IP management is about the way an organization handles it’s intellectual property through different processes of protection, valuation and exploitation. For each process complementary strategies apply, guaranteeing the best choice of commercializing the IP portfolio. The process of protection considers patenting amongst others. During the process of valuation the technology can be evaluated by quantitative or qualitative approach or as a combination of both. How to bring the technology to the market, how to create business etc. are questions that are dealt with during the exploitation process.
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FITT Toolbox: IP Management
1. IP Management
FITT
– Fostering Interregional Exchange in ICT Technology Transfer –
www.FITT-for-Innovation.eu
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2. Process in general
What is the ‘process’? IP management is about the way an organisation
handles it’s IP through different processes of protection, valuation and
exploitation. For each process complementary strategies apply,
guaranteeing the best choice of commercializing the IP-portfolio.
Strengths & Weaknesses? In a fast moving sector as ICT it is not always
easy to defend a proper IP management. Patenting strengthens position
but takes time, while other types of protection (besides secrecy) are
often less known. Most of the efforts go to awareness creation.
Best Practices in Activity process’ protection – valuation – exploitation
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3. IP Management
In relation to the technology, the business and legal aspects
respectively, the following process’ within IP management are
identified
1. Protection
Strong technology – legal interaction
2. Valuation Business
Strong technology – business interaction
3. Exploitation
IP Management
Strong business – legal interaction
Technology Legal
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4. IP Management
Business
Sell, license, spin-off
Financial modeling
IP landscape
Triangulation
Freedom To Operate
VALUATION EXPLOITATION
STANDARDIZATION
& CERTIFICATION
PROTECTION
Technology Legal
Awareness
Disclosure-Protection
Patent, copyright, trade secret...
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5. IP Management
IP management process is characterized by the following topics, and
further described or illustrated by given Best Practices (BPs) and Cases
1. Protection
- Awareness creation BP Laboratory notebook
- Consider Disclosure-Protection issue
- Protection means: patent, copyright, trade secret
BP software patents
BP Charter for IP and TT
2. Valuation
- Financial modeling
- Triangulation, i.e. a combination of three valuation methods BP Valuation methods
Cases: LUF Patent Valuation, A Valuation tool
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6. IP Management
IP management process is characterized by the following topics, and
further described or illustrated by given Best Practices (BPs) and
Cases
3. Exploitation BP FOSS Licensing
- Business models, e.g. sell, license, spin-off
- Freedom To Operate study BP Exploitation Scenarios
- IP landscape, e.g. red sea versus blue ocean strategy
Cases: Open source business case, Ideal TT case
4. Standardization & Certification
Cases: standardization in media formats, Assessment Methodology Transfer Case
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7. Pro’s & Cons
Pro’s
• All see the need of a training program for IP
• Licensing is a key strategy in research-intensive organisations for
increasing revenue and controlling technology development
• IP is a bargaining chip in negotiating access to technology
• The ICT-value chain or network makes it difficult to keep new technology
secret for long, making IP protection more important
• Retain control of technology is more and more a HR issue.
• Management tools are critical to support IP programs, including capabilities
to support portfolio management, procurement work flow, product/IP
alignment, invention capture, and licensing management
• Define stakeholders: R&D manager, CTO, VP R&D, IP Attorney/Patent
Counsel, Chief IP Counsel, Marketing -> cross functional IP team
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8. Pro’s & Cons
Cons
• Top three challenges are budget constraints, lack of objective metrics (still
too much volume-based instead of value-based) and lack of understanding
the importance of IP
• No one commercial management tool stands out; many develop an internal
solution
• Patenting remains a major obstacle to establishing technology standards
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