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Icle group slides2012-1


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Icle group slides2012-1

  1. 1. EFFECTIVE COPYRIGHT STRATEGY:A HOLISTIC APPROACH TO IPPORTFOLIOS!Katherine C. Spelman Sharon L. Oriel Edward A. Ketterer IIICobalt, LLP Talisker & Associates Ketterer Consulting PLLCBerkeley, CA Glen Arbor, MI Northport, MI ICLE’s 38th Annual IP Law Summer Institute July 19-21, 2012 Ketterer Consulting PLLC Talisker&Assoc.
  2. 2. Use competitive patent data to assessyour strategy and activity level:!• Versus the industry as a whole, or against a key competitor"• Differences in product emphasis "• Activity over a given time period or all unexpired patents Ketterer Consulting PLLC Talisker&Assoc.
  3. 3. The Technology Stage of inventionscovered by recent patent applicationscan be used at a high level to: !• Assess consistency of IP counsel linkage across the company’s operations"• Identify basic functional areas where IP support needs to be focused"• Identify overall portfolio trends and compare with company strategy Ketterer Consulting PLLC Talisker&Assoc.
  4. 4. The Technology Stage of inventionscovered by recent patent applicationscan be used at a high level to: !• Assess consistency of IP counsel linkage across the company’s operations"• Identify basic functional areas where IP support needs to be focused"• Identify overall portfolio trends and compare with company strategy Ketterer Consulting PLLC Talisker&Assoc.
  5. 5. Technology Phase Analysis Can Be UsedTo:!• Focus product development activity on products that are “stale”"• Focus patent activity on products where the portfolio is weak"• Assess a competitor’s portfolio 12 TECHNOLOGY STAGE OF 2011 PATENTS 10 8 6 Number Filed 4 2 0 Early Stage Intermediate Stage Late Stage Ketterer Consulting PLLC Talisker&Assoc.
  6. 6. Use selected criteria from the listsbelow to build a unique patent filingstrategy for your company or client.These are applicable to both utility anddesign patents.! •  General Patent Filing Criteria (basic reasons to file) –  Prevent competitive copying (active offense; enforcement) –  Send a message/create a reputation that discourages copying (passive offense) –  Marketing claims--"patent pending," "patented," "exclusive," etc. –  Establish/enhance company reputation as an innovation leader –  Added patent for an existing portfolio--"fence building" –  Control third parties (designers, development partners, suppliers, etc.) –  Cross licensing (defense; dispute resolution) –  Licensing for value –  Attract investors/venture capital –  Employee (designer, inventor) recognition Ketterer Consulting PLLC Talisker&Assoc.
  7. 7. Combine basic filing criteria withinvention-specific filing criteriawhen making individual filingdecisions.! •  Invention-Specific Filing Criteria  –  Anticipated product volume –  Product margin –  Life of product--how long in the line? –  Iconic or breakthrough product? –  Strategic importance of product category (related to volume, but not quite the same) –  Apparent amount of novelty, originality (scope of protection) –  Likelihood of competitive copying –  Correlation between what can be protected and the primary product appeal to customer Ketterer Consulting PLLC Talisker&Assoc.
  8. 8. Example—StrategicMapping of Competitive! 5High 4 Company C Company A Company BPatent Quality 3 2 Company D 1 Company E 0 1 2 3 4 5 Low User Benefit High Talisker&Assoc. Ketterer Consulting PLLC
  9. 9. Start with CorporateVision & Mission!•  Mission is why the company exists•  Vision is the company of the future•  Strategy is a deliberate plan of actions•  Objectives are usually longer term•  Goals are short term (1 year)•  What is the role of intangibles in meeting the corporate goals & objectives? Ketterer Consulting PLLC Talisker&Assoc.
  10. 10. Strategy Alignment! Mission Vision Strategy Bus. Strategy “IP” Strategy“IP” Systems “IP” organization Ketterer Consulting PLLC Talisker&Assoc.
  11. 11. Business Strategy!•  What is your business? You may not need patents. Consider trade secrets, copyrights, publications, standards. •  What are the market place rules? What countries do you play in?•  Where is the business in the supply chain? Ketterer Consulting PLLC Talisker&Assoc.
  12. 12. Business Strategy!•  Proactive Strategy: create a business with sustainable competitive advantage based on intangibles•  Access external technology to speed up market entry•  Set realistic goals with realistic resources•  Share the credit for the $$$$ Ketterer Consulting PLLC Talisker&Assoc.
  13. 13. “IP” Strategy: Value CreationObjectives! “IP” Strategy Value Extraction Talisker&Assoc. Ketterer Consulting PLLC
  14. 14. Potential Objectives!•  Protection of innovations•  Design Freedom•  Litigation Avoidance•  Basis for alliances and JV’s•  Commercialization•  Enhanced image of firm Ketterer Consulting PLLC Talisker&Assoc.
  15. 15. Portfolio Analysis &Alignment!•  What is in your portfolio?•  How are you using your portfolio?•  Who owns the IP? •  Licensing potential: in & out licensing•  Document your portfolio analysis & alignment and keep it up to date•  Report the $$$$$$: Income & Expense Ketterer Consulting PLLC Talisker&Assoc.
  16. 16. IP PortfolioAlignment!•  Aligning IP portfolio with corporate vision, strategy and objectives provides a business focus •  New revenue opportunities are visible•  IP with little value is abandoned (cost savings) Ketterer Consulting PLLC Talisker&Assoc.
  17. 17. Business ImpactMeasures!•  Show the VALUE of intangibles - NPV of value growth and preservation segments - % of current sales protected by IP - % of new products protected by IP - $ Value of IC contributions to M&A•  Manage the COST of intangibles - Projected costs to obtain & maintain the IP - % of IC management costs of R&D, sales, etc. - Ratio of costs versus value of IC for a business Ketterer Consulting PLLC Talisker&Assoc.
  18. 18. Business related IP metrics:Few companies measure!1. Inventory of all differentiated know-how and trade secrets2. Licensing revenue generated from know-how and trade secrets in the last calendar or fiscal year3. List of key inventors in the company4. List of key inventors in your technology space5. Do you identify, track and investigate white space opportunities?6. Do you calculate the value of your brand(s)? Ketterer Consulting PLLC Talisker&Assoc.
  19. 19. Strategic Alignment!•  Five Points to Remember: 1.  Start with the Corporate Vision & Strategy 2.  Align the intangibles portfolio with the business strategy 3.  Create systems and organization after strategic alignment 4.  Communicate the aligned strategy 5.  Show the $$$$$$ Ketterer Consulting PLLC Talisker&Assoc.
  20. 20. Key Roles in IAOrganizationalModels! Legal Business Marketing R&D StrategyIA Inventor Communicat Submit Prioritized Provideidentification e trademark research corporate education strategy ideas goalsPatent Manage Align app’l Provide Perfect Checkprosecution legal work with strategy comp. info claims alignmentPortfolio Legal Classify use Develop Future IA ReassessManagement expertise brand value alignmentLicensing Agt. drafts Provide Benefits of Tech Policy business deal transfer termsM&A Due Opport. ID Brand Value Synergy Corporate diligence Value Ketterer Consulting PLLC Talisker&Assoc.
  21. 21. QUESTIONS?!THANK YOU!! Ketterer Consulting PLLC Talisker&Assoc