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Slide 1: WIPO - CEDA Sub-regional Symposium on Intellectual Property (IP) For SMEs Suriname - July 18 and 19, 2005 St. Lucia - July 22 and 23, 2005 Jamaica - July 25 and 26, 2005 Dominican Republic - July 28 and 29, 2005 1
Slide 2: IP Issues in Outsourcing and Exports: Challenges and Opportunities Donna Ghelfi Program Officer Small and Medium-sized Enterprises Division World Intellectual Property Organization 2
Slide 3: This Presentation 1. Outsourcing Offshore: An IP Perspective — What is Offshore Outsourcing? — The Value-Chain and levels in outsourcing — Protecting IP assets and know-how 2. IP and Exports: Avoiding Common Pitfalls — Taking the Decision to Export — IP and Exports — Ten Points to Remember for Avoiding Common Pitfalls 3
Slide 4: What is Offshore Outsourcing? 4
Slide 5: Outsourcing Offshore Outsourcing offshore is relatively complex. — The interaction of different national business environments in such transnational relationships is a multilayered process in which diverging legal, economic and social concerns arise. 5
Slide 6: Can it be defined?  Outsourcing can be generally ‘defined’ as a means of ... “… marrying efficiency with innovation, which requires managers to consider the following: time-cycle and cost reduction, levering scale and scope, reduction of resources, partners as role models for change, and reduction of risk”. Prahalad, C.K. and Ramaswamy, Venkatram (November 2001) “The Collaboration Continuum”. 6
Slide 7: Outsourcing Offshore The term outsourcing offshore is used to distinguish the activities that occur when … …. company A turns over responsibility, in whole or in part, of an in-house business function to company B whose location is outside of company A’s national jurisdiction. 7
Slide 8: Outsourcing offshore is used by enterprises to ... … increase profitability by investing overseas in relatively ‘low-wage’ countries ... --- such as India, China and Brazil, Eastern Europe, Vietnam, etc. 8
Slide 9: The prime driver for businesses is …. …. the ‘savings’, which lead … … to lower costs while maintaining high quality; … or to put it another way … …. to lower costs while maintaining high quality, which ultimately, leads to savings. … But, in essence it is due to a combination of factors, such as high levels of education and skills appropriate to the tasks outsourced. 9
Slide 10: A recent survey by Ventoro* found that …. “45% of those polled (5,231 Executives across North America and Europe) indicated their offshore strategy was a “success” with only 36% claiming their offshore strategy had failed.” *Ventoro, founded by senior executives from the Offshore Outsourcing world, specializes in offshore outsourcing research, strategy, implementation and management. 10
Slide 11: Outsourcing offshore is a valid business strategy ... … at a time when ... … information technology and the globalization phenomenon are bringing about increasingly integrated economies and a ‘recovery’ in global trade.  The key question in this connection is whether or not such outsourcing offshore can be sustained to encourage development also in the so-called ‘low wage’ countries. 11
Slide 12: TRENDS IN OFFSHORING Offshoring is here to stay Outsourcing Industry Growth CAGR (2001 - 2008) 38% 26% 1.5% Onshore Outsourcing & Shared services USD Billion Onshore outsourcing + Shared Services Offshore Outsourcing Captive Offshoring Offshore outsourcing Captive offshoring 2001 3304 17 35 2008 3664 164 182  Offshore outsourcing delivery will show the highest growth  Cost & quality levels are the biggest drivers Source: Industry Analysts, TCS 12
Slide 13: The United Nations Conference on Trade and Development (UNCTAD) World Investment Report 2004, in exploring the factors behind the global shift to outsourcing offshore, states that ... “FDI* plays an important role in offshoring, although this is difficult to quantify owing to the lack of reliable data. In principle, FDI affects offshoring in two ways: (i) through captive offshoring, and (ii) when specialized service providers set up foreign affiliates to serve foreign clients. While such investments can create many jobs, they typically do not generate large capital flows. Consequently, they do not account for large shares in the FDI statistics”. *FDI = Foreign Direct Investment 13
Slide 14: In which Industries do Outsourcing Arrangements Occur? 14
Slide 15:  … Outsourcing arrangements in the manufacturing sector have a long history …. – i.e. in the apparel, automotive, textile and steel industries (jobbing, maquilla, etc …) — The practice, termed contract manufacturing or subcontracting*, was and is still used to reduce overall costs. — Today … traditional contract manufacturing operations have evolved to the ‘contract manufacturing’ of services; * Subcontracting would include license manufacturing an private label manufacturing. 15
Slide 16: What can be Outsourced ? Critical, Non core activities Likelihood to outsource – moderate today, high tomorrow  Accounting  Supply Chain Mgt  HR/Administration  Claims administration, Billing Critical, Core activities Likelihood to outsource – low today, low tomorrow  Core competencies  Managing market image trademarks  Caring for patients  Find/sell oil and gas  Strategy  Patents and technology Non Critical, Non core activities Likelihood to outsource high today and tomorrow  Landscaping  Cafeteria  Laundry Source: Gartner Company estimates 16
Slide 17: Two main groupings of offshore outsourcing: • Technology services, which includes information technologies (applications hosting, telecommunications (voice and data), logistics, etc.); electronics (semiconductor chips; high-value microprocessors); electronic commerce, etc. • Business processing outsourcing (BPO), which deals with differentiated activities, such as finance and accounting, procurement and supply, customer contact (customer relations management), human resources, security, etc. 17
Slide 18: Other outsourced offshore functions... • Medical: drug and product development in the pharmaceutical and biotechnology industries, especially clinical trials and legal services, etc. • Legal: Business, Contracts, IP services, etc. • Business: Advertising, Marketing, Promotions, etc. • Engineering: Architectural, CAD Design, Electronic design, Mechanical, etc. • Graphic design: Banners, Brochures, Business cards, Illustrations, Logos, etc. • Multimedia: Audio, Photography, TV Commercials, Video, etc. • Software: Application development, Database development, Language platforms, etc. • Web design: Flash graphics, site design, website programming, website marketing, etc. • Writing: Copy editing, copy writing, page design, technical writing, translations, web content, etc. • Accounting, Administration, etc... 18
Slide 19: The Value-chain and Levels in Outsourcing 19
Slide 20: Summarising ‘Outsourcing’ Transformation Effectiveness Efficiency Business Processes IT Applications IT Infrastructure Why? Intensive Extensive Selective What? Source: Jane Linder: Outsourcing for Radical Change, AMACOM, 2004. How? 20 Value
Slide 21: The Value-chain — In the delivery of products and services, different economic actors are mobilized, and each will manage its own value chain. …. Because there is an independence in the exploitation of upstream and downstream information … …. there is ….. … a disintegration of the vertical (supply chain) integrated factory which usually leads to the eventual fragmentation of ownership rights.  Thus, it is imperative for firms to identify the strengths and weaknesses in each identified value chain activity. 21
Slide 22: Economic Globalization Production Relocation Outsourcing offshore Transfer of Know-How Design Technology Licensing Agreements Production Process Contract Manufacturing Global Value Chains Source: “The Magic Pallet” Brochure, Centre for International Studies on development economics Trade Secrets Know-How Market Access Market Entry 22
Slide 23: Offshore outsourcing happen at various levels of the value chain Level 1. …. Labor-intensive unskilled tasks are outsourced. Level 2. …. the production or manufacture of a component, or the whole product or service, is outsourced. Level 3. …. technology development is outsourced, including some or all of the associated research and development (R&D) tasks. Level 4. Some consider outsourcing of marketing functions to be the highest level of outsourcing. It may be done partly (for example, outsourcing of market research) or almost wholly (for example, distribution and sales are outsourced). …. In practice, there can be various permutations and combinations of the above categories. 23
Slide 24: Protecting IP Assets and Know-How 24
Slide 25: So, you’ve decided to outsource a task! Remember ... — The benefits of sharing IP assets must outweigh the multiple risks encountered in outsourcing, including the risks linked to the shared IP assets. 25
Slide 26: Every type of IP asset may be involved at the different levels of outsourcing relationships – trade secrets, – trademarks, – industrial designs, – patents, – copyright and related rights 26
Slide 27: And … … each type of IP asset will be governed by its own distinct national law… …. adding further complexity to managing IP assets in offshore outsourcing relationships, especially if there are many partners in different countries. 27
Slide 28: What are the Risks?  Risks include the challenges in monitoring and/or dealing effectively with … - various types of breaches of contract clauses; - theft or misappropriation of trade secrets; - misuse or loss of other types of IP rights (resulting in partial loss of control of business); - poor or inconsistent quality of goods and services (that may affect the reputation or brand image); - enforcement of IP rights; - parallel imports and grey-market issues. 28
Slide 29: An IP due diligence enquiry should be undertaken before finalizing any outsourcing plan to safeguard an enterprise’s IP. 29
Slide 30: IP Due Diligence Enquiry (Non-exhaustive list)  Identify the inventor, creator or author of the IP.  Determine ownership rights in the identified IP, including joint-ownership issues.  Identify contracts or other agreements associated with the IP. For example technology transfer or licensing agreements; confidentiality and non-compete agreements. 30
Slide 31: IP Due Diligence Enquiry, cont’d…  Identify assigned or licensed IP used by the interested enterprise(s): IP of third parties and/or by employees. Ascertain the rights granted to each party, and detect existing and potential subcontracting issues.  Identify existing and/or alleged breaches of contract, infringements, disclosure of confidential information and trade secrets. 31
Slide 32: IP Due Diligence Enquiry, cont’d…  Determine jurisdiction and enforcement: applicable laws, enforceability: dispute resolution mechanisms (mediation, arbitration, choice of governing law, applicable jurisdiction).  Termination, expiration or exit clause of arrangement: Is there an indemnity against infringement?  Determine other IP related responsibilities: Ongoing maintenance and upgrades to the IP; payments of transfer fees; product liability, IP insurance, etc. 32
Slide 33: Ownership of IP Whether the outsourced work is expected to take place domestically or outside the enterprises’ national borders, … … it is essential to identify, account for and clarify ownership related issues of IP assets improved or created during the relationship. 33
Slide 34: Ownership of IP — Several approaches to sharing ownership rights over IP which is improved or created during an outsourcing relationship.  One approach would be for … …. the customer to own all IP improved or created during the outsourcing relationship, with the vendor having the possibility of using the IP through a negotiated license agreement.  Another approach would be for … …. the vendor (developer) to own all such IP, with the customer (the party having commissioned the task) taking a license through negotiations. 34
Slide 35: Ownership of IP  Yet another approach would be for … …. both the customer and vendor to own jointly the resulting IP.  Still another approach would be to … …. apportion ownership of different IP assets, so improved or created, amongst the parties concerned, namely, amongst the vendor, customer and one or more third parties; this is done by a formal agreement based on negotiations guided by each parties’ current and future business needs. 35
Slide 36: Key questions to pose yourselves: 1. Who owns the IP created by a company’s employees or independent contractors? -- If it is to belong to the company, then are all such IP assets properly transferred or assigned to the company? 2. Who will own the customized features, improvements, new technology and product in outsourced work? -- For example, in relation to copyrighted works, such as software, will an improvement or modification result in the creation of co-authorship and resulting joint ownership or will it be treated as an adaptation (also known as a ‘derivative’ work) which would be owned by the party that made the improvement? 3. How does one determine whether ownership will be exclusive to one party or another or held jointly? 4. What entitlements will each party have to exploit jointly created IP? 5. What will happen to customer’s IP when it wants to switch vendors (i.e., 36 transfer rights) or terminate contract?
Slide 37: Confidential Information and Trade Secrets — A primary concern when outsourcing is the potential partner’s ability to safeguard confidential information of commercial value against … … accidental, inadvertent or willful misappropriation, misuse, sabotage, loss or theft. — If the partner cannot be trusted to protect trade secrets, then the risks of outsourcing offshore may far outweigh its potential benefits. ….. Hence, it is crucial to review the integrated security and/or IP protection program of the potential outsourcing partner. 37
Slide 38: IP Concerns in Negotiating Offshore Outsourcing Arrangements — Offshore outsourcing contractual arrangements can take several forms. …. Most agreements will include the terms upon which both parties agree to commit their tangible and intangible assets for a mutually beneficial outcome. — A firm should only start practical business negotiations after being satisfied about a potential partner’s reputation, human, financial and technical resources and compatibility of corporate culture. — Negotiations should focus on the steps needed for both parties to safeguard and ensure proper use, sharing, licensing, development and improvement of the IP (of both parties) during and after the relationship. 38 — It should also include any relevant IP assets of third parties.
Slide 39: Third Party IP …  Third party IP raises intricate concerns in an offshore outsourcing arrangement. …. The important principle to remember here is for the party outsourcing work (the customer) to review the IP to be outsourced and examine all licensing agreements under which it has licensed third party IP. ….. This step is to ascertain whether or not there are any restrictions on use, limitations on transfers or assignments, or confidentiality provisions. 39
Slide 40: Negotiating Offshore Outsourcing Arrangements 40
Slide 41: IP Essentials for the Contractor (Customer) 1. Account for all IP and associated know-how (whether registered or not, pending registration, or new (in-development) and fix the limits within which these IP assets are to be made available to the vendor. 2. Ensure that the contract expressly deals with ownership issues relating to jointly created IP or over IP assets created by the vendor during the outsourcing relationship: Who will have ownership rights of newly created information based on customer’s IP data? 3. Be aware of any limits on use of licensed third party IP: Can it be sublicensed to a vendor? 4. Require vendor to take all reasonable measures to protect all licensed IP assets, and especially any confidential information, trade secrets, know-how, etc. disclosed during the relationship. 5. In ascertaining vendor’s legal responsibilities in relation to outsourced function, make sure that their existing agreements, for example distribution, supply, marketing and research collaborations, do not compromise the IP assets to be shared with them: What would happen if the vendor were to sub-contracts part of the outsourced function to independent contractors, consultants, etc.? 6. Identify the vendor’s other customers: Are they potential competitors? If so, what additional safeguards may be needed to safeguard the IP assets to be shared with the vendor? 41
Slide 42: IP Essentials for the Vendor 1. Account for all IP and associated know-how (whether registered or not, pending registration, or new (in-development) and fix the limits within which these IP assets are to be made available to the relationship. Ensure that the outsourcing agreement includes provisions to protect owned (vendor’s) IP and associated know-how. 2. Ensure clarity of ownership or joint-ownership of IP assets created or improved during the course of the outsourcing relationship, whether based on customer’s IP data or not; seek the maximum leeway to use any such jointly owned IP assets for other or different outsourced functions with other customers. 3. Set-up an integrated, well functioning IP protection and security program to safeguard your own and the customer’s confidential information, trade secrets and know-how. Enter confidentiality (non-disclosure) and non-compete agreements where and when appropriate. 4. Put in place mechanisms to prevent inadvertent ‘mixing’ of proprietary trade secrets with those of the customer. 5. Be aware of any limits on use of licensed third party IP: whether it can be used for the purposes of the current relationship. 42
Slide 43: Critical question …. Where Do You Seek Protection? 43
Slide 44: Where Do You Seek Protection? – Countries where customers can be found? – Countries where markets are? – Countries where competitors are active? – Countries where product can be manufactured? – Countries where product is imported / exported? – Countries where product is used? – Countries with a strong IP system? 44
Slide 45: Conclusion 45
Slide 46: ….. an offshore outsourcing business strategy, if well implemented by following an integrated and holistic IP policy, will mitigate IP-related risks and improve the competitiveness of the product or services offered by the enterprise. 46
Slide 47: Case Study: IP Protection and Management in the Offshore Outsourcing Industry - Shinetech Software (China) Sets Itself Apart From its Competitors — Shinetech Software Inc. is a professional offshore outsourcing service provider headquartered in Beijing China, specializing in helping Europe and US companies reduce their development costs. — IP protection plays a crucial role in motivating and attracting Shinetech’s customers, and it has already been indispensable to Shinetech’s long-term development strategy. In Shinetech, IP doesn’t just mean patents, trademarks and copyrights, but significantly is the processes, techniques, methodology and talent. Shinetech supports strong intellectual property protection and understands the vital importance of intellectual property to its customers’ business development. The IP protection policy of Shinetech addressed five primary areas, each of which is regularly validated by its internal and third-party audit program. • Non-Disclosure Agreement • Project-related IP Protection • Confidential Document Control (DC) • Employee Confidentiality Contract • Employee Training Program 47
Slide 48: Intellectual Property and Exports: Avoiding Common Pitfalls 48
Slide 49: Contents 1. Taking the Decision to Export 2. IP and Exports 3. Ten Points to Remember for Avoiding Common Pitfalls 49
Slide 50: Taking the Decision to Export — Exporting involves considerable investments in financial, managerial and production resources.  Importance of an Export Plan: — to develop a a clear export strategy; — to determine a product’s readiness for export; — to determine if there is a market for the product/service abroad; — help to obtain funds for exporting. 50
Slide 51: Taking the Decision to Export Key issues when exporting: – – – – – identifying export markets estimating demand finding local partners and channels of distribution adapting the product / design / brand / packaging contractual agreements with export sales reps, distributors, licensees, local manufacturers, etc – determining price – making transport arrangements – advertising and marketing the product 51
Slide 52: Taking the Decision to Export WHAT ABOUT INTELLECTUAL PROPERTY? 52
Slide 53: IP and Exports Firstly, IP is an important consideration in some of the following points: – Pricing of the product will partly depend on the extent to which the IP is recognized and valued by consumers, and the extent to which product will face competition from rival products. – Adaptation of product / brand / design / packaging, will involve creative or inventive work that may be protected through the IP system. 53
Slide 54: IP and Exports – In raising funds, patents, but also trademarks may be important for convincing investors, venture capitalists, etc. – In agreements with local partners it will be important to clarify issues of ownership of IP rights, particularly if the product will be manufactured, packaged or modified abroad. 54
Slide 55: IP and Exports – Marketing and advertising campaigns will rely strongly on the trademark which, if unprotected, would be much more difficult to enforce. – The timing of participation in fairs may be affected by the timing of your applications for IP protection. 55
Slide 56: IP and Exports Secondly, protecting IP in export markets may help a company to prevent others from imitating or copying the product (or parts of it) without authorization. Thirdly, IP protection may enable a company to access new markets through licensing, franchising, joint ventures or other contractual agreements with other companies. 56
Slide 57: IP and Exports Fourthly, failure to consider IP issues may result in fatal losses if your products are considered to be infringing the rights of others. Exporters often realize the importance of protecting their IP once it is too late …. …. i.e. once they have missed the deadlines for application or once their product or brand has been copied. 57
Slide 58: 10 Points to Remember for Avoiding Common Pitfalls 58
Slide 59: 1. IP Protection is Territorial Example: if you have applied for and obtained patent protection for your innovative product in your own country, you will NOT benefit from similar protection in other countries unless you have also obtained protection in those countries. Exceptions: – Copyright and related rights: automatic protection in over 150 countries – Trade secrets: no formal registration. 59
Slide 60: 2. IP Laws and Procedures are not Identical World-Wide — Example 1: trademark protection use vs. registration — Example 2: first-to-file system for patents vs. first-to-invent system — Example 3: software protection (copyright vs. patents) — Example 4: designs or works of applied art (copyright vs. industrial design protection) 60
Slide 61: 3. Ensure that your product does not infringe IP rights of others: Analyze your “Freedom to Operate” — Example 1: the same trademark may already exist in the export market — Example 2: it is possible that a given technology is not patented in your country but is patented elsewhere — Example 3: you may have a license to use a given technology in your own country, but you do not have the right to use it in an export market 61
Slide 62: 4. There are regional and international protection systems that may be useful for saving time and money and simplifying procedures for applying for protection in various countries. International protection: - Patents: The Patent Cooperation Treaty or PCT - Trademarks: The Madrid System - Industrial Designs: The Hague System 62
Slide 63: — Regional protection systems (may also be used by applicants from outside the regions): - African Regional Industrial Property Office - Benelux Designs and Benelux Trademarks Offices - Eurasian Patent Office - European Patent Office - Office for the Harmonization of the Internal Market (TMs and IDs in EU) - Organisation Africaine de la Propriété Intellectuelle - Patent Office of the Cooperation Council for the Arab States of the Gulf 63
Slide 64: 5. There are Deadlines for Applying for IP Protection Abroad — Once you have applied for patent or design protection in your home country you have a limited period of time (called the “priority period”) to apply for the protection abroad. Once the priority period has lapsed, if you have not filed an application, it will be too late. - Patents: 12 months - Designs: 6 months - Trademarks: 6 months* 64
Slide 65: 6. Early Disclosure of your Product Without Protection is Risky — Example: if you disclose your product to trade partners (e.g. export sales representatives) without a nondisclosure agreement or you publish your new product in a catalogue, brochure, etc. prior to applying for protection you may lose your invention or design to others or find you may no longer protect it. 65
Slide 66: 7. Clearly Define Issues Pertaining to IP Ownership with Partners — Example: if you are developing a new product with another enterprise, establishing a joint venture, or modifying the design, package or trademark of a product, ensure that it is clear (preferably in the written contract) who will be the owner of any IP generated. 66
Slide 67: 8. To License IP in a Foreign Market, the IP needs to be Protected in that Market — Companies seeking to license the manufacturing of their product in a number of markets, should ensure that their IP is protected and is not in the public domain in those markets (e.g. protection has been obtained and has not expired). 67
Slide 68: 9. A Country’s Policy on Parallel Importing may affect a Company’s Export and Pricing Strategy — Parallel importing relates to whether a product bought by another company may be introduced into a different country (where its IP is protected) without the authorization of the right holder. This may, for example, affect a company’s pricing strategy in foreign markets. 68
Slide 69: 10. Prior to launching a product with a given trademark it is important to check whether the mark has undesired connotations or is likely to be rejected in that country. — Example: Ford NOVA, in Spanish “no va” means ‘does not go’. 69
Slide 70: Conclusion — There are ample reasons to make sure that IP issues are duly taken into consideration while developing your export plan and that you take sufficient measures to ensure that: – you are not caught off-guard infringing on the IP rights of others; – limit the opportunities for competitors to free-ride on your firm’s inventiveness and creativity 70
Slide 71: Thank You Guriqbal Singh Jaiya Director Small and Medium-sized Enterprises Division World Intellectual Property Organization 71