Capacitance Creates a Watershed in Purification

E P O S M E C A S E S T U D I E S | V O L T E A

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Managing IP

In addition, Voltea also focused on operations associated with IP exploitation such as patent evaluation, competitor watches and FTO analyses. IP evaluation was particularly important, since the value of the company was mostly at- tributable to its IP, especially during the early years. Voltea succeeded in growing and exploiting its portfolio as it moved the company from phase 1 to phase 2. The direct results of these changes included the development of the patent portfolio in terms of country and scope. The pace of patenting increased rapidly from the years 2006–2010 (phase 1) to the years 2011–2016 (phase 2). This supported the company’s expansion in terms of markets (especially the US and European countries) and applications. As far as Voltea is concerned, the Unitary Patent is likely to reduce IP management costs such as those relating to renewal fees and translations. It may lead to streamlined administrative steps for patent protection in Europe be- yond grant, where the maintenance of files and fees for individual countries is no longer required. The Unified Patent Court (UPC) will establish a harmonised definition and interpretation of patent claim scope throughout Europe, which will bring clarification, simplification and visibility when it comes to deciding on patent protection (similar to the US to a certain extent), leading to a less fragmented protection of Voltea’s products and technolo- gies in Europe. In retrospect, if the Unitary Patent had existed when the company transitioned from phase 1 to phase 2, it would probably have helped the company avoid any difficulties regarding the country selection for European patent protection. Scenarios for the future

To respond to these new challenges and growing complex- ity, Voltea needed to expand its IP portfolio in terms of scope and territorial coverage, and to adapt its IP manage- ment accordingly. During phase 2, Piotr Dlugolecki took over as R&D and technology manager. He introduced new systems and processes for senior management to improve day-to-day in-house IP management in co-operation with external IP consultants regarding decisions such as whether or not to file, what to do at the end of priority periods, responses to office actions, payments, and so on. Voltea focused primarily on the aspects relating to IP cap- ture and protection. In order to generate patentable inven- tions internally, it organised innovation workshops aimed at protecting promising technology applications. Point-of- entry and point-of-use systems are two prominent examples of applications with high-impact mass-market potential. Both were developed in co-operation with leading partners, who were then still under joint development contracts. Other IP management processes related to keeping note- books, disclosing inventions, carrying out patent searches, documenting know-how and recording copyright had been introduced as well.


IP professionals need new and advanced skills and tools (e. g. commercialisation and licensing expertise) when it comes to strategic IP management, if they want to keep an active role in the future.


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