Patent Management Group Project NUS

7/31/2019 Patent Management Group Project NUS

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Project D2:Patent Portfolio Management

- Public & Private Sector

GUAN KOK WUI (HT062976H)

TAN HAN MING (HT063243H)R.KUMARAN (HT053252X)

NAE WIN AUNG (HT063043E)

ME ME HLAING (HT063138E)


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Patent Portfolio - Cost

Cost to file and maintain 100 patents peryear (US$1K per patent + $4K procecuteover 3 years):


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Patent Portfolio - Cost

IBM case study:

Collecting over $1.5 billion per year inlicensing revenue.

Annually in R&D spending $5 billion. Generated over $30 billion worth of OEM

agreements.

Patent need to be able to pay for itself.


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Patent

CopyrightLegal

ProcessInnovation

Management

KnowledgeManagement

Knowledge & Intellectual Property Management

Knowledge Management = Raw resources that support production, otherprocesses, and decision making hence create value

Innovation Management = Processes, networks, and relations used to extractvalue from knowledge resources

Intellectual Property Management = Rights to protect a competitive territoryused to maximize value


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Value Creation

Methods:

Defend and Protect.

Develop and Drive.

Market and Commercialization.


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Value Creation

Defend and Protect:

Successfully defending their claims.

Exclusionary rights to block competition

prevent erosion of market share more sales or higher margins

Suing competitors.


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Value Creation

Develop and Drive:

Build patents into their products or services toachieve,

improve performances improve efficiency, cost reductions, or better time

to market.

expanding or creating new products, services orbusinesses

blocking competition


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Value Creation

Other Methods:

Use patents as collateral for loans.

Work with other company to license its patents, andtake percentage of the royalties as their fees.

Buy non-strategic patents and aggregate thesepatents to create bundles of patents for licensing toother companies.

Placing universities technologies into small andmedium-sized technology firms that need an injectionof new technology to grow their business.


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Business Model

SBC Communications Inc.:

Fortune 500 company.

Business in voice, data, networking, e-

business, directory publishing and advertising. Holds 60% ownership in Cingular Wireless;

serving over 46 million wireless customers.

Leading providers of Internet services.


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Business Model

SBC Knowledge Ventures: Intellectual property unit of SBC Communications Inc. Created to more effectively and strategically manage,

commercialize, grow and extract value from IP assets. Effective innovative licensing program,

successful commercialization of a range of SBC patents,software and trademarks.

greatly expand the SBCs IP portfolio, created robust and valuable asset base for future

commercialization.

Named "Innovator of the Year for 2005" by the

National Knowledge and Intellectual PropertyManagement Taskforce.


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SBC Knowledge Ventures

Patent portfolio management model:

Market and Commercialize.

Adopted organizational approach to capture

the dynamics of patent licensing. In the last two years, completed nearly 30

licensing transactions for patents, softwareand trademarks.


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Organizational Approach

Key functional andskill areas,

Portfolio management Business development

Finance

Legal


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Patent funnel stages and functionalinvolvement:


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Hitachis IP Strategy

Building world- class patent portfolio:


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Patent exploitation matched to businessstrategy:


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Rewards system for employees invention:


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Fostering human resources:


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Mental Model Shift

In the past: inventors novel spirit Explore a breakthrough technology File a patent to protect his intellectual property

At present: entrepreneurial spirit Likely to commercialize his grand technology

Anticipate his seeds as thriving fruits

24Build up technology transfer capabilities


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Dramatic increase in patentingbehavior of academic institutions

Source; http://www.thomsonderwent.com/

The increase in no. patent issued by academic institutions worldwide

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Dramatic increase in patenting behavior of uni

Federal law affecting university patentingThe Patent and Trademark Amendments of 1980; Bayh-Dole Act

gave uni, non-profit institute and small business the rightto retain the property rights to inventions; federally funded research

Increase in organized university technology offices

dramatic increase in the scale and significance of patenting

and technology licensing function at uni

Increased industry funding of university researchtend to invest on uni as an option

Relative importance and generality

vs.No. of patents

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Status of Academic institutions in the

technology context

industries tend to invest and rely on uni

academic research likely to convey open innovation


27play in crucial role in the technology context


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Regional Variation

Governmental context IP rights

Management of TTO VC contribution

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US

21% growth Uni of Cal; manages technology transfer by TTO Uni Columbia New York; STV established in 1982 MIT & Stanford Uni; in between


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EUROPE

CNRS, the largest research organization in Europe Londons Imperial College

the first majority uni-owned TT company in 2006trade on the AIM market of Londons Stock Exchange


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ASIA

drastically increase in Asia; sharp rise of academic patents from China

six out of top ten established the first national TTC at Qinghua Uni by MENETC in 2001 later on, set up TTCs at Uni of Shanghai Jiaotong and Uni of Xian Jiaotong


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Driving Factors

the growth of patents lead to the commercialization

from the academic context to industrial context innovation policies of respective regions

Bayh-Dole Act

researcher and universities rights upon patent in Denmark Employee inventions Act in Norway and Germany Universities owned the patent in Great Britain

join the WTO in 2001 enforce on IP rights

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Technology & Knowledge Transfer

In Academic Context

teaching; publications; studentsFrom Academic to Commercial Context

licensing of intellectual propertyspin-off or start-up companies

Stanford University started licensing program since 1970generated total income 35 million; operating budget 2.4 million in fiscal year 1999-2000

4300 university start-ups since 1980over 600 companies spun-off from Cal Tech

Acquisition, Management and Exploitation of IP are major differences btw US & the rest

Industrial collaboration Uni & RI have mandate to commercialize after Bayh-Dole law Uni & RI have to make sure enough resources to continue research

for students Uni & RI have to respond to the needs of local, state economies and

nation as a whole

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Role of VC in Technological Commercialization

VC investment become a key indicator The advent of globalization the opening up of markets the ability to trade freely

VC history American Research and Development (ARD) Designed to focus on technology-based spin-outs from MIT

To commercialize the wealth of military technologies developed in World War Ii

Trend of Uni & RIVenture capital-backed spin-outs as mechanismTo commercialize early-stage technologiesTo produce the greatest returns for the instituion

Majority of today incumbents which started with VCYahoo!, GoogleHP, SUN Microsystems, CiscoNetscape, Lycos

It thrives on opportunity!

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E-INK

The inventions that we are bringing to market are fundamental platformtechnologies that will have far-reaching impact on how our society receivesits information.

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Industry First RoundMedia

RoundPhillips Round Toppan Round

Toppan Round

#2Recapitalization Intel Capital Round

$16M-1998 $40M-1999 $7M-2000 $5M-2001 $25M-2002 $11M-2004 $(N/A)-2004

Media Hearst HearstLEspressoMcClatchy

Universal-

Vivendi

Gannett The

Interpublic

Group (TIG)

Creavis

GMBH

HearstLEspressoMcClatchy

Universal-Vivendi

Gannett

TIG

Creavis GMBH


Universal-Vivendi

Gannett

TIG

Creavis GMBH


Universal-Vivendi

Gannett

TIG

Creavis GMBH


Universal-Vivendi

Gannett

TIG

Creavis GMBH


Universal-Vivendi

Gannett

TIG

Creavis GMBH

Electronics Motorola Motorola

Lucent

Motorola Lucent Motorola Lucent Motorola Lucent Motorola Lucent Motorola Lucent

Chemicals Degussa-

Huls

Degussa-Huls

Cabot

Degussa-Huls

Cabot Air

Product

Degussa-Huls

Cabot Air

Product

Degussa-Huls

Cabot Air Product

Degussa-Huls

Cabot Air

Product

Degussa-Huls Cabot

Air Product

Display Philips Philips

Toppan

Philips

Toppan

Philips

Toppan

Philips

Toppan

Financial Atlas

AppliedSolstice

Atlas Applied

Solstice

Atlas Applied

Solstice

Atlas Applied

Solstice

Atlas Applied

Solstice

Atlas Applied

Solstice

Atlas Applied Solstice

Source: E-Ink company documents

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VC Involvement

First round of financing ($16 M in 1998) Moved aggressively towards protecting IP Acquired, licensed and filed 26 patents

Media round ($40 M in 1999) Phillips round ($7 M in 2000)

Toppan round #1 ($5 M in 2001) Toppan round #2 ($25 M in 2002) Recapitalization ($11 M in 2004) Intel Capital round ($NA in 2004)

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Successful Milestones

Launched Sony Reader into the market on 1 Nov 2006applied E-ink display technology

Polymer Vision; the Most Innovative Technology Award at theGSM Associations 2007

utilized E-inks high resolution flexible electrophoretic imaging film

Motofone F3 GSM; the Best Ultra Low Cost Handset Awardpowered by E-ink segmented display

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Strength in IPStrength in IP Portfolio

Ranked as the most third innovative company in theelectronics and instrument industry by the Patent BoardScorecard

Granted more than 1000 patents Pending for inventions based on E Inks electronic paper

displays Broad applicability in fields like organic electronics and

semicom: Recently awarded claims on techniques to print semiconductor Practicle films, pattern organic semiconductors and produce

organic dielectric films at low temperatures

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Insights

Patents can not be performed into a successful innovation per se Two crucial factors to be successful commercialization

Significant financial investmentNurturing the technology

Build patents portfolio with strategic management

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Academia

Science

"ValleyDeath"

Products

Industry

Collaboration / Commercialization


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Effective Patent Portfolio Management

Maximize value of IP assetsProtect core technologies

Create barriers to entry

Create bargaining chips for cross-licenses,

counter-suits or other business transactions

In reality its difficult to achieve good PP. Eg:

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IntangibleBenefit

cause-and-effectrelationship

Temasek Laboratories


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Patent portfolio

Effective Patent Portfolio Management

1st level filter

2nd level filter

3rd level

filter

Low-value patents in low-

potential areas

Sell

Donate / Abandon

Low-value patents in high-potential areas

Cross-license

Sell

High-value patents in high-

potential areas

Patent Licensing / Sale

Commercialize

Infringement relief

Patent portfolio

50 55 %patents

40 45 %patents

3 5 %patents


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Effective IP Management

Preventing premature disclosuresAssuring proper ownership and

inventorship of inventions

Filing priority patent applications to meet

the legal requirements for disclosure

Attractive as possible to potential license

Involvement and diligence by the

technology transfer office and theinventors

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NDA

TTO & inventor


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Academia

Knowledge

Education

Research

Service Academic Freedom

Industry

Knowledge for Profit

R&D

Marketing

Sales Confidentiality and

Trade Secrets

IP STRATEGIESIP STRATEGIES


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AcademicCommunity

CommercialWorld

IP Systemas a bridge

Decide what researchMotivated by curiosityAttract acclaim of peers

Prompt publication

Collaboration

Profitable productsFind new marketsWin competition

Initial secrecy

Knowledge

R&D Funding

FundingEquipment DonationsStudent and professorial employ

ConsultingShared Knowledge

Competitive AdvantageSource of Employees

Long TermShort Term

Research ResultsExt of tech competenciesCutting edge research

University-Industry Partnerships


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Commercialization

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Commercialization

University Industry

License

Fee/Information

Flow

Practical

Application / R&D

Information Flow

/Acquisition of

Patent

Commercialization

Researc

h

Acquisition of

Patent for R&D/

PracticalApplication

Patent Licensing

(Technology

Transfer)

Temasek Laboratories


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MythsMyths

They are perceive to know everything.

They will steal my technology.

They wont take me seriously.

Big companies are impossible to deal with.

They do not have respect for confidentiality.

They buy or steal what they need.


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University ConcernUniversity Concern

Concerns that University-Industry Partnerships canNegatively impact a culture of Open ScienceReduce the quantity and quality of basic researchLead academics to spend less time on teaching and

service

RealityIndustry and Universities researchers rarely

collaboratedPatents from funded research were generally held

by Governmentand not used

Companies attracted University Graduates but didnot fund much University Research

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Technology Transfer in U.S.Research Universities

Mission of University Technology Transfer/LicensingOffices

To transfer research results to commercial application forpublic use and benefit

The Biggest Myth to dispel is that university engage

in technology transferfor the moneyfor the money


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Dispelling Common Myths

MYTH #1

The new emphasis on technology transfer is

diverting universities from their main mission ofeducation and research.

In reality

Historically transferred technology through thetraditional methods of publication, the training of

students and extension programs


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MYTH #4

Collaboration with industry invariably creates

financial conflicts of interest for academics

Reality

Universities conflict of interest policies ensurethat the personal financial interests of facultydo not improperly affect the content, quality ortimely release of research


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Propose Business Model- Capturing value from technology

Technology(patent)

current

business

licensingSpinOff

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Business model vs. IP

Business modelCore productCore competencies

Intangible asset

tangible asset

IP

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Different business models

Xerox 3Com Adobe Metaphor

Market segment Corporate and

government market

Corporate PC market PC, MAC, and laser

printer market

Knowledge workers

in corporations

Value Proposition High-quality copies at

a low monthly lease

rate

Establishes file and

printer sharing

between IBM PCs

Enables output of

richer document types

Enables nontechnical

queries of corporate

databases

Elements of Value

Chain

Developed entire

copier system,

including supplies,

sold through a direct

sales force

Focused on Ethernet

protocol and add-on

boards

Focused on supplying

fonts to laser printer

manufacturers and

software firms

Developed and sold

entire systems, from

hardware to software

to distribution

Defined Cost and

Margins

Modest profit on

equipment, high profit

on supplies, of per

click

High volume, low unit

cost

Very high fixed cost,

very low variable cost

High fixed costs, high

margin, low unit

volume

Positioned in Value

Network

First mover in dry-

copy process; did not

require or pursue

partners

Set the IEEE 802

standard; utilized PC

distribution channel

Defined the PostScript

standard for scale

fonts

No third parties of

complementors

utilized

Formulated

Competitive Strategy

Competed on

technical product

quality, product

capability

Compete on standard,

new channels

Strong network

externalities, high

switching costs

Compete on superior

technology, usability

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What D2 is!

A start-upRelatively disruptivetechnologies

Potential for radicalinnovation

Potential for disruptiveinnovation

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D2s business model

Value proposition

Market segment

Value chain

Cost structure

Value network

Competitive strategy

Best solution; high performance; best quality

High-end

Focus on core product; outsource the rest

Modest profit from core product; licensing as anotherpayment mechanism

Pave the way for complementary products on the supply side

Switching from the high-end to low-end market

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D2s business model

Value proposition

Market segment

Value chain

Cost structure

Value network

Competitive strategy

Good enough solution; inferior performance

Low-end

Focus on core product; outsource the rest

Small profit from core product;

Pave the way for complementary products on the supply side

Disruptive to the high-end by low-end market

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Game 1

Complementors(Small or big firms)

Customers(High-end)

Suppliers

(Outsourcing)

D2Start-up

Competitors(Incumbents)

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D2s exercises

Analyze patents which have potentials that relativelydisruptive to current innovation offer buying or selling those potential patents

Engineering IPMOT

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Patent Management Group Project NUS

Documents