مدیریت مالکیت معنوی در بخش صنعت خدمات مالی: یادگیری از سوئیس

Legal protection strategies are still a relatively new phenomenon in emerging business fields like the service industry sector. Especially patents are considered novel as intellectual property means for protecting service innovations, which particularly accounts for the Knowledge Intensive Business Services (KIBS) sector. This contribution focuses on the opportunities and risks of managing intellectual property in the financial services industry sector by empirically analysing the leading reinsurance company Swiss Re. Swiss Re is considered to be one of the first (re-) insurance organizations worldwide that created its own patent department and today carries out a consistent legal protection strategy. The in-depth single-case study design is based on a triple iterative research process. The paper concludes with a success factor model for managing intellectual property to protect service innovations in the financial services industry sector.

There is currently a strong trend towards service innovations, as value-creating activities of an organization are increasingly based on information technology and services (Hipp, 2000). However, within the emerging business fields of the service industry sector, legal protection strategies generally still are a novelty. This especially accounts for the knowledge intensive business services (KIBS) sector (Miles et al., 2000). A very exemplary field in this context is the financial services sector which also includes the business to business activities of banks and insurance companies. The legal protection of service innovations in the financial sector by patents is a relatively new phenomenon, especially for European organizations. Especially Anglo-American and Japanese entities serve as examples of predecessors that incorporated intellectual property into business activities (Gassmann and Bader, 2004). At the European Patent Office 75% of patent applications in the bank and (re-) insurance industries originate from companies in Anglo-Saxon countries like the US, Canada, and Great Britain (Fig. 1). Only 10% of all patent applications come from European organizations. Despite the fact that the European Patent Office is more restrictive with respect to the protectability of new business models, it is clearly evident that US-based service organizations are more patent aware. Full-size image (27 K) Fig. 1. Patent applications in the financial services industry sector in Europe. Source: Gassmann and Bader (2006). Figure options From a business perspective, a specific problem that comes with (re-) insurance products is that these are often characterized as possessing a relatively easy imitativeness. Competitive advantage can thus be achieved by emulation of existing products. This is often described as the second-mover advantage. Furthermore, first-mover activities, e.g. the introduction of a new product on the market, are considered to involve high-risk components and hence lack attractiveness. Financial service providers and insurers therefore are increasingly becoming aware of the opportunities created by patenting innovations to take advantage also of first-mover activities. They are now devising new methods to protect their competitive advantage: business models and software solutions are more patentable, something that has already become common practice in the US and Japan. Typical areas of concern for insurance patents include risk transfer schemes, e-business solutions or pricing instruments, systems and methods for user authorization, verification and audit systems, devices and process for calculating options, and internet-based insurance products. In the following table, the published patent applications and prominent patents of insurers and reinsurers are displayed (Table 1, as of October 2003). According to the data, Japanese insurers are strong in this area, occupying the first three places. It is evident from this, that other than Converium, ERC and Swiss Re, no other reinsurer has produced patents internally. The world's second largest reinsurer Munich Re (Münchner Rück) has no published patent applications. Additionally, the table also specifies Swiss Re's as of yet unreleased patent applications. The Swiss Re data shows how sizeable the difference is between published patents or patent applications, and unpublished patents. This means there should be probably many more applications in the pipelines of the other companies, too, that are to become published, until some time in the future. Table 1. Published patent applications of large insurance companies (Re-) insurance company Published patent applications Tokio Marine and Fire 76 Sumitomo 49 Aioi 38 AIG 18 Aiu 11 Swiss Re 9 (30 filed patent applications) Progressive 5 EQE 4 Prudential 4 Allstate 4 ERC 4 Zurich 3 eReinsure.com 3 Toshiba 2 Ace 2 Chubb 1 Converium 1 Source: Swiss Re, Intellectual Property Report 2003 ( Swiss Re, 2004a). Table options A large number of patents in this industry can be attributed to original patent holders and large companies that have many years of patent experience, however, characteristics are not often associated with the (re-) insurance industry. This situation is likely to stem from the new economy hype from a few years ago, when the dot-com companies were vying for patents on software and business practices. They were doing so to make their financial situation more attractive to investors (Cuypers, 2003).

The financial services industry sector is marked by companies that can look back upon long and storied histories. Now, this industry is confronted by prospects and risk scenarios relating to legal protection strategies, specifically based on patents. This trend dates back to the mid-1990s in the US and Japan. Anglo-American and Japanese entities served as the predecessors of financial services providers that are incorporating the management of intellectual property into their business activities. To a large extent, European companies have neither recognized the major risks relating to intellectual property, nor have they taken countermeasures or actions to protect their own prospects. The intellectual property strategy of the reinsurance company Swiss Re has the following aims: 1. risk reduction; 2. freedom of action; 3. establishment of own patent portfolio; 4. licensing income; 5. design access.2 Swiss Re has furthermore identified the following emphases for future intellectual property management: • greater sensitivity to intellectual property interests in the organization; • Swiss Re is pursuing an open license policy and seeks to work cooperatively with third parties instead of monopolizing these areas; • maintenance of relationships with banks and assurance firms, in particular in the area of development of computer-implemented inventions in Europe (“software patents”); • independent formulation and planning of patent claims, in particular the applications made to the European Patent Office. The focus for patenting is on business models that run off computer systems, for example the e-business-based reinsurance products. Their characteristics have not necessarily been associated with (re-) insurance products. Whether a patent application is filed or not depends on certain criteria, including novelty, identification of infringement, usefulness for third parties, and relevance to Swiss Re. The country selection focuses on Europe, the USA, India, and China; with the latter two being relevant emerging markets with many inhabitants and potential customers. The Swiss Re intellectual property activities are internally organized as central GIP. This central entity is supported by decentralized, part-time DIPO. Swiss Re considers it essential to integrate larger projects into the project management organization, which is of paramount importance when seeking inventions. The DIPOs’ responsibilities are focused on smaller projects and local development with respect to identification of potential patents and risk of infringements, identification of inventions, and identification of businesses and opportunities. Legal activities are largely outsourced to external law firms. Swiss Re has an internal patent awareness program with monetary incentives on four levels (disclosure, application, issuance, licensing). As far as remuneration is concerned, there are non-monetary incentives that reflect the inventors’ cultural and regional backgrounds. Swiss Re follows an open licensing policy. The company is becoming very experienced and successful in out-licensing technology to third parties. The first approaches are focused on small external business entities that are interested in in-licensing technology. Based on the in-depth case study of Swiss Re, for managing intellectual property in the financial services industry sector the following success factors are summarized as follows ( Table 3): 1. Support from top and middle management While support from the top management and the patent department is vital, much depends on the interactions that middle managers and employees have with third parties. If these parties are dedicated and loyal to the company's intellectual property, inventions can be protected before secrets reach the general public. 2. Awareness program A sensitization with regard to the topic of intellectual property is necessary. A well-arranged awareness program, one that reaches as many employees within as many years as possible, can create this awareness. Such measures should be implemented unconditionally over the long term. This is due to the fact that in industries such as the service industry sector with dominantly only a short tradition or ignorant of patents, active interaction must be launched for counteraction. 3. Incentive systems for inventions The introduction of an incentive system for inventions is a proven aid to help support a patent department's activities. An important point here is that in order to assess the workforce's view of inventions, it is necessary to understand their underlying perceptions. Without an effective incentive system, or a proper perspective on inventions, there is a danger that inventions will not be declared or will be done so too late. This can happen even if there is a general understanding at the firm about the importance of intellectual property. 4. Identification of inventions The identification of knowledge residing in the employees’ minds will largely depend on the presence of informal contacts within the organization. Subsidiaries can use integrated processes and mechanisms to support projects, which helps to facilitate their identification. 5. Local investigative and discovery partners Another important area of knowledge identification comes from middlemen, e.g. the DIPOs at Swiss Re, who are found between the business units and the patent department. There should be a set of criteria established for this position, including: interactions with employees, market knowledge, understanding of intellectual property issues, and sensitivity towards innovation and inventions. In organizations where there is no concentrated R&D department and potential inventors are scattered throughout the company; companies like Swiss Re rely on decentralised intellectual property officers to identify and isolate hot spots within the organization. 6. Legal protection of value positions Analyze thoroughly service innovations with respect to service components’ leverage in the value chain and with regard to their legal protectability—independently of constraints concerning national differences in patentability. 7. Establishment of a defence position A large and widely diversified patent portfolio is the best defence against intellectual property attacks from third parties. One's bargaining position can be greatly strengthened and enhanced with such an arsenal. There is, for example, the option to conclude cross license agreements. 8. Sustainability of intellectual property activities and sufficient budget The establishment of an internal intellectual property portfolio is a time-consuming and complicated matter; especially in the service industry sector. Therefore, it is advantageous if the intellectual property department can absorb some of the operating costs, and takes a leadership role in the application and process phases of the patent application process. 9. Use of external expert know-how The presence of skilled and experienced external patent agents is vital, especially for those organizations that have little experience in dealing with intellectual property. Companies that are looking to take initiative and seize the opportunities present in the financial services industry sector, should heed some advice. In an industry that does not handle intellectual property in an expedited manner, sustainability and cultural factors inside the firm will play determining roles in the success of an intellectual property management program. Table 3. Success factors for managing intellectual property in the financial services industry sector Success factors for managing intellectual property 1. Support from top and middle management; 2. Awareness program; 3. Incentive systems for inventions; 4. Identification of inventions; 5. Local investigative and discovery partners; 6. Legal protection of value position; 7. Establishment of defence position; 8. Sustainability of intellectual property activities and sufficient budget; 9. Use of external expert know-how. Table options From a wider perspective, the overall importance of intellectual property for companies should be understood and well communicated. In the service industry sector and particularly in the (re-) insurance and banking industry sector, software solutions and business practices have a strong business relevance. Only time will tell what the current various differences in legal protection for processes, business methods and software-related inventions in Europe, Japan and the US will lead to in practice. The security of a company's research and development investments in intellectual property will become of increasing strategic importance for companies in the financial services industry sector. Increasingly protected service innovations will lead to imitation and second-mover advantages being reduced if not terminated. Furthermore, legal protection instruments anticipate the potential for financial services enterprises to open up new markets. One could thus expect that it might still take some time for patent portfolios to grow, but that technology transfer and licensing models will find entrance to the financial services industry sector.