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Comprehensive Portfolio Management

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• What, Where and Whether to Patent
– Intelligently Planned Innovation iPi
– Patentability
• Risk Management
– Offensive Strategy
– Defensive Strategy
• IP Asset Monetization

Published in: Technology
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Comprehensive Portfolio Management

  1. 1. TMComprehensive Portfolio Management Intellectual Property as a Business Tool Frisina, LLC Creating Wealth Through Intellectual Property TM www.frisinaIP.com Copyright © 2007-2011 Frisina, LLC
  2. 2. Introduction Representative Sectors Our mission is to create wealth for our clients through the • Chemicals strategic use of intellectual property. • Polymers • Pharmaceuticals We understand the challenges facing businesses, and strive to • Biotechnology secure and monetize our clients’ intellectual assets by couching • Biomedical sound legal strategy in innovative IP and business intelligence. • Medical Imaging With our combination of technical and legal expertise we are • Advanced Materials uniquely positioned to guide clients through the legal maze of • Nanotechnology intellectual property strategy facing both start-ups and more453 South High Street Suite 302 • Semiconductors established ventures. Akron, OH 44311 • Medical Instruments(330)777-0063 ext. 100 • Medical Tests (330)338-0589 direct • Liquid Crystalsdominic@frisinaIP.com • Power Generation www.frisinaIP.com • Fuel Cells • Software • Internet Law • Business Methods Copyright © 2007-2011 Frisina, LLC
  3. 3. Introduction• What, Where and Whether to Patent TM – Intelligently Planned Innovation iPi – Patentability• Risk Management – Offensive Strategy – Defensive Strategy• IP Asset Monetization Copyright © 2007-2011 Frisina, LLC
  4. 4. What, Where and Whether to Patent Intelligently Planned Innovation TM iPi Copyright © 2007-2011 Frisina, LLC
  5. 5. Intelligently Planned Innovation TM• iPi is the first step in comprehensive portfolio management TM• iPi combines market, litigation and IP data to methodically guide innovation TM• iPi is the next generation of classic “patent landscaping” Copyright © 2007-2011 Frisina, LLC
  6. 6. Intelligently Planned Innovation• The questions that iPi answers: – Where is IP activity occurring in our patent space? – What is the pace of innovation in this space? – Who are the players? – How well developed are my competitor’s patent portfolios? – How well resourced are my competitors? – How much litigation does this space generate, and by whom? – How is the IP landscape likely to change in the near term? Copyright © 2007-2011 Frisina, LLC
  7. 7. Intelligently Planned Innovation• State-of-the-art search (a/k/a “collection search”) – Industry Standard • All patents in a given technology space • Typically listed in table form with a summary of each document – We also include • Geographic statistics and visualizations • International Class statistics and visualizations • Competitor mapping • Pace of innovation statistics and visualizations • Custom data according to client needs Copyright © 2007-2011 Frisina, LLC
  8. 8. Intelligently Planned Innovation• International Classes Copyright © 2007-2011 Frisina, LLC
  9. 9. Intelligently Planned Innovation Copyright © 2007-2011 Frisina, LLC
  10. 10. Intelligently Planned Innovation Assessing the Patent Landscape Copyright © 2007-2011 Frisina, LLC
  11. 11. Intelligently Planned Innovation Assessing the Patent Landscape Copyright © 2007-2011 Frisina, LLC
  12. 12. Intelligently Planned Innovation5 Year Projection Copyright © 2007-2011 Frisina, LLC
  13. 13. Intelligently Planned InnovationSamsung Litigation StatsTotal: 238Plaintiff: 46 Win: 1, Loss: 45Defendant: 192 Win: 188, Loss: 4 Copyright © 2007-2011 Frisina, LLC
  14. 14. Offensive Strategy Copyright © 2007-2011 Frisina, LLC
  15. 15. Offensive Strategy Patent Space• Excluding others – Beyond reserving your niche• Components 1. Populating a patent space 2. Patent enforcement Copyright © 2007-2011 Frisina, LLC
  16. 16. Offensive Strategy• Populating a patent space – The shotgun approach • Tends to commoditize IP: volume over substance • Lacks safeguards against wasting resources • Divorces IP generation from business strategy and goals – Intelligently planned innovation • Fewer patents with higher quality and greater value • Prevents waste • IP generation and business strategy are integrally combined Copyright © 2007-2011 Frisina, LLC
  17. 17. Offensive Strategy• Enforcement – Option #1: pay for it yourself • Cash on-hand • Loans secured with company assets (possibly intangibles) • Asset sell-off – Enforcement begins with a C&D letter and often a concurrent complaint • Litigation may be necessary – Costs skyrocket soon after filing the complaint Copyright © 2007-2011 Frisina, LLC
  18. 18. Offensive Strategy• Using NPE’s to your advantage – Non-Practicing Entities (aka “Patent Trolls”) – Examples: Juridica, IPVenture, and Intellectual Ventures – NPE may assume the cost of litigation • Expect thorough due diligence Copyright © 2007-2011 Frisina, LLC
  19. 19. Offensive Strategy• IP “abatement” insurance policy – Pays for the cost of enforcement – Priced case-by-case – Consider high deductible to bring down cost – Very few underwriters – Most CGL providers can also provide IP insurance Copyright © 2007-2011 Frisina, LLC
  20. 20. Defensive Strategy Copyright © 2007-2011 Frisina, LLC
  21. 21. Defensive Strategy• “The best defense is Patent Space a good offense” – Yogi Berra• Defensive strategy is also risk management – Litigation risk – Market-based risk Copyright © 2007-2011 Frisina, LLC
  22. 22. Defensive Strategy• Intelligently Planned Innovation – Combining market, litigation and IP intelligence• Patent Availability Searching – Assessing the novelty of a particular innovation – Identifying potentially problematic art • Draft around, • Flag for design around, or • Abandon early Copyright © 2007-2011 Frisina, LLC
  23. 23. Defensive Strategy• Freedom to Operate (FTO) – AKA product clearance – Assessing risk of infringing others – Conduct FTO: • As early in product development as practicable • Be mindful of FTO throughout R&D Copyright © 2007-2011 Frisina, LLC
  24. 24. Defensive Strategy• Licensing-in or purchasing IP – Making the decision to license-in – Risks of licensing – Typical negotiable terms • Commercialization requirements • Royalty payments • Term/duration • Geographic scope • Degree of exclusivity • Renewal option (nonexclusive/exclusive/sole) • Upfront payments • Field of use restrictions Copyright © 2007-2011 Frisina, LLC
  25. 25. Defensive Strategy• Defensive Publication – When: cost of patenting exceeds the benefit conferred – Cost: foregoing an exclusive right – Benefit: preserving your power to practice – Risk: inadvertent or ill-conceived disclosures Copyright © 2007-2011 Frisina, LLC
  26. 26. Defensive Strategy•Patent or publish? • Is it a core technology or incremental advance? • Do you actually intend to practice? • Would a patent block competitive activities? • Would your competitor benefit from it substantially? Copyright © 2007-2011 Frisina, LLC
  27. 27. Defensive Strategy• Defensive Publication – Typical Modes • Trade or technical journals • Private companies: Research Disclosure, IP.com • USPTO’s Statutory Invention Registration (SIR) – Beware of publishing on your website Copyright © 2007-2011 Frisina, LLC
  28. 28. Defensive Strategy• Contract – Nondisclosure agreements (NDA) • Every employee at that time of hire • Every other person that “needs to know” – Non-Compete agreements • Every employee at the time of hire • Outsourced prototyping, manufacturing, or anyone else who “needs to know” – Joint Development agreements • Rights/responsibilities/ownership of IP Copyright © 2007-2011 Frisina, LLC
  29. 29. Defensive Strategy• Defending against patent infringement – Comply/Settle – Self-financed defense – IP Insurance • defense policy • defense and indemnity policy Copyright © 2007-2011 Frisina, LLC
  30. 30. Defensive Strategy– Defensive patent aggregation services • Primarily for larger entities • RPX Corporation www.rpxcorp.com Copyright © 2007-2011 Frisina, LLC
  31. 31. Monetizing IP Copyright © 2007-2011 Frisina, LLC
  32. 32. Monetizing IP• Sale or Licensing-out – Non-core technology – Non-productive technology – Non-threatening technology• IP auction houses – www.redchalkgroup.com – www.adaptipventures.com – www.patenttransferltd.com Copyright © 2007-2011 Frisina, LLC
  33. 33. Monetizing IP• Securitization of IP – Bond issue – Backed by licensing or royalty revenues – Existing income stream required – ipCapital Group (www.ipcg.com) Copyright © 2007-2011 Frisina, LLC
  34. 34. Monetizing IP• Commercial lending – IP as collateral; must have “explicit” value – 10-40% LTV – Many banks do not make pure IP loans• Angel investors or venture capital – Usually based on the IP’s speculative or “implicit” value – Warning: VCs want to be in the driver’s seat Copyright © 2007-2011 Frisina, LLC
  35. 35. Ohio Economy; Innovation’s Launch Pad• Venture Capital investments up 20% since 2003, compared to 8% nationwide• Cleveland Metro (including Akron) has received over 40% of all DOD, Third Frontier, etc. funding statewide – over $1 billion since 2002.• This $1 billion of state incentive has leveraged some $10 billion in additional investment (private equity, bank financing, etc.) Copyright © 2007-2011 Frisina, LLC
  36. 36. IP’s Role in Funding Commercialization• Debt – Commercial lending: very few banks can use IP as collateral• Private Equity: Angels and Venture Capital – Driving IP valuation for trade or strategic exit: • Likelihood that the technology will actually work • Likelihood that the technology will be approved for market use • Size of the market opportunity; who and how many will eventually purchase the technology • Potential sales and royalties • Cost of developing and marketing the technology• Non-Dilutive Sources – Federal, State, Local funding Copyright © 2007-2011 Frisina, LLC
  37. 37. Federal SBIR/ STTR ProgramsFederal funding mechanism to support small businesses in: •Stimulating technological innovation •Developing products with commercial meritNational Institute of Health http://grants.nih.gov/grants/guide/index.htmlDepartment of Energy/ Office ofScience http://www.science.doe.gov/sbir/Funding.htmlDepartment of Defense/Congressionally Directed MedicalResearch http://cdmrp.army.mil/about/fundinghistory.shtmlNational Science Foundation http://www.nsf.gov/funding/pgm_list.jsp?org=NSF&ord=rcnt Copyright © 2007-2011 Frisina, LLC
  38. 38. Ohio Third Frontier Cluster Development Programs to support R&D that addresses the technical and cost barriers to commercialization in Ohio of advanced energy components and systems, with preference to wind, biomass, and energyAdvanced Energy Program storage. Jan-11 to support R&D that addresses the technical and cost barriers to commercialization in Ohio of advanced materials products with preference to polymer and carbon nano-materials, liquidAdvanced Materials Program crystals, and bio-based materials. Jul-11 to support R&D that addresses the technical and cost barriers to commercialization in Ohio of biomedical products, with preference to cardiovascular, regenerative medicine, andBiomedical Program orthopedics. Jul-11 to support R&D that addresses the technical and cost barriers to commercialization in Ohio of fuelFuel Cell Program cell and other advanced energy components and systems Jan-11 to assist Ohio companies in developing next generation products and services in targeted industry sectors by financing the acquisition, construction, and related costs of technology, facilities,Innovation Ohio Loan Fund and equipment. Rolling basis to support research and development that addresses the technical and cost barriers toMedical Imaging Program commercialization in Ohio of medical imaging components and systems Jul-11Ohio Research Commercialization Grant support accelerated Ohio commercialization by small companies awarded selected federal R&D Program funding Not accepting applications in 2010 to support R&D that addresses the technical and cost barriers to commercialization in Ohio ofPhotovoltaic Program photovoltaics components and systems. Jan-11 to support research and development that addresses the technical and cost barriers toSensors Program commercialization in Ohio of sensors components and systems supporting key Ohio industries Jul-11 to focus resources and incentives on the attraction of companies that can help build critical mass inTargeted Industry Attraction Grants selected growth industries in Ohio. Not an open solicitation Copyright © 2007-2011 Frisina, LLC
  39. 39. Thank YouFor Further Information www.frisinaIP.com Newsletters IP Owl Blog Slide Shows Contact Me (330)338-0589 Direct dominic@frisinaIP.com Copyright © 2007-2011 Frisina, LLC

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