Case studies of previous client engagements
January 2010

Quentin Tannock & Ilian Iliev
Directors, CambridgeIP



Introduc...
About CambridgeIP
CambridgeIP (Cambridge Intellectual Property Ltd) is a provider of
business intelligence, technology map...
Case study #1 – VC-backed Technology Company: IP
Landscape for Hiring Round and Stakeholder
Communication
A VC-backed clie...
Case study #2 – Major Technology Consultancy Practice:
Patent Licensing and Acquisition Strategy for a Fortune
100 Corpora...
Case study #3 – Individual Inventor: Cost Effective
Support for Freedom to Operate Analysis and Patent
Drafting

A world-l...
Case study #4 – Blue Chip R&D Manager: R&D Strategy
Development
The R&D manager of a Fortune 100 Corporation working in th...
Case study #5 – University Spin-off: Competitor Strategy
Analysis using Patent-based Intelligence

A top UK University spi...
Case study #6 – Technology Start-up: Meeting a Tight
Deadline for Patent Application

Our client needed a freedom to opera...
Getting in touch
We hope that the set of case studies discussed has helped you identify a solution to your
needs.

Feel fr...
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CambridgeIP: Case Studies Of Recent Client Engagements

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CambridgeIP’s experience has shed light on multiple client needs that can be met through the use of patent-based intelligence. The set of anonymised case studies below illustrate some recurring client needs and solutions we have developed to meet these.

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Transcript of "CambridgeIP: Case Studies Of Recent Client Engagements"

  1. 1. Case studies of previous client engagements January 2010 Quentin Tannock & Ilian Iliev Directors, CambridgeIP Introduction CambridgeIP’s experience has shed light on multiple client needs that can be met through the use of patent-based intelligence. The set of anonymised case studies below illustrate some recurring client needs and solutions we have developed to meet these. We have found that clients are often surprised at the range of high-grade intelligence that can be rapidly extracted from patent data by CambridgeIP: as a result meeting core business needs at a fraction of the cost of time and resources. In addition, our services address the traditional IP needs of technology firms, such as assisting in the performance of freedom to operate and patentability analyses. Feel free to call us to discuss your company’s needs, so we can together build a cost-effective and innovative solution using patent-based intelligence. Table of Contents About CambridgeIP.............................................................Error! Bookmark not defined. Case study #1 – VC-backed Technology Company: IP Landscape for Hiring Round and Stakeholder Communication .............................................................................................. 3 Case study #2 – Major Technology Consultancy Practice: Patent Licensing and Acquisition Strategy for a Fortune 100 Corporation .............................................................................. 4 Case study #3 – Individual Inventor: Cost Effective Support for Freedom to Operate Analysis and Patent Drafting .......................................................................................................... 5 Case study #4 – Blue Chip R&D Manager: R&D Strategy Development ................................. 6 Case study #5 – University Spin-off: Competitor Strategy Analysis using Patent-based Intelligence ...................................................................................................................... 7 Case study #6 – Technology Start-up: Meeting a Tight Deadline for Patent Application ......... 8 Getting in touch................................................................................................................ 9
  2. 2. About CambridgeIP CambridgeIP (Cambridge Intellectual Property Ltd) is a provider of business intelligence, technology mapping, technology market research, technology evaluation, IP strategy and innovation policy services and training to private and public organisations in high-technology sectors. The company’s rigorous methodology and supporting systems enable the gathering and analysis of highly complex science literature datasets with consistently superior quality and delivery times. Benefits are delivered with considerable efficiency when compared to traditional approaches. Working with high-quality datasets allows us to provide high-grade analytics (some of which are an industry-first) in support of strategic decision-making by our clients in the IP strategy and R&D strategy fields, and in business strategy more broadly. Uses of CambridgeIP’s work include: freedom to operate and patentability, industry-wide patent landscaping, competitor mapping and analysis, support for in-licensing and acquisition strategy development, business planning and venture fund raising. CambridgeIP has designed many of its outputs to be easily understood by non-technical executives (i.e. ‘CxO compatible’), and to be distributed through different media channels. CambridgeIP is not a law firm, nor does it offer legal advice. CambridgeIP has worked with some of the largest global companies to assist with their R&D and business development strategy formulation. Headquartered in Cambridge UK, and with offices in London, UK. CambridgeIP has a team of 14 people, and representatives in Boston, Houston and Geneva. There is more information about CambridgeIP and its capabilities on www.CambridgeIP.com
  3. 3. Case study #1 – VC-backed Technology Company: IP Landscape for Hiring Round and Stakeholder Communication A VC-backed client working in the defence industry requested an IP Landscape report. The company’s management already had a sound understanding of their patent landscape. They sought our help to organise the data they had gathered on potentially competitive patents and to mine this information to identify the most relevant patents and identify key experts for hiring purposes. In addition, the client would use the IP Landscape report to communicate to investors how the firm’s IP strategy relates to their technology space. Using our TechBoundary we redefined the client’s technology space, and so identified other previously unknown patent clusters. The IP Landscape report identified industry players new to the client and fresh industry segments where their patent portfolio coverage could be extended. We used the patent data to generate a list of key experts in the field, identifying their overlapping relationships (illustrated in the inventor network map). The client used the IP Landscape report in investor presentations leading up to a successful 2nd founding round....One year later the client requested an IP Landscape to assist their strategic planning for entry into a new area of application of the company’s core technology. The inventor network map helps users identify who the key experts in a field are, what other inventors and organisations they have worked with in the past. The tool has been used by past clients to identify collaboration and hiring opportunities, and to understand the key relationships in an industry.
  4. 4. Case study #2 – Major Technology Consultancy Practice: Patent Licensing and Acquisition Strategy for a Fortune 100 Corporation A leading UK Technology Consultancy was approached by a Fortune 100 company to identify acquisition and patent licensing opportunities in a major medical instrumentation area. The project brief was intentionally vague: focusing on user benefits, leaving the question of technology open-ended. The Consultancy faced a tight timeline in which to develop a patent map of the field and make recommendations. CambridgeIP embedded an executive with the client to ensure rapid implementation of feedback. Using CambridgeIP’s TechBoundary method we identified 12 distinct technology spaces: with over 15,000 patents. The Consultancy selected 4 technology spaces for which a patent map and IP Landscape report would be produced. The resulting patent maps provided the Consultant with a wealth of analysis and insight such as: inventor network maps; shortlist of companies, universities and inventors in each patent map; analysis of industrial applications and overlaps between the 4 patent maps; and a list of the most influential patents in the space. In addition, CambridgeIP also supplied the full patent datasets of over 8,000 patents. The Consultancy used our research to conduct expert-based analysis and make acquisition and patent licensing recommendations to the Multinational. The Consultancy partner who led the project will be using the project outcomes internally as a Case Study to educate other project leaders. The figure below illustrates the iterative process we followed in generating the patent maps and IP Landscape.
  5. 5. Case study #3 – Individual Inventor: Cost Effective Support for Freedom to Operate Analysis and Patent Drafting A world-leading surgeon approached CambridgeIP. The client was at the point of drafting a patent for a new surgical device. He needed to identify potential conflicting patents with his inventions, in order to avoid patent infringement. In addition, he sought to investigate patented materials and methods used by other surgical device applications. Our IP Landscape report helped the client identify ‘white space’ within which to protect his invention, and patent he could potentially infringe upon. Several complimentary fields, including the use of specific materials in a surgical area, were also identified. The client also used our IP Landscape findings as content for a business plan… A year and a half later the client approached us to update the IP Landscape and help him develop a patent licensing strategy. The figure below shows some of the patent-based analysis clients get as standard feature of their IP Landscape report: in return for 2-3 hours of their time.
  6. 6. Case study #4 – Blue Chip R&D Manager: R&D Strategy Development The R&D manager of a Fortune 100 Corporation working in the defence and homeland security industry approached us for an IP Landscape of a new growth area. The client had a deep understanding of her sector. However, prior to structuring its R&D approach and commitment to investment, she wanted to develop a deeper and independent understanding of the field: key actors, relationships, levels of activity, key patents. The client did not approach Corporate Counsel, whose resources were stretched by other activities. We spent 2 hours setting up the project using our TechBoundary method. The resulting IP Landscape report helped deepen the client’s knowledge of the industry’s patent map, competitor activity, leading experts and technology migration trends. The IP Landscape report accelerated the client’s business development of this area. The patent-based Technology Evolution Map helps R&D managers to identify new areas of growth where they may consider entry: by showing how a core technology’s application evolves over time.
  7. 7. Case study #5 – University Spin-off: Competitor Strategy Analysis using Patent-based Intelligence A top UK University spin-out active in the Renewable Energy field approached us for an IP Landscape report. The client was backed by a major UK government funding organisation. The CEO of the company required deep intelligence about industry incumbents’ R&D strategy. The client also needed independent analysis of the industry’s patent landscape for use in technology licensing negotiations and structuring a strategic partnership. We performed an IP Landscape report for two technology areas relevant to the client’s technology. The resulting patent-based intelligence was used in negotiations by our client. The client felt that the findings on competitors’ patenting activity helped secure a go-ahead for a joint venture with a major industry player: “The strategic partner’s reaction to the report’s findings was startling: immediately inviting us to their HQ to meet with their Head of Development to finalize an agreement towards jointly developing a product.” The report has also been used by the client when applying for participation Framework 7 programs, by demonstrating the client’s deep knowledge of the industry’s patenting trends. The example below shows how patent data can be used to analyse the R&D strategy of competitors, and to develop licensing strategy. The findings suggest that Company 7 is aggressively expanding into the client’s field: it has the highest growth rate of patenting activity. In turn Company 2 is most dependent on this field for its strategic success: 100% of its patents are in the field of focus. Such strategic insights can help you structure your licensing negotiation strategy: who should you approach first, who need your technology most, which individuals are key experts.
  8. 8. Case study #6 – Technology Start-up: Meeting a Tight Deadline for Patent Application Our client needed a freedom to operate analysis prior to submitting a PCT patent application. The deadline was in 10 days. An alternative patent search solution would take 5-10 days to complete: with limited information on the search methodology and no opportunity for feedback. CambridgeIP was able to provide a 72 hours turnaround, providing not only the information required for the client’s freedom-to-operate analysis, but the wealth of strategically important analytics that come standard in our IP Landscape report. Using our TechBoundary methodology we delineated the client’s technology space, whilst he was on a plane from the UK to East Asia. After a feedback loop requested by the client, we delivered the results of our IP Landscape report. Using our Patent Ranking tool the client undertook a freedom to operate analysis. The analytics from the IP Landscape Report helped the client’s lawyer draft a more focused patent application. For instance: o Our dataset of expired patents and most frequently cited patents provided information on patents that may be integrated in the patent application’s prior art section o A list of IPC (International Patent Classification) codes identified key industrial applications that may be included in the patent draft The report was delivered on time, at a low cost, enabling the client to meet a tight deadline. In addition, the client identified little known areas of application of his technology, and improved his understanding of who the key inventors and assignees in the space. The figure below shows our standard production process for an IP Landscape Report, which usually takes as little 5-7 days. However in urgent cases we can do a 72 hour turnaround.
  9. 9. Getting in touch We hope that the set of case studies discussed has helped you identify a solution to your needs. Feel free to call us to discuss your requirements, or to arrange a meeting at our offices in Cambridge, London or your offices in the UK. Ilian Iliev Quentin Tannock Ilian.Iliev@CambridgeIP.com Quentin.Tannock@CambridgeIP.com (GSM) +44 77 863 73965 (GSM) +44 77 8621 0305

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