1. Presented by IP Advantages® (Asia) Limited
Cross-Border IP Commercialization
and Monetization
LESCHK Lunch Meeting
16 April 2015

2. Why Redundant and Underutilized Technologies and IP
Exist?
❖ Market shifting directions
❖ Technology evolution
❖ M&A resulting in redundant IP
❖ Strategic alliance
❖ Market entry difficulties and barriers
❖ Excessive investment in early stage R&D
Copyright 2015 IP Advantages (Asia) Limited. All Rights Reserved.

3. What Kind of IP May Be Redundant or
Underutilized?
❖ Patents do not cover any existing products;
❖ Patents are being maintained in countries where no products
are sold;
❖ Patents are not part of a licensed portfolio or have not been
identified of its licensing value;
❖ Patents cover obsolete technologies or products;
❖ Forward looking technologies needs commercialization
partners.
Copyright 2015 IP Advantages (Asia) Limited. All Rights Reserved

4. Why Should You Make Use or Get Rid of
Redundant or Underutilized IP?
❖ Reduce cost: patents and IP are cost item in accounting;
❖ Reduce head counts;
❖ Acquire new IP and technologies;
❖ Focus on forward-looking R&D and creating cutting edge
disruptive technologies and IP assets.
Copyright 2015 IP Advantages (Asia) Limited. All Rights Reserved

5. How to Identify Redundant and
Underutilized IP
❖ IP Audit: Off-the-Shelf Software Tools
❖ IP Audit: Technology vs. Product/Market analysis
❖ IP Audit: Cost vs. Profit analysis
❖ IPA’s Own Software tool for technology and patent
landscape analysis (IPC Code Analysis)
Copyright 2015 IP Advantages (Asia) Limited. All Rights Reserved

6. What Should You Do With Redundant or
Underutilized IP
❖ Case Illustration I: Bringing IP developed by western
blue chip companies to Asian investors and practicing
companies
Copyright 2015 IP Advantages (Asia) Limited. All Rights Reserved

7. Case Illustration I(A) – NFC Portfolio
❖ IPA has led an in-depth landscape analysis of the global NFC
technologies and patents, with the focus on Chinese
companies and NFC patent owners;
❖ IPA has identified key markets, competitors and participants
in the next 5 years globally and in China;
❖ IPA has further identified the Chinese market technology
trend and China’s Key Players (CKP) in the field;
❖ IPA has devised a strategic approach with partners with
respect to “jump-start” a China commercialization program.
Copyright 2015 IP Advantages (Asia) Limited. All Rights Reserved

8. Case Illustration I(B) – 3-D
Printing
❖ Forward looking innovations were created by a top R&D
team (including former IBM innovation scientists) for a
major market participant (MMP) in the 3-D printing field;
❖ MMP changes direction of product development, and
decides not to retain all the rights to these innovations
and patents;
❖ IPA Presented this disruptive patent portfolio to a
potential Chinese investor;
❖ IPA helps MMP to monetize underutilized IP assets.
Copyright 2015 IP Advantages (Asia) Limited. All Rights Reserved

9. What Should You Do With Redundant or
Underutilized IP
❖ Case Illustration II: Bringing global strategic investors to
China/HK’s home grown technologies and IP, helping
government funded, academic/research institutions and
SMEs to commercialize and monetize their IP assets
cross-border.
Copyright 2015 IP Advantages (Asia) Limited. All Rights Reserved

10. Case Illustration II(A) – HK’s IP Goes
West
❖ A HK based inventor invented an energy conservation
construction technology and obtained a US patent;
❖ IPA and its network of brokers located a US investor
who is interested in acquiring this patent and use the
patented technology to his construction project;
❖ IPA represented the HK based inventor in the
negotiation of patent ownership transfer, sale price,
patent purchase agreement, and provided escrow
services.
Copyright 2015 IP Advantages (Asia) Limited. All Rights Reserved

11. Case Illustration II(B) – Coding
Technologies
❖ A patent portfolio in the coding technology area is one of China’s
home grown IP asset;
❖ Local startup team sought after IPA’s expertise and assistance in
jump-starting a profitable licensing business;
❖ After preliminary assessment, IPA believes this portfolio has the
potential to be developed into a worldwide licensable portfolio,
with further vertical and horizontal development in novelty, depth
and coverage;
❖ IPA further recognizes, in order to develop this home grown IP
portfolio into a world class licensing program, the team needs
world class licensing experts and funding.
Copyright 2015 IP Advantages (Asia) Limited. All Rights Reserved

12. Case Illustration II(B) – Coding
Technologies Continued
❖ IPA identifies a foreign IP investment fund and presented the
project together with IPA’s preliminary assessment;
❖ Foreign IP investment fund immediately became very
interested;
❖ IPA leads several rounds of due diligent studies, meetings
and assessment of patent portfolio including: strength of
claims, broadness and novelty, invalidity possibilities,
encumbrances, assessment of potential market and licensing
value.
Copyright 2015 IP Advantages (Asia) Limited. All Rights Reserved

13. ❖ How do we cross the bridge to maximize our IP value?
Copyright 2015 IP Advantages (Asia) Limited. All Rights Reserved

15. —Marcel Proust
Le véritable voyage de découverte ne consiste pas
à chercher de nouvelles terres mais voir avec de
nouveaux yeux.
The real voyage of discovery consists not in
seeking new lands but seeing with new eyes.
“Today’s IP, Tomorrow’s World®”
Copyright 2015 IP Advantages (Asia) Limited. All Rights Reserved

16. Holly Ying Li
info@ipadvantages.com
www.ipadvantages.com
www.ipadavantages.com.hk
(soon)
T: + 852 3167 4592
F: + 852 2297 2289
M: + 852 5368 2830
Contact
Copyright 2015 IP Advantages (Asia) Limited. All Rights Reserved