CEN/TS 16555-4:2014

SLOVENSKI STANDARD
01-februar-2015
Upravljanje inovacij - 4. del: Upravljanje intelektualne lastnine
Innovation management - Part 4: Intellectual property management
Innovationsmanagement - Management von Intellectual Property
Management de l'innovation - Partie 4 : Management de la propriété intellectuelle
Ta slovenski standard je istoveten z: CEN/TS 16555-4:2014
ICS:
03.100.40 Raziskave in razvoj Research and development
03.100.50 Proizvodnja. Vodenje Production. Production
proizvodnje management
03.140 Patenti. Intelektualna lastnina Patents. Intellectual property
2003-01.Slovenski inštitut za standardizacijo. Razmnoževanje celote ali delov tega standarda ni dovoljeno.

TECHNICAL SPECIFICATION
CEN/TS 16555-4
SPÉCIFICATION TECHNIQUE
TECHNISCHE SPEZIFIKATION
December 2014
ICS 03.100.40; 03.100.50; 03.140
English Version
Innovation management - Part 4: Intellectual property
management
Management de l'innovation - Partie 4 : Management de la Innovationsmanagement - Teil 4: Management des
propriété intellectuelle geistigen Eigentums
This Technical Specification (CEN/TS) was approved by CEN on 27 October 2014 for provisional application.

The period of validity of this CEN/TS is limited initially to three years. After two years the members of CEN will be requested to submit their
comments, particularly on the question whether the CEN/TS can be converted into a European Standard.

CEN members are required to announce the existence of this CEN/TS in the same way as for an EN and to make the CEN/TS available
promptly at national level in an appropriate form. It is permissible to keep conflicting national standards in force (in parallel to the CEN/TS)
until the final decision about the possible conversion of the CEN/TS into an EN is reached.

CEN members are the national standards bodies of Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia,
Finland, Former Yugoslav Republic of Macedonia, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Lithuania,
Luxembourg, Malta, Netherlands, Norway, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and United
Kingdom.
EUROPEAN COMMITTEE FOR STANDARDIZATION
COMITÉ EUROPÉEN DE NORMALISATION

EUROPÄISCHES KOMITEE FÜR NORMUNG

CEN-CENELEC Management Centre: Avenue Marnix 17, B-1000 Brussels
© 2014 CEN All rights of exploitation in any form and by any means reserved Ref. No. CEN/TS 16555-4:2014 E
worldwide for CEN national Members.

Contents Page
Foreword .3
Introduction .4
1 Scope .5
2 Normative references .5
3 Terms and definitions .5
4 Concept and purpose of intellectual property management .6
5 The intellectual property strategy .8
5.1 The role of top management .8
5.2 Interactions with various functions .9
5.3 Competences and skills requirements . 10
5.4 Budget and cost control . 11
5.5 Communication . 11
6 Implementation of the IP strategy . 12
6.1 Traceability . 12
6.2 IP decision making . 12
6.3 Strategic intelligence and risk management . 13
6.4 IPR portfolio development, management and exploitation . 14
6.4.1 Structuring IPR portfolio . 14
6.4.2 Analysis of the potential IPR . 14
6.4.3 Intellectual property exploitation . 15
6.4.4 Acquisition, sale, concession and licensing (-in and -out) of third parties IP rights . 16
Annex A (informative) Authenticated documentation to record IP . 17
Annex B (informative) Innovation and invention disclosure . 18
Annex C (normative) Methods and criteria for the assessment of IP rights . 19
C.1 Objectives and principles . 19
C.2 Strategic criteria. 20
C.3 Qualitative criteria. 22
C.4 Quantitative criteria . 23
Annex D (informative) IP and standardization . 26
D.1 General . 26
D.2 Various strategies of the organization relayed by intellectual property . 27
Annex E (informative) Intellectual property management in a collaborative environment . 28
E.1 Introduction . 28
E.2 Definition . 28
E.3 Scope of collaborative contexts . 29
E.4 Different types of collaboration in the innovation process . 29
E.5 Legal . 30
E.6 Collaboration to create; impact of financing sources on IP ownership, assignment . 31
E.7 General best practices to comply with . 31
Bibliography . 33

Foreword
This document (CEN/TS 16555-4:2014) has been prepared by Technical Committee CEN/TC 389 “Innovation
Management”, the secretariat of which is held by AENOR.
Attention is drawn to the possibility that some of the elements of this document may be the subject of patent
rights. CEN [and/or CENELEC] shall not be held responsible for identifying any or all such patent rights.
This document is not intended for the purpose of certification.
The CEN/TS 16555 series consists of the following parts with the general title Innovation management:
— Part 1: Innovation Management System;
— Part 2: Strategic intelligence management;
— Part 3: Innovation thinking;
— Part 4: Intellectual property management;
— Part 5: Collaboration management;
— Part 6: Creativity management;
— Part 7: Innovation management assessment.
Part 7 is in preparation.
According to the CEN-CENELEC Internal Regulations, the national standards organizations of the following
countries are bound to announce this Technical Specification: Austria, Belgium, Bulgaria, Croatia, Cyprus,
Czech Republic, Denmark, Estonia, Finland, Former Yugoslav Republic of Macedonia, France, Germany,
Greece, Hungary, Iceland, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Norway, Poland,
Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and the United Kingdom.
Introduction
This Technical Specification CEN/TS 16555-4 is linked to CEN/TS 16555-1:2013 (especially to
CEN/TS 16555-1:2013, 11.4).
The effective management of intellectual property, developed as a lever and a tool to support the process of
innovation, is a necessary prerequisite for organizations' development, growth and protection of their
competitiveness. Intellectual property management thus supports, gives rise to and enhances outcomes of the
innovation process.
Intellectual property management includes observation and analysis of third parties' intellectual property, for
instance, for the purpose of achieving freedom to operate for an organization's products.
In order to adequately address intellectual property management, the organization should consider the
following:
— intellectual property strategy, as an integral part of the organization's business strategy;
— intellectual property strategy, as an integral part of innovation management strategy;
— the safeguarding of the potential intellectual property throughout the entire organization;
— methods used to manage and use intellectual property as a support of business strategy, for example
traceability, protection);
— applicable legislation in the territories or regions under consideration;
— costs of obtaining and maintaining intellectual property and possible enforcement costs which could
ensue;
— differences in the contribution of various public authorities to acquiring IP rights and promoting practices
throughout the world;
— methods of protecting ‘know-how’, where appropriate.
In this Technical Specification, the terms intellectual property and intellectual property rights are precisely
defined, and are given a broad and general definition in Clause 3.
1 Scope
This Technical Specification provides guidance to assist an organization to identify, capture, and safeguard
intellectual property, in order to:
— provide organizations with an overview of the fundamental principles of intellectual property management,
in the context of the innovation process;
— promote best practices in intellectual property matters that result in efficiently acquiring intellectual
property, while increasing the organizations’ ability to effectively address intellectual property owned by
third parties.
This Technical Specification is applicable to all types of organization, including the public sector. Special
consideration has been given to the needs of SMEs.
2 Normative references
Not applicable.
3 Terms and definitions
For the purposes of this document, the following terms and definitions apply.
3.1
background
pre-existing IP that a party brings to a collaborative joint venture
3.2
foreground
intellectual property and/or intellectual property rights that are collectively generated by the one or more of
parties within a collaborative joint venture
3.3
freedom to operate
state wherein a product or service is not exposed to IP other than own IPR or licensed-in IPR
3.4
intellectual property (IP)
part of intellectual assets owned by a person or organization as a result of creations of the mind or the intellect
Note 1 to entry: Intellectual property can be either registered (i.e. statutory) or unregistered (i.e. non statutory or
owned by default without any specific registration action).
3.5
intellectual property rights (IPR)
legally protected intellectual property which can be registered and unregistered
3.6
side ground
IP that may be generated by a party during the period of the collaborative joint venture, but specifically
excluded from the scope of the joint venture
4 Concept and purpose of intellectual property management
IP management involves identifying, tracing along time, deciding on publishing and potentially safeguarding IP
on an individual IP level. IP to be managed includes technical inventions, trademarks, software, know-how,
etc.
Core aspects of IP management are:
— identifying and managing IP created within the organization;
— identifying IP held by other organizations;
— managing the organization's IP rights portfolio through the discovery, acquisition, maintenance, trading
and relinquishing of IP rights (see 6.4);
— identifying, mitigating and managing risks emerging from other organizations' IP rights and determining
level of freedom to operate for innovation created by the innovation process. An innovation created by the
innovation process may
...