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Intellectual Property Strategy
 

Intellectual Property Strategy

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Crafting and deploying intellectual property strategy in a firm for mining, optimising and protecting available intellectual property therein.

Crafting and deploying intellectual property strategy in a firm for mining, optimising and protecting available intellectual property therein.

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    Intellectual Property Strategy Intellectual Property Strategy Presentation Transcript

    • Intellectual Property Strategy Dr. Elijah Ezendu FIMC, FCCM, FIIAN, FBDI, FAAFM, FSSM, MIMIS, MIAP, MITD, ACIArb, ACIPM, PhD, DocM, MBA, CWM, CBDA, CMA, MPM, PME, CSOL, CCIP, CMC, CMgr
    • “Skills and knowledge have become the only source of sustainable long-term competitive advantage” - Lester Thurow
    • Corporate IP 1. 2. 3. 4. 5. How does the top management view IP? Has your firm developed IP Strategy? What is the expanse of the IP Portfolio? Does your firm own its IP? Is there any licensing or other agreements that compromised ownership? 6. What is the pricing standard for IP? 7. How effective is the fee collection?
    • Measuring Value of Intellectual Property Valuation Measurement:  Discounted Cash Flow  Estimate of Market Size  Royalty Rate  Impact on Market Scorecards:  Normal Scorecards  Balanced Scorecards Assessment:  Standard Assessment System
    • IP as Part of Growth and Transaction Strategy Value Assessment Growth and Transaction Planning Maximize Strengths Technical Due Diligence IP Assessment Market Landscape Financial Valuation Technology Potential Risk Assessment Buyer Assessment Prioritization of Highest Opportunity Markets Strategic Partnering Programme Development Strategic Sales to Target Accounts Value Realization Mitigate Risks Technology Risks Legal/Contract Review Product Roadmap Target Market Patent Protection Source: Monette Stephens M & A Transaction Advisory Asset Divestiture IP Licensing Leveraged Buyouts Investment and Private Placement
    • Value Extraction in Action Exclusivity Exchange Intellectual Capital Value Extraction IP Creation Industry Standard Asset Prestige Bargaining Power
    • Steps in IP Strategy Development • Analysis • Refinement and Alignment • Deployment
    • Strategy Deployment 1 • IP strategy conveyance – IP strategy maps – IP strategic initiative development • IP strategy review – Measure – Key learning and dissemination – External benchmarking – Adjustments and corrections • Designing and refining organizationally-appropriate IP management models • Interim and contract/project IP management • IP management recruiting
    • Strategy Deployment 2 • • • • • • • • IP audits and utilization reviews IP valuations, qualitative and quantitative IP portfolio review and optimization IP litigation planning and management, including infringement investigations IP process integration and improvement, e.g. Concept development, product development, commercialization Boosting brands with IP IP out-licensing and divestments IP sourcing, due diligence, in-licensing, and acquisitions
    • Strategy Deployment 3 • Managing IP under partnership, alliance and contract R&D agreements • Designing and executing programs to destroy or limit competitor’s IP monopolies • Freedom to operate reviews • Generation of IP-related competitive intelligence, including highly rational analyses of complex IP data sets, e.g., “patent mapping”. Source: Falco-Archer
    • Managing IP in Outsourcing • Retain ownership of IP rights • Put measures against unauthorized use or disclosure of trade secrets • Avoid provider using third party IP without due permission • Secure ownership of new IP rights created by the provider while working for the firm
    • Benefits of Intellectual Property 1. 2. 3. 4. Competitive differentiator Provides exclusivity Increase in Performance Improved Sustainability
    • Types of Intellectual Property 1. 2. 3. 4. 5. 6. Patents Trademarks Copyrights Trade Secrets Industrial Designs Geographical Indication
    • Patent “A patent is an exclusive right granted for an invention, which is a product or a process that provides a new way of doing something, or offers a new technical solution to a problem. A patent provides protection for the invention to the owner of the patent for a limited period, generally 20 years.” - World Intellectual Property Organization
    • Features of Patent • It’s a statutory monopoly for a particular invention • It provides exclusive rights to use, sell, manufacture and license that invention • Its scope depends on claims • protection occurs on issuance • The rights are only in countries of issues
    • What is an Invention? It’s a process, machine, art or composition of matter which is new and useful or fresh improvement.
    • Non-Patentable Things i. ii. iii. iv. v. vi. vii. General Information Mathematical Methods Things that are not useful Scientific Principles Works of Authorship Procedure of Medical Treatment Discovery of new element or substance
    • Three Patent Approaches i. Pioneering Patents: It’s usually short, broad and general in focus due to absence of previous work. ii. Improvement Patents: This is very detailed and specific but still shorter than a product patent. iii. Product Patents: This is a long and very detailed patent that pertains to a specific product.
    • Types of Patents • Provisional • Utility – Machine – Process – Article of Manufacture – Composition of Matter • Design • Plant
    • Structure of a Patent Abstract: General overview of the invention. Specification: • Description of the invention • The manner and process of making and using it, • The precise invention • Describe completely specific embodiment of the process, machine, manufacture, composition of matter, or improvement invented, and must explain the mode of operation or principle whenever applicable. • Prior art • Drawings Claims: • Defines the way that the patent will be used • The claims are either independent or dependent on other claims
    • Invalidity and Infringement Invalidity: • Prior Art • General Knowledge Infringement: • This is attributable to excessively or insufficiently broad claims
    • Patent Portfolio Strategy Strategy-Crafting Phase Evaluation of patentable technologies and registration of patent Deployment Phase  Licensing  Competitive Intelligence  Litigation
    • Patent Objectives • Increase the firm’s market value • Provide leverage for growth • Protection of process/technology/patent knowledge • Facilitate protection of future business
    • Patent Portfolio Range • Core patents: Used for protecting key product innovations • Camouflage Patents: Used for deceiving competitors • Minefield Patents: Used for inhibiting competitors • Application Patents: Used for protecting methodology, equipment and parts
    • Patent Portfolio Analysis • Relationship of Specified Technology with Business Objectives • Legal Status of Claim, Highlighting Scope of Technology and Expanse of draft • Geographical Distribution • Availability of Blocking-off Patent • Average Life-Cycle of Technology • Current Financial Performance • Future Financial Performance
    • International Regulations  Patent Cooperation Treaty (PCT) http://www.wipo.int/treaties/en/registration/pct/ The PCT makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an “international” patent application. Such an application may be filed by anyone who is a national or resident of a PCT contracting State. It may generally be filed with the national patent office of the contracting State of which the applicant is a national or resident or, at the applicant’s option, with the International Bureau of WIPO in Geneva.  Trade-Related Aspect of Intellectual Property Rights (TRIPS) http://www.wto.org/english/tratop_e/TRIPS_e/trips_e.htm The TRIPS Agreement is normally enforced by WTO
    • Inventorship and Assignment Inventors within the organization should be appropriately identified, rewarded and harnessed. Inventors should be obligated to assign their rights to the firm. This can be structured such that at the point of entry into the firm, workers would be mandated to assign rights of every invention within the firm.
    • Patent Protection in Strategic Alliances Patent strategy must drive a firm to apportion patent rights within governing agreements of strategic alliances. In this case, grounds for assignment are as follows: • Technology • Inventorship
    • Non Compete (NC) • Employee prevented from joining competitors for a period of 6 months to 3 years • Employee prevented from disclosing sensitive information to future employers
    • Controlling Intellectual Property • • • • • • • • Types Publishing Assignment Non-compete Material Transfer Non-disclosure Agreement Joint Invention Options Licenses • • • • • • • • Uses Cheap way to block patents Assigns invention to company X key employee to competitor Control use of proprietary Protect patenting rights Provide for independence Maintain temporary access Control for life of IP
    • Asset and Protection Type of Asset • • • • Invention Logo, Mark Physical expression of ideas Marketplace and Existing Technology Knowledge Mode of Protection • Patents • Trademarks • Copyrights • Trade Secrets and Non-competes or publication
    • Dr Elijah Ezendu is Award-Winning Business Expert & Certified Management Consultant with expertise in HR, OD, Competitive Intelligence, Strategy, Restructuring, Business Development, Sales & Marketing, Interim Management, CSR, Leadership, Project & Programme Management, Cost Management, Outsourcing, Franchising, Intellectual Capital, eBusiness, Social Media, Software Architecture, Cloud Computing, eLearning & International Business. He holds proprietary rights of various systems. He is currently CEO, Rubiini (UAE) and Hon. President, Worldwide Independent Inventors Association. He functioned as Chair, International Board of GCC Business Council (UAE); Senior Partner, Shevach Consulting, Nigeria; Chairman (Certification & Training), Lead Assessor & Council Member, Institute of Management Consultants, Nigeria; Lead Resource, Centre for Competitive Intelligence Development; Lead Consultant, JK Michaels; Technical Director, Gestalt; Chief Operating Officer, Rohan Group; Director, Fortuna, Gambia; Director, The Greens; Director of Programmes & Council Member, Institute of Business Development, Nigeria; Member of TDD Committee, International Association of Software Architects, USA; Member of Strategic Planning and Implementation Committee, Chartered Institute of Personnel Management of Nigeria; Adjunct Faculty, Regent Business School, South Africa; Adjunct Faculty, Ladoke Akintola University of Technology, Nigeria; Editor-in-Chief, Cost Management Journal; Council Member, Institute of Internal Auditors of Nigeria. He holds Doctoral Degree in Management, Master of Business Administration and Fellowship of Several Professional Institutes in North America, UK & Nigeria. He is an author & widely featured speaker in workshops, conferences & retreats. He was involved in developing Specialist Master’s Degree Course Content for Ladoke Akintola University of Technology (Nig) and Jones International University (USA). He also works as Adjunct & Visiting Professor of Universities and holds Interim Management Assignments on Boards of Companies.
    • Thank You