Developing IP Portfolio, By Arun Narasani
Nov 02, 2014
Developing IP Portfolio involves developing a framework using a set of discrete techniques and tools. This presentation provides a framework and talks about the need for IP Policy, IP Process, analysis tools, sustainable innovation process, portfolio management. The presentation also introduces TRIZ and drives the fact that innovation can be institutionalized.
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Did you know that Indian businesses pay royalties of more than USD 3 billion and receive royalties of
less than 400 million?
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Agenda
● Sustainable innovation
● Business Goals and IP Strategy
● IP policy/framework and process
● Tools for guidance and analysis – infringement analysis, competitor analysis, tech landscaping …
● Innovation frameworks – TRIZ, an example
● Identification and Protection
● Protection considerations/strategies
● Portfolio management
● Integration
● Myths
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A Framework
Innovation
IP PolicyFramework
IPStrategy
IP AnalysisTools
IdentificationAnd
Protection
PortfolioManagement
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IP Strategy for Business
● Technology Roadmap
● Market needs and competition
● Organizational competencies
● Investment
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IP Strategy for Business
● Role of IP
● Offensive vs Defensive
● Value creation vs Freedom to operate
● Profit center vs Cost center
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IP Strategy for Business
● Offensive – sticks and carrots
● Aggressive and focused R&D
● Out-licensing
● Defensive – freedom to operate
● Protection of business interests
● Internal R&D or in-licensing
● Stopping others from acquiring IP
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IPStrategy
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IP Policy
● IP acquisition
● Internal vs external
● Collaboration/ joint development
● Exploitation
● Commercialization
● Licensing
● Sale
● JV ...
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IP Policy
● IP monitoring
● Avoiding risks
● Ownership
● Role of stakeholders including employees
● Employee incentives ..
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IP PolicyFramework
IPStrategy
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Need for IP analysis
● Where do we start in developing IP portfolio?
● Which competitor IP can potentially block us?
● Which IP is required for freedom to operate?
● Which IP will be useful to block our competitors?
● Can we develop new IP that can improve your market presence?
● Is there IP that we cannot develop internally? If so, can we license such IP?
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IP Analysis Tools
● Infringement analysis
● Technology landscaping
● Technology trends and patterns
● Identify opportunities and threats
● Competitor monitoring
● Reverse engineering
● Patent updates
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Infringement Analysis
● Conduct patent search
● Classification/ assignee/ key words
● Identify relevant patent(s)
● Claim by claim and element by element analysis
● Literal infringement
● Infringement by Doctrine of equivalence
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Technology Landscaping
● Analyzing technology segments
● Preparing detailed taxonomy
● Patent search
● Classification / assignee / key words
● Patent screening and analysis
● Detailed reporting to analyze trends
● Identify opportunities and threats
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Detailed Taxonomy
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Reporting and Trend Analysis
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Competitor Monitoring
● Regular updates to technology landscape
● Alert services on new competitor IP
● Alert services on related technology IP
● Reverse engineering
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IP PolicyFramework
IPStrategy
IP AnalysisTools
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Innovation
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Innovation
● Innovation by trial and error
● Takes a long time
● Innovation through genius
● May not happen at all
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Innovation is incremental
“If Edison had the task to find a needle in a haystack, he would not lose time determining the
most probable location of it. He would immediately, with the diligence of a bee, begin picking up straw after straw until he found the
object of his search”- Nicola Tesla
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Innovation largely is incremental
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Illustration of the bulb..
● Elements so far..
● Enclosed bulb
● Filament
● Electric supply
Source: “Economics of IP and Innovation”, Pavan Mamidi, Mentor at
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So what came next?
● The art of incremental invention…
● Sequential invention/innovation is the practice of drawing upon historical experience and improving upon it…
● How?
● Tinkering with the past;
● Distorting the past;
● Bearing the social and economic cost of distorting the past;
● Institutionalizing and respecting the madness that goes into distorting the past!
Source: “Economics of IP and Innovation”, Pavan Mamidi, Mentor at
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Then came the diode..
● Someone played around with the past..
● His name was John Ambrose Fleming
● Basically tinkered around with the electric bulb, and introduced a new element – a ‘plate’…
● This became the basis for the phenomena of rectification in electric theory! Source: “Economics of IP and Innovation”, Pavan Mamidi, Mentor at
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Then someone else came along…
● He tinkered around with the past even further!
● He introduced another new element – a small wire mesh between the filament and the plate (and could control the flow of electrons between them);
● This became the triode – which does something dramatically different from either an electric bulb or a diode – amplification!
Source: “Economics of IP and Innovation”, Pavan Mamidi, Mentor at
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Then someone else came along…
● They tinkered around with the bulb and all it’s elements….and distorted it even further.
● They were ‘mad’ too!
● They incorporated the functionality of a triode into a silicone medium – thus was born the transistor…
Source: “Economics of IP and Innovation”, Pavan Mamidi, Mentor at
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Once last time for the presentation….
● Not satisfied with history, some more mad people engaged in the process of creative destruction of the past…
● They incorporated hundreds of these transistors onto one common silicon chip – which later gave birth to the digital world and the silicon valley;
● To which you in particular owe your livelihoods today!
Source: “Economics of IP and Innovation”, Pavan Mamidi, Mentor at
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TRIZ
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TRIZ
● Based on the principle that there is a method to madness in engineering innovation
● TRIZ – Theory of Inventive Problem Solving (Genrich S. Altshuller)
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TRIZ
● Systematic, step-by-step procedure
● Broad solution space to direct to ideal solution
● Repeatable and reliable
● Access to body of inventive knowledge
● Add to body of inventive knowledge
● Familiar enough to inventors
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Levels of inventiveness
Source: http://www.mazur.net/triz
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Principles of TRIZ
● Ideality
● Systems evolve towards increasing degrees of ideality: useful vs harmful effects
● Resource use
● Use of available resources
● Contradiction
● Identifying contradictions
● Repeating patterns
● Repeating patterns of problems-solutions
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Step-by-step process
● Identify problem
● Resource requirements, harmful effects
● Formulate problem
● Restate in terms of contradictions
● Search for solved problems
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TRIZ Method
SpecificProblem
GeneralProblem
SpecificSolution
GeneralSolution
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Framework
● Research on more than 300,000 patents
● 39 engineering parameters
● 40 inventive principles
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Leveraging Ideas
● 90% of raw ideas never go beyond the generator
● 3% of remaining 10% obtain sufficient backing
● Failure to attract a champion
“Developing communities of innovation by
identifying innovation champions”, Elayne
Coakes and Peter Smith.
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Caselet – Envelope
Improve loss of time vs
Deterioration in reliability
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Area of moving object vs
Temperature
Caselet – Shower Head
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Innovation
IP PolicyFramework
IPStrategy
IP AnalysisTools
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Identification and Protection
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Identification
● Conduct regular audits
● Technology audit
● Process audit
● Review outcome of innovation exercises
● Identify potential IP based on business goals
● Perform risk analysis
● Ensure confidentiality of information
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Protection
● First to file (India)
● Territorial
● Filing strategies
● National vs Foreign vs Convention vs PCT
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Innovation
IP PolicyFramework
IPStrategy
IP AnalysisTools
IdentificationAnd
Protection
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Portfolio Management
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Portfolio Management
● Identifying IP
● Builiding a portfolio of IP towards business goals
● Working on improvements
● Licensing strategies (In and Out)
● Competitor monitoring
● Maintenance of existing portfolio
● Issued and in-process
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Portfolio Management
● Patent process: 3-4 year process
● Filing
– Provisional and complete
● 18M publication
– Early publication
● Examination
– Multiple iterations of examination reports and responses
● Recordal
● Corrections
● Issue
● Clarifications from patent office
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Innovation
IP PolicyFramework
IPStrategy
IP AnalysisTools
IdentificationAnd
Protection
PortfolioManagement
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Integration and other concerns
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R&D and IP Integration
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Innovation
IP PolicyFramework
IPStrategy
IP AnalysisTools
IdentificationAnd
Protection
PortfolioManagement
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Take aways..
● IP is first techno-commercial
● The process may be legal
● IP is real and is here to stay
● IP is essential and not a necessary evil
● IP is value and not cost
● IBM, TI, Cisco, ARM, Intel, Motorola..
● Innovation can be streamlined and IP can be generated through that process
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