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IP Strategy and Licencing

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Fundamentals of patent strategy will lay the groundwork for a licensing program

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IP Strategy and Licencing

  1. 1. Intellectual Asset Management IP Strategy and MonetizationCME-STEP Export Insight Series March 9th and 10th, 2015 Peter Cowan, P.Eng, MBA Principal Consultant peter@ipstrategy.ca ipstrategy.ca
  2. 2. 1) IAM Thinking › Strategy Foundations › Patent Equality & Licensing › Patent Engine 2) Patents to Monetization › Business Drivers › License program methodology › Non-Practicing Entities 3) Discussion on key actions AGENDA
  3. 3. STRATEGY FUNDAMENTALS PATENT EQUALITY AND LICENCING PATENT ENGINE IAM THINKING STRATEGY 3
  4. 4. PATENT EQUALITY Setting a good foundation: Why yesterdays patent strategy will support tomorrow license plans. Percent of filings by volume of the portfolio Valueoftheportfolio 5% 75% 100% Patent Strategy Focus Patent valuegap 5% of distribution holds >95% of value
  5. 5. PATENT EQUALITY Patent portfolio Patents related to product offerings Valid patents Market essential patents Standard essential patents Patents supported by evidence of infringement Patents with validity and infringement Litigation grade Licensing grade Little value for Licensing Boardroom discussions: Increase value by understanding and addressing the potential business needs of a patent.
  6. 6. VENTURE VARIABLES › SME vs. MNE › Industry incumbents › Territory and geography › Emerging and mature markets › Technology development pace › Patent Value = Strength x Business x Time x Abilities where Strength = Breadth x Detectability x Legal
  7. 7. Three main components enable scalable and long term success of an IP program: IP FUNDAMENTALS STRATEG Y PROCESS PEOPL E Why? Strategy defines and leads to license opportunities.
  8. 8. BUSINESS DRIVERS & LICENSE PROGRAM METHODOLOGY NON-PRACTICING ENTITIES IAM MONETIZATION 8
  9. 9. BUSINESS & LICENCING › Internal Business – what is the intent? › Variables around exclusivity, territories, indemnification, right of enforcements, royalty structures, management of costs, etc… › Dealflow - connecting buyers and sellers › NPE’s as a case study – from patents to revenue
  10. 10. NPE IMPACTS › Role of NPE and impact on the license environment › NPE Trends: Flexibility, Opportunity, People › Active NPE and license dealmaker views
  11. 11. "The dilemma is this: If the portfolio is not open the families are hardened cement, and cannot be shaped. Licensing the after- effect limits the commercial value analysis. The patents lead the process, so it becomes about quality IP and a business approach, but with the intent to litigate if needed. SME’s need to collaborate more to give prosecution counsel a better picture of the market, otherwise they may prosecute in a vacuum. I look for families we can reshape to help match the licensing program, otherwise it becomes a ‘joint venture or cross-license for value’ exercise. SME LICENCING QUOTES
  12. 12. KEY ACTIONS › What is your actual environment? › Patent quality, pace, license options › Timing of filing strategy and license plans vs. portfolio. › IP Intelligence vs. IP Data vs. IP Metrics › What are objectives and resources? › Plans: Offensive, Cross-license, Monetization, etc.? › Business: People / Process / Strategy to succeed? › IP Audit: Does what you have match anything? › Portfolio: Open families to adjust, etc.? BusinessView Understand the business position
  13. 13. KEY ACTIONS › Understand the business × patent position Licensing Opportunity Addressable Market Geographical Scope × Patents: Volume of patents Quality of patents × IP Strategy: Future Extensions Portfolio coverage Risk Formula Decisio n BusinessView › Realistic risk formula › Decision is about risk tolerance and adjusted expectations Progra m › License Program
  14. 14. Thank you Peter Cowan, P.Eng, MBA Principal Consultant peter@ipstrategy © 2015 All Rights Reserved

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