Intellectual Property Strategy Dr. Elijah Ezendu FIMC, FCIM, FIIAN, FBDI, FAAFM, FAAPM, FCCM, MIMIS, MITD, ACIArb, ACIPM, PhD, DocM, MBA, CWM, CBDA, CMA, MPM, PME, CSOL, CCIP, CMC

“ Skills and knowledge have become the only source of sustainable long-term competitive advantage” - Lester Thurow

“ Skills and knowledge have become the only source of sustainable long-term competitive advantage” - Lester Thurow

Corporate IP 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? What is the pricing standard for IP? How effective is the fee collection?

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?

What is the pricing standard for IP?

How effective is the fee collection?

Valuation Measurement: Discounted Cash Flow Estimate of Market Size Royalty Rate Impact on Market Scorecards: Normal Scorecards Balanced Scorecards Assessment: Standard Assessment System 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 Source: Monette Stephens Value Assessment Value Realization Growth and Transaction Planning Maximize Strengths Mitigate Risks Technical Due Diligence IP Assessment Market Landscape Financial Valuation Technology Potential Risk Assessment Buyer Assessment M & A Transaction Advisory Asset Divestiture IP Licensing Leveraged Buyouts Investment and Private Placement Prioritization of Highest Opportunity Markets Strategic Partnering Programme Development Strategic Sales to Target Accounts Technology Risks Legal/Contract Review Product Roadmap Target Market Patent Protection

Technical Due Diligence

IP Assessment

Market Landscape

Financial Valuation

Technology Potential

Risk Assessment

Buyer Assessment

M & A Transaction Advisory

Asset Divestiture

IP Licensing

Leveraged Buyouts

Investment and Private Placement

Prioritization of Highest Opportunity Markets

Strategic Partnering Programme Development

Strategic Sales to Target Accounts

Technology Risks

Legal/Contract Review

Product Roadmap

Target Market

Patent Protection

Value Extraction in Action Intellectual Capital Value Extraction IP Creation Exclusivity Exchange Industry Standard Asset Prestige Bargaining Power

Steps in IP Strategy Development Analysis Refinement and Alignment Deployment

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

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

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 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

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 Competitive differentiator Provides exclusivity Increase in Performance Improved Sustainability

Competitive differentiator

Provides exclusivity

Increase in Performance

Improved Sustainability

Types of Intellectual Property Patents Trademarks Copyrights Trade Secrets Industrial Designs Geographical Indication

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

“ 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

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.

It’s a process, machine, art or composition of matter which is new and useful or fresh improvement.

Non-Patentable Things General Information Mathematical Methods Things that are not useful Scientific Principles Works of Authorship Procedure of Medical Treatment Discovery of new element or substance

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 Pioneering Patents: It’s usually short, broad and general in focus due to absence of previous work. Improvement Patents: This is very detailed and specific but still shorter than a product patent. Product Patents: This is a long and very detailed patent that pertains to a specific product.

Pioneering Patents: It’s usually short, broad and general in focus due to absence of previous work.

Improvement Patents: This is very detailed and specific but still shorter than a product patent.

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

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

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

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

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

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.

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

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

• Employee prevented from joining competitors for a period of 6 months to 3 years • Employee prevented from disclosing sensitive information to future employers 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 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 Types • Publishing • Assignment • Non-compete • Material Transfer • Non-disclosure Agreement • Joint Invention • Options • Licenses

Asset and Protection • Invention • Logo, Mark • Physical expression of ideas • Marketplace and Existing Technology Knowledge • Patents • Trademarks • Copyrights • Trade Secrets and Non-competes or publication Type of Asset Mode of Protection

Dr. Elijah Ezendu is a multidisciplinary professional whose business experience mounts through diverse fields. He is a Certified Management Consultant, licensed by International Council of Management Consulting Institutes which has a Special Consultative Status in United Nations Economic and Social Council. As a result of his strides in management consulting, he received Merit Award for Excellence in Consulting. He is concurrently Senior Partner, Shevach Consulting; Director of Strategy and Performance, Fortuna; Lead Assessor and Member of Governing Council, Institute of Management Consultants; Director of Training, International Council of Business Development Professionals; Member of Marketing Committee, International Council of Management Consulting Institutes; Honorary Global Advisor, International Project Management Commission; and Programme Coordinator (Nigeria), Regent Business School, South Africa. He holds a doctoral degree in Management from St. Clements University, British West Indies. He is a Chartered Manager certified by Canadian Institute of Management, Canada and holds numerous professional qualifications including Master Project Manager; Project Manager E-Business; Fellow, Institute of Management Consultants; Fellow, Certified Institute of Cost Management; Fellow, Institute of Business Development; Fellow, American Academy of Financial Management; Fellow, Institute of Internal Auditors; Member, Nigerian Institute of Training and Development; Member, Institute of Analytics Professionals; Associate, Chartered Institute of Personnel Management of Nigeria; Associate, Chartered Institute of Arbitrators (Nigeria). He is a Certified Business Development Analyst and Competitive Intelligence Professional. Additionally, he is an information technology management professional certified by Institute for the Management of Information Systems, UK along with Microsoft Corporation, USA and stands as a Member of International Association of Software Architects. He is an outstanding motivational speaker with a knack for recalibration of positive influence; and a world-class consultant, who has functioned as Speaker/Facilitator at myriad programmes of professional institutes, international development organisations, private and public firms including extra-governmental agencies and institutions. He is a prolific writer and author who had served as Editor-in-Chief, Cost Management Journal; Part-Time Lecturer & External Examiner (MBA Programme), Ladoke Akintola University of Technology; Director of MBA Programme (Nigerian Outreach), Management Institute of Canada; Chief Operating Officer, Rohan Marine; Second Vice President and Member of Governing Council, Certified Institute of Cost Management; Director of Programmes and Member of Governing Council, The Institute of Business Development; Director, Refined Shipping; and Examiner to various Professional Institutes.

Dr. Elijah Ezendu is a multidisciplinary professional whose business experience mounts through diverse fields. He is a Certified Management Consultant, licensed by International Council of Management Consulting Institutes which has a Special Consultative Status in United Nations Economic and Social Council. As a result of his strides in management consulting, he received Merit Award for Excellence in Consulting. He is concurrently Senior Partner, Shevach Consulting; Director of Strategy and Performance, Fortuna; Lead Assessor and Member of Governing Council, Institute of Management Consultants; Director of Training, International Council of Business Development Professionals; Member of Marketing Committee, International Council of Management Consulting Institutes; Honorary Global Advisor, International Project Management Commission; and Programme Coordinator (Nigeria), Regent Business School, South Africa. He holds a doctoral degree in Management from St. Clements University, British West Indies. He is a Chartered Manager certified by Canadian Institute of Management, Canada and holds numerous professional qualifications including Master Project Manager; Project Manager E-Business; Fellow, Institute of Management Consultants; Fellow, Certified Institute of Cost Management; Fellow, Institute of Business Development; Fellow, American Academy of Financial Management; Fellow, Institute of Internal Auditors; Member, Nigerian Institute of Training and Development; Member, Institute of Analytics Professionals; Associate, Chartered Institute of Personnel Management of Nigeria; Associate, Chartered Institute of Arbitrators (Nigeria). He is a Certified Business Development Analyst and Competitive Intelligence Professional. Additionally, he is an information technology management professional certified by Institute for the Management of Information Systems, UK along with Microsoft Corporation, USA and stands as a Member of International Association of Software Architects. He is an outstanding motivational speaker with a knack for recalibration of positive influence; and a world-class consultant, who has functioned as Speaker/Facilitator at myriad programmes of professional institutes, international development organisations, private and public firms including extra-governmental agencies and institutions. He is a prolific writer and author who had served as Editor-in-Chief, Cost Management Journal; Part-Time Lecturer & External Examiner (MBA Programme), Ladoke Akintola University of Technology; Director of MBA Programme (Nigerian Outreach), Management Institute of Canada; Chief Operating Officer, Rohan Marine; Second Vice President and Member of Governing Council, Certified Institute of Cost Management; Director of Programmes and Member of Governing Council, The Institute of Business Development; Director, Refined Shipping; and Examiner to various Professional Institutes.

Merci Beaucoup For additional information: Dr. Elijah Ezendu elezendu@yahoo.com, 234 8033024596, 234 8058835237