making innovation pay: creating a valuable portfolio · 2.building the patent portfolio...
Post on 26-Aug-2020
1 Views
Preview:
TRANSCRIPT
1
Making Innovation Pay: Creating a Valuable Portfolio
The Web Conference Series for Corporate Counsel
February 14, 2007
To ask a question using the question pane
Enter your question into the text area and click Ask.
The presenter will address your question shortly.
2
To answer a polling question:
When a poll is posted…– Click the radio button next to your response choice.
Need assistance?Contact Live Meeting Customer Support
– US / Canada: 1-800-893-8779– International: +1.971-544-3222– Toll Free International: 00.800.9522.3000– Email: lmhelp@microsoft.com– Web: www.livemeeting.com/support
3
Addressing Trends…Sharing Solutions
2006 Year in Review book available
– Email webconference@foley.com
– Visit www.Foley.com/webconference
Today’s Moderator
Nat Slavin
ModeratorLegal Industry ConsultantFormer Publisher of InsideCounsel
4
Today’s Presenters
Stephen P. FoxOf Counsel, Foley & Lardner LLP
Former VP and Deputy General Counsel for IP, Hewlett-Packard CompanyMember of Foley’s Intellectual Property DepartmentExperience with all aspects of strategic IP counseling, licensing, patent procurement and patent litigation
Today’s Presenters
Harry GwinnellVice President and Chief IP Counsel, Cargill,
Incorporated
Joined Cargill in 2001Former patent examiner with the U.S. Patent and Trademark OfficePresident of the Intellectual Property Owners Education Foundation
5
Making Innovation Pay: Creating a Valuable Portfolio
The Web Conference Series for Corporate Counsel
February 14, 2007
IP Trends Around the World
All IP is more importantPatent, Trademark and Copyright power is expandingIP owners are more aggressiveCustomers are more aggressiveCounterfeiting is more prevalent
There is a need for: -proactive strategies
-managing IP risk
-leveraging IP assets
6
Finding your Intellectual Property
Explore your business model and look at Complementary AssetsLook at your strategy and the available IP protection tools:
Apparatus, Compositionsof matter & processes-------Patents
Brand & trade dress -------------TrademarksSemiconductors -------------------TopographyComputer code ---------------------CopyrightsManufacturing ----------------------Trade Secrets
Intellectual Property
Patents Trademarks
Copyrights
Public Domain
Trade Secrets ) (
7
Getting a patent takes years –Know why you want one:1. To protect a product, service, or business
model from being copied by others, especially “free-riders”
2. To gain freedom to operate and access to developments of others: leverage through licensing and counter-ammunition
3. To preclude others from getting patents on your own developments
4. To generate an optimal return on your investment
How are innovations made?
1. Companies operate on different paradigms• Small vs. Large Narrow vs. Broad
2. Innovation can occur in different ways• “Eureka” vs. Incremental
3. Simultaneous discoveries can occur completely independently• “Great Man” theory vs. the evolution of
enabling, underlying technology
8
Three Challenges in a Knowledge-Based Company
1. Getting information from the innovatorsIncentives and motivation
2. Building the arsenalProcesses
3. Extracting value from the portfolioPurposes
Three Challenges in a Knowledge-Based Company1. Getting the information from the
innovators• Inventor motivation through “Invent shops”,
“Innovation Workshops”, or specialized R&D to build the portfolio
• Incentive program to encourage timely submissions
2. Building the patent portfolio3. Extracting value from the patent portfolio
9
Capture Innovations with Inventor IncentivesA. Objective: To increase and focus invention
disclosuresB. Get high-level managers to evangelizeC. Give cash awards to inventors (U.S. example):
1. On invention disclosure: $X2. On patent filing: $10X3. On patent grant: Personalized plaque
D. Recognize innovators in peer groups, annual banquets, etc.
E. Set up cooperative administration: By legal dept, HR, R&D function and business groups
Strategic Futuristic Portfolio
Capturing Innovations
GUIDED
BRAINSTORMING
Innovation Workshops
Marketing, Business,or R&D Roadmaps
INVENTION
HARVESTING
Invent Shops
Traditional Patent Portfolio
10
Poll Question #1
Do you have a cash incentive program for innovators in your organization?
YesNo
Live Meeting Poll
Changes directly made to this slide will not be displayed in Live Meeting. Edit this slide by selecting Properties in the Live Meeting Presentation menu.
Three Challenges in a Knowledge-Based Company1. Getting the information from the
innovators2. Building the patent portfolio
• Thoughtful selection of innovations to patent• Use Patent Portfolio Management processes and
tools
3. Extracting value from the patent portfolio
11
Institutionalize portfolio development processes that help to:1. Spot future trends before they come into focus
• Seek to learn and intersect the business strategies of competitors (competitive intelligence)
• Identify and cover missing enablers (gap analysis)2. Focus on ALL strategic directions, covering:
• Competitors, Complementors, Substitutors• Upstream suppliers and downstream customers
3. Identify problematic patents owned by others• Design around them; invalidate them; or license them
4. Create patents covering competitors’ businesses for use as counter-ammunition in disputes or licensing negotiations
5. Look at ALL complementary assets in the value chain
Human Capital
(Tacit)
Intellectual Assets
(Codified)
Intellectual Property
Res
earc
h &
Dev
elop
men
t
Man
ufa
cturi
ng
Faci
litie
s
Dis
trib
uti
on C
apab
iliti
es
Ad
vert
isin
g an
d S
ales
Cust
omer
Suppor
t
$
Structural Capital
Intellectual Capital Complementary Business Assets
A Company Model
12
Intersecting Strategies Result in theSame Product: Who Owns the Patents?
Time
?
Co. A
Co. B
What Are the Missing Pieces?Invent and Patent Them Now
?
?
?
13
General ManagerStrategic Patenting
Survey
InventionDisclosureSubmitted
Recommendations byTechnology Managers
Recommendations byIP Attorneys
Evaluation Guidelinesand Checklists
Keep asTrade Secret
PublishDisclosure
File PatentApplication
Prepared by In-House
Legal Staff
Prepared by OutsideCounsel
Patent Coordinator Review Meeting
Set up a Patent Coordinator & Review Process
Strategic Patenting Survey
TECHNOLOGIES/PRODUCTS
List: (i) Strategic Technologies: technologies or products that have the highest strategic importance over the next five years, and (ii) Futuristic Technologies: emerging and futuristic technology opportunities of likely use by competitors, substitutors, complementors, downstream customers' customers, and upstream suppliers.
$100 TEST
Allocate $100 to pay for patenting activity
among all listed.
NON-US PROTECTION
Name non-U.S. countries where patents should be obtained
(e.g. Japan, Germany, UK, China).
1. (Check: ___ Strategic or ___ Futuristic)
2. (Check: ___ Strategic or ___ Futuristic)
3. (Check: ___ Strategic or ___ Futuristic)
4. (Check: ___ Strategic or ___ Futuristic)
5. (Check: ___ Strategic or ___ Futuristic)
6. (Check: ___ Strategic or ___ Futuristic)
7. (Check: ___ Strategic or ___ Futuristic)
14
Use an Invention Evaluation Matrix(Source of example: www.Anaqua.com)
Use a Portfolio Evaluation Matrix(Source of example: www.Anaqua.com)
15
The Patent Portfolio
Patents That Have Lost Value Patents On Strategic Technologies
Short-Lived and Irrelevant
Simple Solutions forSpecific Products
Market Based, Covering:1) Competitors
2) Complementors3) Customer’s Customers
4) Suppliers
Corporate BasedTechnical Jewels
Low Value -- Weed OutHigh Value -- Can Also Be Used For Access
To Innovations Of Others(e.g., through Cross-Licenses)
Characterize your Patent Portfolio
Poll Question #2
Do you have a process for engaging high level managers to help prioritize and select innovations to be protected?YesNo
Live Meeting Poll
Changes directly made to this slide will not be displayed in Live Meeting. Edit this slide by selecting Properties in the Live Meeting Presentation menu.
16
Three Challenges in a Knowledge-Based Company1. Getting the information from the
innovators2. Building the patent portfolio3. Extracting value from the patent portfolio
Patent cross-licensing & out-licensing for: • Generating revenue • Obtaining freedom to operate• Maintaining control • Settling disputes
Out-Licensing Factors
Out-licensing evolves from awareness of one or more of the following:
1. Core technologies not fully penetrated into markets2. Non-core technologies can produce income3. Non-strategic markets have revenue potential4. Trading IP rights enables freedom to operate5. Alliances can leverage capabilities6. Industry standards can be created or perpetuated7. Inevitability: Others will license if you don’t
17
An Economic ModelYes
R & D LEADS TO SOMETHINGCOMMERCIALLY FEASIBLE ?
Yes
BREAKTHROUGH OR DOMINANT DESIGN ?
Yes
INTEGRATE INTO THE BUSINESS & SELECTIVELY LICENSE TO ASSURE FUTURE DESIGN FREEDOM
FREEDOM TO COMPETE?
STRATEGIC(Value is based on the BUSINESS)
OPPORTUNISTIC(Value is based on LICENSING INCOME)
NoFORGET IT OR LICENSE OUT
NoFORGET IT OR LICENSE OUT
No LICENSE OUT
No LICENSE OUTCOMPLEMENTARY ASSETS UNDERCONTROL (e.g. PATENTS, MFG,ADVERTISING, DISTRIBUTION) ?
Yes
Use Tools To Characterize Portfolios(Example is in ICO Suite from www.PatentCafe.com)
Zoom Graphic & Patent Details
18
YesNo
Yes Maybe
Patent Out-Licensing Areas
Core
Non-Core
Non-Strategic Strategic
Markets
Technologies
Poll Question #3
Does your company have an active out-licensing program specifically designed to generate revenue?
YesNo
Live Meeting Poll
Changes directly made to this slide will not be displayed in Live Meeting. Edit this slide by selecting Properties in the Live Meeting Presentation menu.
19
In Conclusion: A Summary of Truisms
Innovation is planned, not randomA patent can protect recurring business income from later arriving “free-riders”A patent may be all that differentiates a product or service in a commodity marketThe cost of a patent is a bargain if it prevents a dispute or a lawsuit or provides freedom to operateIt takes institutionalized processes to produce an arsenal of patents as well as an arsenal of prior art
Thank you for your participationFor more information on the Web Conference series visit
www.foley.com/webconference
Stephen Fox(spfox@foley.com)
Harry Gwinnell(harry_gwinnell@cargill.com)
Nat Slavin(nat@natslavin.com)
top related