Developing IP Portfolio

Developing IP Portfolio

Arun K Narasani

INTELLECTUREA Division of Brain League IP Services

Did you know that Indian businesses pay royalties of more than USD 3 billion and receive royalties of

less than 400 million?

© Brain League IP Services Pvt. Ltd. 321-May-2010

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


A Framework

Innovation

IP PolicyFramework

IPStrategy

IP AnalysisTools

IdentificationAnd

Protection

PortfolioManagement


IP Strategy for Business

● Technology Roadmap● Market needs and competition● Organizational competencies● Investment



● Role of IP● Offensive vs Defensive● Value creation vs Freedom to operate● Profit center vs Cost center



● 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


IP Policy

● IP acquisition● Internal vs external● Collaboration/ joint development

● Exploitation● Commercialization● Licensing● Sale● JV ...


IP Policy

● IP monitoring● Avoiding risks

● Ownership● Role of stakeholders including employees● Employee incentives ..


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?


IP Analysis Tools

● Infringement analysis● Technology landscaping

● Technology trends and patterns● Identify opportunities and threats

● Competitor monitoring● Reverse engineering● Patent updates


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


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


Detailed Taxonomy


Reporting and Trend Analysis


Competitor Monitoring

● Regular updates to technology landscape● Alert services on new competitor IP● Alert services on related technology IP● Reverse engineering


Innovation


Innovation

● Innovation by trial and error● Takes a long time

● Innovation through genius● May not happen at all


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


Innovation largely is incremental


Illustration of the bulb..

● Elements so far..● Enclosed bulb● Filament● Electric supply

Source: “Economics of IP and Innovation”, Pavan Mamidi, Mentor at Brain League IP Services


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 Brain

League IP Services


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 Brain

League IP Services


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!



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…



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!



TRIZ


TRIZ

● Based on the principle that there is a method to madness in engineering innovation

● TRIZ – Theory of Inventive Problem Solving (Genrich S. Altshuller)


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


Levels of inventiveness

Source: http://www.mazur.net/triz


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


Step-by-step process

● Identify problem● Resource requirements, harmful effects

● Formulate problem● Restate in terms of contradictions

● Search for solved problems


TRIZ Method

SpecificProblem

GeneralProblem

SpecificSolution

GeneralSolution


Framework

● Research on more than 300,000 patents● 39 engineering parameters● 40 inventive principles


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.


Identification and Protection


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


Protection

● First to file (India)● Territorial● Filing strategies

● National vs Foreign vs Convention vs PCT


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



● 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



Patent History maintains a record of all

communications with the

patent/trademark office


New alerts may be added or existing alerts may be modified using the

respective tabs .

A query report in

excel can be generated by clicking ‘Run Alert

Query ‘ tab


New alert may be added by specifying the ‘extent’ and frequency of the alert


Integration and other concerns


R&D and IP Integration


Some 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


Questions?

Contact: Arun K NarasaniCEO, Brain League IP Services

[email protected]

mailto:[email protected]

Developing IP Portfolio

Documents

new ip

ip strategy ip policyframework

economics of ip

ip policy ip monitoring

developing ip portfolio

ip portfolio arun

innovation innovation

analysis infringement