Assignment 1 – Case Study

Who should be the default owner of the IPRs in relation to the invention and why?

Achieving an equal distribution of intellectual property ownership and protecting intellectual property are the pillars of a rules-based society and market economy, and the importance of these principles can’t be stressed. When it comes to developing new ideas and products, businesses and entrepreneurs must have a clear knowledge of how intellectual property rights should be allocated (Gürkaynak et al., 2018). The use of common law precedent can be utilized to identify who owns certain intellectual property rights even if no agreement or contract has been entered into. One-person ownership of intellectual property describes the ownership of any or a part of intellectual property through a singular entity, most commonly referred to as the inventor, who is responsible for the creation of the intellectual property. Joint Ownership is a legal framework that allows one or more creators to possess intellectual property in their collective names.

In the case study above, the university is the default owner of the IPRs in relation to the invention. This is because the intellectual property was made by a section of the university employees and research body in the course of study and employment. Additionally, the individuals involved in the creation include students, research fellows, and employees who use substantial resources from the institution, including its name, financial capabilities, network, physical assets, and so on.

Please comment on the IP portfolio mix that you will deploy.

A strategy that combines research and development, in-licensing, elements of out-licensing, and, where applicable, mergers and acquisitions is required to manage an IP portfolio. When creating and maintaining an IP portfolio, I would adopt a strategic and holistic approach. Companies are always searching for ways to enhance and grow their operations, and a strong patent portfolio that matches with those initiatives should be deliberately built to help them do so. Smaller businesses must make sure their IP portfolio covers their full pipeline while being lean so money isn’t squandered on unneeded prosecution and litigation. R&D may be a time-consuming, risky process that makes it difficult to pivot or expand a product quickly (Belderbos, Park, & Carree, 2021). Buying a firm and merging its IP and procedures might be significantly more efficient if some other organization does have IP protecting a given technology and all the operational expertise with it. Acquisitions provide a quick approach for mid-sized and big organizations to secure IP for future initiatives while also supplementing existing business operations. To provide long-term patent protection, the portfolio mix for existing and prospective projects should comprise a lengthy average remaining patent lifespan and more outstanding applications than expired papers. 

Elaborate on the patent filing strategy that you would present to the management

There is little question that detailed work is perhaps the most innovative type of work in patents. Conducting an exhaustive search, determining the best method to defending an invention’s creative step, or accurately analyzing a probable infringement by equivalent demands expertise, information, and, of course, creativity. The proper patent filing approach is also critical for patent holders. The vast majority of nations have ratified the Paris Convention for the Protection of Industrial Property (Mandrinos, Lim, & Liew, 2022). This enables an individual to file an initial provisional patent inside one participatory nation (or area) to receive a filing date and afterwards spend 12 months to submit further filings for much the same innovation anywhere in any member nations. This would entail asserting precedence to the initial date of filing (the effective submission entry and priority date). These nations will consider the application as if it were filed simultaneously with the first request.

Discuss the countries that you would file patent protection, raking them in the order of priority. Explain the competitive advantages of the proposed strategies.

Companies can use IPRs and registration to secure their fundamental managerial and R&D, technology transfer, and other technical processes, and improving their negotiating strategy for counter claims as well as cross-licensing. IPRs and all registrations are meant to enable patenting entities to present a barrier of entry, hinder competitive products or brands, dampen new entrants, as well as preparing the way for all future dominance of the market via technical development. The main role of a patent is to register an invention. This, according to Mashdurohatun, Haq, and Zulhuda (2018), includes original innovations and rarely known processes and technologies. The rule is that these inventions be novel and not obvious. In order to get a patent, the technical aspects of the discovery should be publicly disclosed through the filing of a patent application with the appropriate government agency. In order to be created or amended as needed, intellectual property rights (IPRs) should be recorded in a clear and understandable manner.

I would file patent protection in the following countries:

The United States

China

Japan

The United Kingdom

The use of the above nations in the order presented is crucial in creating an advantage because it would mean protection in other countries that are a part of the region. For example, protection in the US means that Canada and the larger American continent would be represented, similar for China, and Japan. Patent protection in the United Kingdom would allow the larger European zones to be a part of the application process and thus create an advantage.

References

Belderbos, R., Park, J., & Carree, M. (2021). Do R&D investments in weak IPR countries destroy market value? The role of internal linkages. Strategic Management Journal, 42(8), 1401-1431.

Gürkaynak, G., Yılmaz, I., Yeşilaltay, B., & Bengi, B. (2018). Intellectual property law and practice in the blockchain realm. Computer law & security review, 34(4), 847-862.

Mandrinos, S., Lim, W. M., & Liew, C. S. L. (2022). De‐internationalization through the lens of intellectual property rights. Thunderbird International Business Review, 64(1), 13-24.

Mashdurohatun, A., Haq, H. U., & Zulhuda, S. (2018). Social Function Reconstruction of Intellectual Property Rights (IPR) Based On Justice Values. International Journal of Law Reconstruction, 1(1), 141-160.