Strategies for Protecting and Leveraging your IP


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  • Put Henry last
  • NOTES: The picture looks different if we highlight the relative effort and value it contributes. The single most important aspect is how you go about exploiting the innovation.
  • Strategies for Protecting and Leveraging your IP

    1. 1. © 2013 EverEdge IP. Confidential. Advisory Services 2013
    2. 2. Who are we?  New Zealand’s largest technology and intellectual property commercialisation firm.  Advisory: Advise how to commercialise technology. Client range: innovators to investors to Fortune 100 companies.  Transactions: Broker the sale and purchase of intellectual property assets. Deal range: 000,000 to 00,000,000.  Technology: Invest in and commercialise IP-rich technology. Technology range: all technologies - packaging to medical devices to software. We help our clients make money from ideas.
    3. 3. OUR TEAM. Prof. Henry Bolanos (CT, USA) Yale University, NPD & Innovation Invented key hole surgery, 110+ patents, ex VP R&D US Surgical Corp, Johnson & Johnson Paul Adams (Auckland) CEO & Founder Founded 1 of Top 10 incubators in world. IP Manager, BNT [NYSE: BC]. IAM300 Strategist. Paul Davies (Auckland) Director - IP Patent attorney; ex-Head of Patents for Deacons - largest law firm in Hong Kong. Steve Steger (IL, USA) Managing Partner, GIPLG US patent attorney, brokered sale of Nortel’s patents for US$4.5 billion. IAM300. Garry Reynolds (Auckland) Director - Commercialisation 30 years technology company experience incl. CEO, Motorola NZ. Principals / Senior Associates Minimum two degrees; highly experienced in law, technology & business. Dr. Chris Donegan (London) Director - Transactions Accenture, UBS, Euram Bank (AG) . PhD neuro- biology. 3x IAM 300 Strategist. Francis Rushford (CA, USA) Director - Licensing Executive VP, ICAP Capital Markets, Partner Christie Parker & Hale, Lucent, 6 x IAM300 Shirley Schaefer (Beijing) Director - Brand Brand Master, Represents over 40 luxury brands in China. Professor, Beijing University.
    4. 4. 1. Commercialising IP
    5. 5. Defining: “IP Commercialisation” What is IP Commercialisation?  Turning IP into economic or strategic value  The most common form is making or selling product that includes some form of IP in the Product or Brand
    6. 6. Outright Sale License Manufacture & Distribution Commercialisation Options Reward($value) Risk + Resource + Time  Total vertical integration  Outsource most processes
    7. 7. Strong vs Weak IP Strong IP Weak IP No one copies you. Everyone copies you. Sustainable margins. Product failure Product success No one copies you.
    8. 8. Defining: “IP Commercialisation”  Identification  Assessment  Development  Protection Exploitation IPC =  In terms of relative effort required and value contributed:
    9. 9. 2. What IP do I have? You can only value and use what you identify
    10. 10. How do I convert Intangible Assets into IP?  An intangible asset becomes a piece of “intellectual property” when it is converted into one of the recognised classes of intellectual property:  patent  registered trademark  registered design  plant variety  domain name  unregistered trademark  confidential information  trade secret  know how  copyright  integrated circuit layouts  embedded secrecy
    11. 11. IP Classes in terms of volume & value  Trade Secret / Confidential Info  Copyright  Unregistered trademarks  Registered TMs  Patents  Design Rights  Domain names  Plant Variety Rights  ICLs IP Protection = Not free Free
    12. 12. IP Asset Value “It is estimated that by 2007, as much as 90% of the value of the world’s top 2000 enterprises will consist of intellectual property” Building and Enforcing Intellectual Property Value, An International Guide for the Boardroom 2003 PriceWaterhouseCoopers Over the last ten years business growth from intellectual property investment has been bigger than that of business investment in their fixed capital 'The Role of Intellectual Property Rights in the UK Market Sector‘ 2011
    13. 13. If I identify it, do I own it? WARNING  IP Ownership on creation can vary with each type of IP  Agreements likely to dominate all  Read all contracts for supply, especially of services!  Do not assume your collaborator will recognise your input!  When in doubt ASK!
    14. 14. 3. The importance of assessment Do your Research
    15. 15. Most IP never commercialised  2004 study by Siemens estimated 90+% of all EPO patents never commercialised.  2002 P&G identified that 92% of its patents had “no business value of any kind to P&G”.
    16. 16. Not all IP is of equal value  I have identified I have some IP, but what is it worth?  Does the IP relate to a competitive advantage in your business/product/service?  Does it adequately protect that advantage?  What is that advantage worth to my business?  It all starts with assessment!
    17. 17. What do you learn from Assessment?  Freedom to Operate – identifies the restrictions on your ability to enter markets  Protection Scope – determine the scope of your IP by comparison with other IP, publications or marketed products
    18. 18. What will my competitors do?  Workarounds – Given the scope, what can competitors legitimately do to compete? Does this still leave you with a competitive advantage? Consider not only what is the same in form but also in result
    19. 19. I have some valuable IP!  Congratulations.  Your reward is a lot more hard work. BUT  With identification and good assessment, you can then protect with confidence.  Despite the hard work of exploitation, your chances of success have increased immeasurably.
    20. 20. 4. Case Studies There is always hope
    21. 21. Case Study: 500M units in 3 years. >> Innovator  Innovator approached EEIP with idea: cup can eat from without a spoon.  EEIP assessed idea > funded 18 months R&D: development technology to reduce plastic content by 35%.  Developed commercialisation strategy then executed plan: ‘07 licensed to industry leader in NZ, ‘09 to largest dairy player in world. Additional licenses added every six months.  RESULT: shipped 500M+ units. Royalty on every unit, revenue in 000,000’s. Client: Industry: Packaging Markets: USA Canada Argentina China Mexico Israel Russia Spain
    22. 22. CASE STUDY >> SMALL ENTERPRISE  Vineyard owner approached EE with innovative viticulture technology.  Assessed IP position, redirected R&D to improve IP then built strong Commercialisation Strategy.  NZ trials major success, identified & negotiated with 5 largest agricultural machinery players in world.  RESULT: licensed to major EU agri-machine manufacturer at > 10% royalty per machine. Won two major EU agri prizes. Retained NZ & AU manufacturing rights, moving into non- wine applications. Client: Industry: Agri-technology Markets: NZ Australia Europe Americas
    23. 23. Case Study: Failure to success >> Stalled Start Up  Early 2000s NZ software developed game changing technology, filed a patent.  Attempted to commercialise technology for three years from NZ but failed.  Approached EE in early 2011 with patent. EE evaluated patent and determined highly valuable. Worked to broker the sale of the patent.  Sold patent to Fortune 200 Silicon Valley company for US$14,000,000. Highest price ever paid for US patent in history.  Returned $45 for every $1 invested to shareholders. Client: NZ start up Industry: Software Markets: USA
    24. 24. EverEdgeIP Ltd. EverEdgeIP Ltd + 64 9 489 2331