of facilitators was set up. The guide that resulted from these exchanges of experience identifies the information that is likely to be included in an IP pre-diagnosis, together with good practices. It also provides a suggested report draft and a presentation format that links flexibility with pragmatism in order to adapt to the specific problems of a particular company at the discretion of the pre-diagnosticians.

The INPI’s facilitators were soon joined by other external facilitators, for example from the ARISTs (specialised agencies of the Regional Chambers of Commerce and Industry), generalist consultants with a good understanding of industrial property, voluntary IP consultants and, in a number of cases by lawyers specialising in intellectual property etc.

Any report submitted by an external facilitator is reread and supervised by an INPI facilitator.

2. A second factor in the keys to success is the question of the approach made to companies to inform them about the service and energise and sustain the activity.

In order to go further than a general communication campaign, backed up by the information on the INPI web site in the section dealing with assistance for SMEs (http://www.inpi.fr/front/show_rub.php?rub_id=187) and by a communication leaflet, the Institute mobilised its regional partners dealing locally with questions of innovation, economic development, and technology in the provinces. The INPI’s regional delegates worked hard to inform and motivate their networks. Amongst those organisations that have proved to be the most active, the Regional Technological Development Networks (Réseaux régionaux de développement technologique) and indeed the Chambers of Commerce and Industry (Chambres de commerce et d’industrie) deserve a mention.

Results

The INPI has been providing this service since 2004. An initial survey carried out amongst the SMEs concerned by the very first IP pre-diagnoses immediately confirmed the value of the initiative.

Since then the INPI has closely followed the operation in order to evaluate its effectiveness and its relevance to the needs of companies. Results from the study as at March 1st 2006 are:

Number of pre-diagnoses carried out:

2004

2005

Objective 2006

270

464

500+


Companies benefiting from a pre-diagnosis in 2005

The breakdown is as follows:

Breakdown by numbers of employees

1 to 20

20 to 50

More than 50

74%

14%

11%

The majority of those concerned, therefore, are small companies, or very small companies. Some companies that were close to being set up have also benefited from an IP pre-diagnosis, on condition that their development strategy was sufficiently detailed, they had established a business plan, and that they had a good understanding of the market in which they would be operating.

Breakdown by sector of activity

Industry

Services

Commerce

Others

(food processing, building and works)

45%*

34%**

14% ***

7%

  • * of which 6% in metallurgy, 8% in machine production and 7% in precision instruments
  • ** of which 15 % in company services, 13% in IT
  • *** of which 11% in wholesale

Difficulties encountered

As with all new initiatives, adjustments were necessary, and they continue today in order to improve effectiveness. A number of more sensitive points bear mentioning:

  1. IP goes to the very heart of the company’s strategy, and the company director is sometimes reluctant to communicate quickly his real development prospects. Consequently, before the start of each pre-diagnosis, the INPI representative and the company director co-sign an undertaking. The INPI guarantees the confidentiality of the facilitator, and the company director agrees to communicate all necessary information.
  2. Whilst the service must be of high quality, personalised, selective and relevant, it is vital to maintain the positioning of the IP pre-diagnosis as an awareness raising tool for SMEs especially in relation to a paid diagnosis or consultation. The short duration of the pre-diagnosis provides a guarantee to some extent, but is also a challenge for the facilitator.
  3. The great majority of companies that have benefited from a IP pre-diagnosis are SMEs in the provinces, whilst, in spite of the importance of its economy, the high concentration of SMEs, its culture of innovation and the numbers of patents filed, less than a quarter of pre-diagnoses took place in the Ile de France region in 2005. It would therefore seem necessary to actively encourage companies to make use of the IP pre-diagnosis given that general information about the existence and value of the programme seems insufficient. Therefore, the need to mobilise networks is clear.

Qualitative results – Perception and impact

The companies concerned are very satisfied with the service. A survey carried out amongst a representative sample of 100 companies that benefited from the service in 2005 showed the following:

  • 92% were satisfied or very satisfied
  • 88% have a better understanding of the importance of industrial property for their company
  • 56% have initiated IP activity as a result of a pre-diagnosis.

The satisfaction rating is the same for the INPI facilitators and external facilitators.

An assessment of the IP pre-diagnosis report’s content, in terms of the quality of the service, has yet to be completed.

Conclusion

The IP pre-diagnosis has proved to be an effective tool in the promotion of industrial property as a means to aid business development.

The INPI has committed itself to the Government to achieve 500 pre-diagnoses per year in the framework of its objectives to 2008. These will be offered first and foremost to SMEs operating in the ‘poles of competitiveness’ (pôles de compétitivité) that have recently been identified by the Government. Partnerships with Regional Councils (Conseils régionaux), which will include the objectives of IP pre-diagnoses, will be strengthened.

But to ensure the greater effectiveness of the initiative, we must attract more SMEs with over 10 employees who we believe have the means and the resources to put a genuine long term industrial property strategy into place. In order to achieve this, the INPI is working to establish and formalise partnerships with its main partners in innovation as well as professional organisations – the Institute has, for example, recently signed a partnership agreement with the Federation of Mechanical Industries (Fédération des industries mécaniques) in the expectation of securing other partnerships in the future.

Thank you for your attention.


Best Practice contributed by Cécile HUGO – Regional Delegate, INPI Lille

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