NATO Science Program and Cooperation Partners
ADVANCE RESEARCH WORKSHOP
Partnership and coordination "East-West" in the sphere
of intellectual property utilization and innovative processes development
Taskent, Uzbekistan - September 8-12, 1997
Abstract. The constitution, or reformulation,
or restructuring of a private professional office dealing with industrial
property, on behalf of third parties, may have different configurations
and structures. It may also give priority to services which, even
if they are apparently similar, may in fact be very different.
There are many factors which come into play; some external, some
internal, and a policy of small but continuous steps is normally
the one which, in the course of time, gives the most satisfactory
and the most intrinsically stable results.
1. Introduction
Friuli Venezia-Giulia is a small region in the far
North East of Italy; its economic (but not political) capital is
Udine. It is bordered by Austria, and now by Slovenia.
The region has a population of about 1.3 million people with a variety
of ethnic roots; the most ancient of these are the Carnians (Celtic
stock) and the Friulians.
The region was the route for many invasions: many northern peoples
crossed through and then spread into the Po valley.
Moreover, in the course of the centuries, it was dominated by various
masters and in the second half of the 16th century it was in fact
repopulated by more than 40,000 people of Venetian, German and Slav
roots.
To this must be added the immigration which, after the Second World
War, brought Istrians and Dalmatians of Venetian or Italian roots
to the region.
This situation has led to the presence in the region of large enclaves
of Slav peoples and people with family relations on the other side
of the border; however, there has always been a dialogue between
the region and the former Yugoslavia, and not only there. This dialogue
was at times open and at times hidden, according to the politics
of the moment, but was always continuous and has always existed.
And so, it was almost a natural consequence, several years ago when
the new political situation over the border (and not only there)
began to be defined, that we were contacted to supply information
and advice by some of those who were beginning, or were intending
to begin, to start up as consultants in industrial property.
The idea of the profession, that is to say, the ideology which decided
those people to exercise this profession, reflected the accumulated
history of the last nearly 50 years, and the desire to redeem the
past rapidly, almost by trying to obliterate it. If on the one hand
the instruments at their disposal were perfectly equal to the ones
we use, on the other hand the cultural approach was very different
and not coherent with what we believe to be the natural evolution
of things. In our opinion it is precisely the cultural approach
which is the fundamental element in setting up an autonomous professional
activity of this kind, which involves and requires a long time and
cannot be done quickly; just as, in the same way, it is inadmissible
and impossible for a stable industrial and/or commercial culture,
as we conceive it in our modern world, to spread rapidly.
Years ago, when the monolithic rigidity of the so-called "Eastern
bloc" was beginning to crumble, we began an interesting working
relationship with some members of one of such offices. These offices
were divided into several operating units, and in the various countries
of "Realsozialismus" their function was to interface with
the Central Office which dealt with Industrial Property.
We had therefore an old acquaintance coming from close contacts,
designed to deal with opposing interests and which had developed
since the beginning of the 70s, with this office and with two of
its operating units.
These people were professionally very well prepared, with adequate
instruments, but they were aware that their approach was marred
by too many years of bureaucratic activity and by an industrial
situation which until then had been too protected to be competitive.
On various occasions we discussed methods of approach and possibilities
for development with these people, and we supplied them with the
suggestions they requested; moreover, we not only provided them
with selected addresses of foreign colleagues, but we also introduced
them personally where it was necessary, so as to facilitate and
improve the contacts.
The contribution we made was facilitated by the industrial history
of the region where we have our main office: in its recent history,
a large part of our local industry was stimulated and protected,
in the hope that it would take root and expand, by public contributions
obtained to deal with the problems caused by a destructive earthquake.
Now that public finances are no longer available, practically only
those companies which had not benefited from them still remain,
at least stably; the others have either changed hands or have disappeared.
We were careful witnesses of this whole story, and sceptical of
the results which, it was hoped, would be obtained, since we did
not see a culture which was suitable to achieve what the political
forces hoped for.
This experience taught us that it is not so much the professional
preparation - although this of course is important and must be adequate
- so much as the ideology and the expectations accompanying the
professional situation, whether it be new or reformulated, which
must be correctly created.
Indeed, those who venture down this road must know that it is unthinkable
to transform, let alone to create, an industrial/commercial fabric
of the bureaucratic-oligarchic type in a short time, and must also
have a clear idea, as far as possible, of the reasonable scenario
which one might hope to see after 15-20 years, which is a normal
period for evaluating the success or lack of success of an initiative.
It is necessary to have this vision, which must be scrutinised and
revised with time, in order to structure, programme and manage everything
at all times, not only according to evolutions taking place, which
if they are too rapid may need to be braked hard or even a quick
return to the past, but also keeping in mind a reasonable scenario
which will come about with time as it evolves, given the philosophy
of life and development which is still dominant and apparently unbeatable.
The quick and not necessarily exhaustive comments which follow reflect
these experiences and the convictions which, as a result, we have
reached.
It is not possible to create a new reality, nor to pass from one
scenario to another simply because there is the political will to
do so, but when most of the leading and supporting actors have substantially
accepted the new situation. This happens in an intrinsic and stable
manner over a long period of time, and the time taken will be longer
when the new situation is very different from the old situation
and the dominant culture.
Sudden accelerations, however induced, lead to damage, disasters
and white elephants.
In the same way, excessive expectations cause disappointment and
errors of judgement.
2. External factors
The development of a professional studio dealing
with industrial property is closely connected with the industrial
and/or commercial development of the area where the studio operates.
There is no opportunity for a different development, whether
the studio gives precedence to work arriving from abroad or
work arriving from the home market.
This kind of professional studio has typical staff functions
and therefore cannot have its own operational autonomy if it
is not correlated to the industrial/commercial autonomy which
exists in the area it serves.
The type and characteristics of the market to which the professional
studio is directed, or to which it intends to be directed, affects
the structure of the studio itself, and the professional resources
which the studio must typically have at its disposal.
The studio which gives priority to work from abroad will prevalently
need to use resources which will allow it to obtain, at a reasonable
cost, the translation of the documents in the official language
of the country and also of communications sent out, in at least
a widely used foreign language, usually English.
The quality and cost of the translation into the widely used
language are a qualifying factor for those who use the services
of the studio and who do not always come into direct and personal
contact with the studio and its capacity and potential.
It should also be remembered that any direct and personal contact,
on most occasions, is necessarily superficial and gives rise
to judgements which are highly subjective and based on impressions
and feelings.
These judgements may also be shown to be wrong when a passive
action of defence, or an active action of attack becomes necessary
and when other professional and non-professional capacities
must be deployed so as to obtain the best possible result.
In addition, this contact is usually made by other professionals
resident elsewhere or by officials in the case of multinationals
which have internal structures to coordinate and control their
collection of patents, all of which characterises these contacts
mainly by the expectations of the potential client.
For this reason, the professional studio which wants to give
priority to the foreign client must take great care of its image
and create an extensive network of personal contacts which are
developed by taking part in international meetings and high
quality presentations, rather than by sending brochures, communications
or other.
Setting up the activity of the studio in this way simplifies
management and requires an average professional and quality
level lower than that required by those who give priority to
the home client; moreover, it will make it possible to have
an income on a repeated basis.
On the contrary, the professional studio which decides to give
priority to the home market must have a great deal of patience
and willingness, not to mention greater and higher quality inner
resources than those which the home market requires from him
at that time, if he intends to work at a high level.
Assuming it is possible, or reasonable, to make estimates in
these matters, one might hypothesise that the abilities which,
at a particular moment, the studio creates in the territory
should be those which the territory is able to understand and
evaluate in the future, not before five/six years, and for some
places even ten years or more; this is the delay which should
be calculated for an invention (for models and trade marks the
average typical delays are different) in the event that there
is an active or passive court case when the contents are particularly
competitive.
Another feature which the decision to give priority to the home
market involves is that there is a slower, more limited development
in terms of staff and perhaps of income, compared with the studio
which chooses the foreign client. This is because development
is closely linked to an intrinsic and natural development (therefore
not a forced development with plants or structures imposed politically
or by multinational companies which leave little or nothing
on the territory), a development which, rather than technical
or technological (in the commercial sense too) requires an extensive
cultural evolution, accepted by at least a large proportion
of the population.
An internal market which gives priority to commercial activities
needs high quality resources in the field of trade marks, falsification
and unfair competition; if the commercial activity deals with
foreign countries, then it needs an extensive network of correspondents
specialising in trade marks and connected activities; this may
also be obtained by using the services of another studio which
has the necessary facilities and by stipulating an agreement
with the said studio. In this way it is possible to offer immediately
a high quality service without running the risks connected with
looking for correspondents or those due to inexperience in dealing
with specific problems.
A market which is looking for or requires technology which is
not available in that market needs from the profesional studio
a structure with means suitable to assist in evaluating the
technology on offer and the connections (not only technical)
which inserting the said technology involves. It also requires
a knowledge of the contractual mechanisms and the techniques
used to mask and avoid contractual obligations which may be
found when it is a question of acquiring technology and know-how.
In these cases, collaboration with studios operating in areas
where this technology is already present may sometimes prove
to be a decisive weapon, in that a deeper and more extensive
evaluation of the proposals can be made, both in technological
and contractual terms.
It goes without saying that in this case the term "technology"
has a very wide meaning, and on different occasions includes
technical, technological and/or commercial components.
It must then be pointed out how the so-called "private
inventor", who is very active especially in markets which
are technologically young and rudimentary, may claim up to 30
to 35 percent of proposed new inventions. If on the one hand
this kind of inventor is certainly a client who does not cause
great problems, does not require a sophisticated type of service
and is ready to pay a little more than entrepreneurs, on the
other hand he rarely brings something which is really worth
protecting; this causes the professional human problems which
are not inconsiderable and not easy to solve if he has a minimum
of "common respect" for his fellow man.
The services which the Public Administration
is able to offer a professional studio dealing with industrial
law (and consequently all commercial and production activities)
have an enormous influence on the characteristics of the structure
which the said studio must possess. (In the following discourse,
the Public Administration which manages industrial property
inside the country and for the State will be referred to as
"State Organisation").
One need only think of the promotional activities and the sources
of documentation and information which the said Organisation
makes available, or does not make available.
Certainly today we have at our disposal data banks which may
be miles away, yet are quite accurate, can be questioned quite
easily, are quite up-to-date and easily accessed, but the question
one immediately asks is: how much use are they? how secure are
they? how complete is the data they supply? what help do they
give in solving the technical and technological problems which
industry has to deal with?
If we think of the relative novelty of these data banks, we
understand how little use they actually are, especially for
technologies which naturally gain credit in industrial areas
which have to be developed and in those which are at the beginning
of their development. In this case then, an extensive, organised
collection of documents which is easily accessible and available
is an extremely important factor not only for the activity of
a professional studio but also and above all for a proper industrial
development with no waste of resources and with a wide range
of options, new solutions and provocations available for planners
and study and research groups.
The better the users know how to question it and understand
it, the more useful this documentation will be.
Otherwise, it will be the professional studio which on the one
hand will have to look for reliable external sources to turn
to and on the other hand will have to take charge of deciphering
the documents.
The external sources will have to have characteristics coherent
with the requirements of speed and cost, and the studio will
have to create a whole series of corollary activities, but not
too many, which are needed by a company which wants to find
a competitive product for itself, not only in economic terms,
and which wants to grow with the product, putting it onto the
market aggressively, improving and defending its own position
also because of the low production costs which are possible
in such areas.
Moreover, the studio will have to be equipped to keep a copy
of the typical documentation which will become available as
time goes by in order to improve its services. However, this
will bring problems of storage and archives, which with time
can become complex and which in any case pose problems of planning,
start-up, management and cost.
And there are not only inventions, there are also trade marks
and models.
Therefore, if a private studio has to equip itself to answer
the clients' requirements completely, supplying also the so-called
"warning" services which are so useful for all, but
particularly for young companies, and if this studio does not
find in the State Organisation a valid contribution, then it
must use substantial resources of its own, and these may not
always be available.
This is only a brief indication of the help which the State
Organisation can give (but there are also many other services
which it can provide) in order to encourage the activity of
a professional studio and facilitate industrial or commercial
development.
Such an Organisation, especially in developing countries, but
not only there, should therefore be responsible on the one hand
for spreading the culture of innovation, and on the other hand
for teaching the basic concepts of industrial law, and the reading
and use of technical documentation in general and also patent
documentation.
One factor which affects the structure and activity
of a professional studio, improving its professional standards
and reducing costs for the users, is an active competition.
Everyone knows what benefits are produced in every field by
healthy, high class competition; in a similar way, even in the
professional field, whatever it may be, competition should always
be welcomed, providing that supply does not outstrip demand.
It goes without saying that the State Organisation, without
prevaricating and without adopting a centralising policy, must
help and stimulate the rise and development of competition proportionate
to the realities of the market; the development of the sector
and its preparedness depend on this and, consequently, so do
the development and reinforcement of the competitive ability
of the companies which use the services of industrial property
and those connected to it and deriving from it.
The geographical position of the studio inside
the country also affects the structure and professional qualities
of the studio; for this reason it is better to site the office
in the main industrial areas, so that, by specialising in the
technical and technological abilities of that industrial area,
the studio will make a positive contribution to its development.
If, on the other hand, the studio is situated near the offices
of the State Organisation concerned, it will give precedence
to administrative activities within this Organisation and also
to the activities of foreign clients - this is because it is
easier to make contacts and do the work, which normally leads
to a lowering of professional standards.
If the studio is divided into different parts, that is to say,
with distant branch offices referring to a central office for
mutual activities, this also causes a lowering of standards,
at least in the branch offices. Normally, in areas which are
developing, such situations are not successfully or naturally
achieved.
Those people working in the branch offices are not normally
able to understand the entirety of the problems connected with
their own work and consequently this work is not normally as
good as it could be for that particular situation or requirement
of the client.
Moreover, not even the central office, which normally manages
relations with abroad, is able to supply a high class service
coherent with the client's needs when the client has been dealt
with by the branch office, since the head office does not know
the client and does not understand the natural requirements
which occur on each occasion.
3. Internal factors
Internal professional resources, as is obvious
from the previous comments, depend on a plurality of factors,
not least of which is the type of client and his technical,
technological and commercial level.
A professional studio which wants to position itself actively
and positively in the territory must have its own professional
resources which cover not only all aspects of industrial property,
but also, sometimes, those connected and derivative resources,
in such a way that it can position itself constructively alongside
the industry, possibly from the moment when the product or market
is first created.
It is evident that certain resources, in certain territorial
or market situations, may not always be profitable, or they
may not always be totally used; however, it is still better
to have them, if the studio wishes to stimulate industrial and
commercial activity, especially when this activity is typified
by very small, small or average units.
Moreover, it must be remembered that, especially in areas which
are still searching for their own technical and/or commercial
identity, the internal resources of the studio will have to
pay particular attention to the evolution of technology and/or
of the commercial activities which are typical of the area served,
in order to supply ideas, advice and inspiration.
Additionally, precisely because of the typical problems of the
clients, at least in the field of inventions, a professional
studio operating in the field of industrial property should
adopt this rule: one type of product/technology, one client.
This rule is essential both when dealing with home clients,
and also when foreign clients are not simply supplied with translations
and administrative management.
Unfortunately, in developing areas this is not always possible,
also for reasons of economic balance and/or the variety of demand;
in this case the professional studio will find considerable
problems of confidentiality and secrecy which are not at all
easy to deal with.
A professional studio can market itself by cloaking
itself in mystery and raining down its services from on high;
otherwise, by promoting itself actively and provocatively in
order to increase its knowledge of the area served and understand
the real requirements of its potential client and help him to
understand too.
In the first case the studio will benefit from the advantages
that the ignorance (in the sense of not knowing, and not being
able to judge and decide) of the potential client will bring,
and also the respect that can induce; these benefits can be
very considerable and can moreover cover up any mistakes made,
or even mask the fact that the professional studio has few or
no professional qualities.
In the second case, which is desirable in developing areas particularly
when these areas are more backward, the promotional and informative
activity helps to continually improve the potential client's
ability to use, interpret and judge everything that is connected
with industrial property. The promotional activity has its effect
on the professional studio too, since it is obliged to continually
improve its own preparation in a continuous cycle of improvement.
This is because the clients, who are able to understand their
own requirements better and to evaluate the professional response
better, will gradually put forward more and more sophisticated
problems and in any case will require correctly formulated answers.
A professional studio which takes this road can do a great deal
for the commercial and industrial milieu where it operates;
it can do this by means of publications, articles in newspapers
and journals, conferences, communications, and above all extensive
and thorough explanations.
Other helpful factors may be connected with research and the
perfection of collective trade marks of quality and/or origin
which become a guarantee for the foreign purchaser of products
marked in this way.
It has been recognised for some time now that
it is not opportune for or in the interest of industries to
organise internal services which manage autonomously, and not
only coordinate, industrial property. These internal structures
are not appropriate due to problems of quality and of cost (normally
the ratio is 1.8:2.3 to one).On the contrary, there is an ever
more urgent need for internal services to correctly file the
Company data and extensive technical documentation.
In order to be efficient with regard to the client and to its
own institutional purposes, the organisational structure must
have its own critical volume of staff, below which it cannot
carry out any consultancy activity correctly.
This critical volume also depends on how the consultancy, often
supplied over the telephone or in quick explanatory meetings,
is organised and managed; for a positive relationship with the
client, it is essential to have a rapid consultancy which replies
to the client punctually and quickly, even if it poses problems
of responsibility and correct interpretation on the part of
the client.
From the critical volume and the relative ratio of exploitation
between hours charged and hours present, compared with those
items of the profit and loss account which are ascribed to the
management per se, we obtain the cost per hour; no service can
be charged less than this figure.
A professional studio operating in the field of industrial property
should have an organisational structure which only needs external
support to deal with its own matters of taxation and for legal
matters. This is a question of confidentiality and to enable
the services to be delivered completely and quickly.
If it wants to have a profit and loss account with a breakeven
point which allows it to face the competition confidently and
at the same time spread over the territory, such a kind of structure
should exploit the hours of presence by no less than 47 to 50
percent.
Many professional studios combine legal activities with their
work with patent titles and trade marks. Although this is economically
rewarding, it does lower the quality of the legal service which
necessarily is limited from a cultural point of view by the
input and by the typical cases of the studio. In developing
areas, or areas where there is little economic development,
this lowering of quality is not perceived as a great problem,
both because of the relative simplicity of the problems posed
by industry or commerce, and also because of a limited number
of cases to refer to.
With time however, as industry develops and as its legal requirements
become more and more sophisticated, it is preferable that the
two activities should be separate and become autonomous: this
is also to avoid conflicts of interest.
An important component of a studio operating with a proper ratio
of price to service is the management of costs which, due to
their heterogeneous nature, complexity and quantity (typical
factors in this kind of activity), must be charged on each separate
occasion and for each individual case; it is evident that, as
a consequence, the invoicing relating to each case is complex
and may bring surprises if not managed properly.
If then this cost management (cost accounting) is connected
to the profit and loss account and other management factors,
an extensive and complex mass of information starts to involve
all the cost centres and becomes available for a cost management
which is economically rewarding and suitable to create, in the
medium term, a forecast similar to the new situation which is
forming up.
Another important component is the management of the due registers;
this is apparently an easy job, but in practice it is difficult
and complex. It affects the clients' interests directly and
deeply over a period of time, and therefore also the interests
of the studio.
This service not only supplies clients with a professionally
useful back-up, it also allows the studio to maintain contacts
with the clients and guarantees a certain stable income from
an operational continuity.
4. Conclusions
A professional studio operating in the field of
industrial property, just as any other professional studio with
a certain number of employees, must be managed, and therefore seen
and located, like any other production unit, irrespective of the
number of employees concerned.
The studio's ability to generate income, its ability to last in
time, its ability to expand and to contribute to expansion, all
depend on the strategic choices made and on the ideology which has
generated such choices; and all this has to be closely linked to
the reality in which the studio is located.
To this we must add that, if it is intended for home clients and
organised to supply those clients with a continuous and extensive
cultural support, this kind of professional studio can help its
clients grow in a dynamic context and with a high competitive ability.
In addition, a professional studio in a developing country, which
wants to give its potential home clients a high class and professionally
advanced service, must preferably establish stable relationships
of trust with other areas, keeping in mind the technological gap
which exists between the two countries, and which should not be
so great that it creates misunderstandings or difficulties in dialogue.
Such a working relationship is positive for the growth and professional
stability of the studio, and moreover it allows the studio to supply
its own territory with information, considerations, evaluations
and, more generally speaking, high level assistance which at the
same time is compatible with the level of knowledge and with the
proper management ability of the new situation, as is culturally
available from the reality which the said studio wants to address.
If the new situation is too sophisticated and developed too quickly,
no matter how new it is, it may be more traumatic and harmful than
an old situation which is deeply rooted and intrinsically experienced;
a great deal of damage has been done, and many cathedrals built
in the desert, by people who have not understood that a gradual
progress, without intrinsically traumatic thrusts, a progress made
in a provocative and stimulating manner, is always more rewarding,
also in terms of stability and the consistency of the results, than
a forced progress which is beyond the natural cultural abilities
of the majority of the group.
