IP Action Plan Manager-IP,  Company α
Presentation Plan Background & Objectives of the Company  α Patent Portfolio Sales Forecast IP objectives for Corporate objectives
Background & Objectives of the Company  α
Company Information Product A B C D E Technical feature commodity heterogeneous heterogeneous commodity heterogeneous Sales by α Co.Ltd. (2008) 0.7 0.15 0.15 0 0 Market size at present (2008) 3.5 0.2 0.15 1 0.1 Market size in future (2018) 3.5 1 5 3 5 No. of competitors (2008) 5 3 none 3 none
Company Objectives 2009 (1) Annual Sales Turnover: US$ 1.2 billion (2) Customer Satisfaction (3) Challenge heterogeneous product/business (4) Launch new product on the market (5) Human Resource Development & Improve Competency (6) Reduce Expense Long-Term Objectives 5 Times Sales Turnover within 10 years Company Objectives
Product Sales (USD Billions)
Market Growth
Competition and Market Growth
Market Growth Competition Product A Product B Product C Product D Product E Low Low High High Opportunity Analysis
Patent Portfolio
Patent Portfolio for Product A Pat No. Name of Invention Expiration Date Defense ability Offense ability Negotiation ability Corporate Image License situation Royalty Income Alliance ability P○○○○○ Process to produce commodity  2016 (8 more years) Low Low Low Good Poor Low Low P○○○○○ Packaging  for commodity 2018 (10 more years) Moderate Moderate Moderate Moderate Poor Low Moderate
Patent Portfolio for Product B Pat No. Name of Invention Expiration Date Defense ability Offense ability Negotiation ability Corporate Image License situation Royalty Income Alliance ability P○○○○○ Heterogeneous product (product patent) 2019 (11 more years)  Good Good Good Moderate Moderate P○○○○○ Process for heterogeneous 2019 (11 more years) Good Good Good Moderate Moderate P○○○○○ Packaging for heterogeneous 2021 (13 more years) Good Good Good Moderate Moderate
Patent Portfolio for Product C Pat No. Name of Invention Expiration Date Defense ability Offense ability Negotiation ability Corporate Image License situation Royalty Income Alliance ability P○○○○○ Heterogeneous product (product  patent) 2019 (11 more years) Very good Very good Very good Very good Good Good Good P○○○○○ Process to produce heterogeneous product 2019 (11 more years) Very good Very good Very good Very good Good Good Good
Patent Portfolio for Product D Pat No. Name of Invention Expiration Date Defense ability Offense ability Negotiation ability Corporate Image License situation Royalty Income Alliance ability P○○○○○ Commodity (Patent Product) 2024 Good Good Good Good Good Moderate Good P○○○○○
Patent Portfolio for Product E Pat No. Name of Invention Expiration Date Defense ability Offense ability Negotiation ability Corporate Image License situation Royalty Income Alliance ability Integration level P○○○○○ Heterogenous (Patent Process) 2025 Very Good Very Good Very Good Very Good License out (very good) High Very Good P○○○○○ Heterogenous (Patent Product) 2025 Very Good Very Good Very Good Very Good License out (very good) High Very Good
Sales Forecast
Sales Forecast   Product Expiry 2008 2009 2010 2011 2012 2013 2014 2015 2016 2017 2018 Product A 2016.00 0.70 0.72 0.74 0.75 0.76 0.77 0.78 0.79 0.80 0.50 0.20 Product B 2019.00 0.15 0.16 0.25 0.35 0.40 0.50 0.55 0.60 0.62 0.65 0.68 Product C 2019.00 0.15 0.35 0.50 0.70 1.00 1.30 1.80 2.20 2.60 2.70 2.80 Product D 2024.00 0.00 0.00 0.00 0.10 0.20 0.30 0.40 0.50 0.60 0.70 0.80 Product E 2025.00 0.00 0.00 0.20 0.45 0.90 1.25 1.40 1.55 1.85 1.90 2.00 Total Revenue 1 1.23 1.69 2.35 3.26 4.12 4.93 5.64 6.47 6.45 6.48 % Growth   23 37.4 39.05 38.7 26.4 19.7 14.4 14.7 -0.3 0.47
Contribution to Estimate Sales IP Activities Strengthen product values and brand image through patented technology. Technology synergy / product synergy. Strengthen sale, marketing and services through fostering IP culture and respect for IP among staff in these segments. Promoting utilization, commercialization of patented technologies.
IP as Sales Catalyst Acquisitions Licensing Research Collaboration Developing spin-off technologies around the core areas.
IP objectives for Corporate objectives
Vision & Mission Challenges for the Company Increased sales Customer Satisfaction Challenge heterogeneous product/business Launch new product on the market Human Resource Development & Improve Competency Cost cutting Technology Portfolio 1. Observe 2. Study 3. Invest 4. Optimize 5. Divest Patent Portfolio 1. Explore 2. Generate 3. Protect 4. Optimize 5. Decline Take Action •  Prioritisation of activities •  Planning of activities •  Execution of activities •  Measurement of effectiveness St. Gallen approach to Strategic Management Of Patent Portfolios
IP Objectives inline with Corporate objectives Strengthen IP Structure Concentrate R&D development in line with growth strategy Developing network between segments/departments  Patent Prosecution to safeguard the IP of the company. Working with partners to develop new technologies. Panning and implementation of IP procedures effectively. Identify and develop new ideas from the R & D and generate IP. Cost reduction in various IP activities such as Patent searching,       Drafting  and Prosecution and Attorney Fees.
List of Ideas on IP activities for Corporate Objectives Fostering IP culture as corporate strategy, IP dissemination and awareness among departments Good personnel management (HR) to combat leakage of technology and infringement on trade secret Good information management Motivate employee’s invention, innovation,  Improve quality, production and reduce cost through utilization of IP information or patented technology Licensing in, licensing out, cross licensing with business partners IP Enforcement
KPI on IP Activities KPI on IP Activities   Number of applications file by the company.   Number of patent granted and successfully commercialized.   Total revenue generate as a result of IP Activity (licensing out).   Increase in turnover (as a result of IP activity).   Number of IPR infringement/enforcement cases.   Reduction in cost (as a result of implementation of IP strategies).
Inter Departmental Communications 1. Research Teams:  -to research and develop technology in line with corporate objectives 2. Corporate Planning: -to develop clear strategy and direction of the company 3. Finance: -to provide financial support for R&D projects/activities -to provide financial support for filing for protection of IPR, prosecution and    maintenance of IPR 4. Quality: to improve quality control measures to ensure customer  confident and satisfaction on our products/services
5. HR & Administration: To develop employment guideline and ownership on employee’s invention (employment contract) Good management of employee to avoid/combat leakage of technology and infringement of trade secrets To fostering IP culture and create IP awareness and respect for IPR Provide incentive for new invention proposed/invent by the employee 6. Sale and Marketing: -To ensure that IPR is secured prior to launching/marketing/disclosing of new  technology -To incorporate IP aspects into products to make the customer appreciate/satisfy  with our product (i.e. environmentally friendly  technologies) 7. IP: - To develop good information management ; monitoring and assessment of IPR. Inter Departmental Communications….
Audit System on IP Activities The goal of the audit is to evaluate each IP asset in terms of present corporate objectives. Since corporate objectives change over time, it is expected that some existing IP assets will no longer be key to current corporate goals.  These assets can then be exploited to: Generate new revenue via sale or licensing, or Reduce expenses via IP donations or abandonment Each phase of the audit is reviewed by key members of each relevant business unit, including marketing and legal.  The key tasks of the audit include: IP Asset Identification IP profiling ROI Assessments
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Ip Action Plan

  • 1.
    IP Action PlanManager-IP, Company α
  • 2.
    Presentation Plan Background& Objectives of the Company α Patent Portfolio Sales Forecast IP objectives for Corporate objectives
  • 3.
    Background & Objectivesof the Company α
  • 4.
    Company Information ProductA B C D E Technical feature commodity heterogeneous heterogeneous commodity heterogeneous Sales by α Co.Ltd. (2008) 0.7 0.15 0.15 0 0 Market size at present (2008) 3.5 0.2 0.15 1 0.1 Market size in future (2018) 3.5 1 5 3 5 No. of competitors (2008) 5 3 none 3 none
  • 5.
    Company Objectives 2009(1) Annual Sales Turnover: US$ 1.2 billion (2) Customer Satisfaction (3) Challenge heterogeneous product/business (4) Launch new product on the market (5) Human Resource Development & Improve Competency (6) Reduce Expense Long-Term Objectives 5 Times Sales Turnover within 10 years Company Objectives
  • 6.
  • 7.
  • 8.
  • 9.
    Market Growth CompetitionProduct A Product B Product C Product D Product E Low Low High High Opportunity Analysis
  • 10.
  • 11.
    Patent Portfolio forProduct A Pat No. Name of Invention Expiration Date Defense ability Offense ability Negotiation ability Corporate Image License situation Royalty Income Alliance ability P○○○○○ Process to produce commodity 2016 (8 more years) Low Low Low Good Poor Low Low P○○○○○ Packaging for commodity 2018 (10 more years) Moderate Moderate Moderate Moderate Poor Low Moderate
  • 12.
    Patent Portfolio forProduct B Pat No. Name of Invention Expiration Date Defense ability Offense ability Negotiation ability Corporate Image License situation Royalty Income Alliance ability P○○○○○ Heterogeneous product (product patent) 2019 (11 more years) Good Good Good Moderate Moderate P○○○○○ Process for heterogeneous 2019 (11 more years) Good Good Good Moderate Moderate P○○○○○ Packaging for heterogeneous 2021 (13 more years) Good Good Good Moderate Moderate
  • 13.
    Patent Portfolio forProduct C Pat No. Name of Invention Expiration Date Defense ability Offense ability Negotiation ability Corporate Image License situation Royalty Income Alliance ability P○○○○○ Heterogeneous product (product patent) 2019 (11 more years) Very good Very good Very good Very good Good Good Good P○○○○○ Process to produce heterogeneous product 2019 (11 more years) Very good Very good Very good Very good Good Good Good
  • 14.
    Patent Portfolio forProduct D Pat No. Name of Invention Expiration Date Defense ability Offense ability Negotiation ability Corporate Image License situation Royalty Income Alliance ability P○○○○○ Commodity (Patent Product) 2024 Good Good Good Good Good Moderate Good P○○○○○
  • 15.
    Patent Portfolio forProduct E Pat No. Name of Invention Expiration Date Defense ability Offense ability Negotiation ability Corporate Image License situation Royalty Income Alliance ability Integration level P○○○○○ Heterogenous (Patent Process) 2025 Very Good Very Good Very Good Very Good License out (very good) High Very Good P○○○○○ Heterogenous (Patent Product) 2025 Very Good Very Good Very Good Very Good License out (very good) High Very Good
  • 16.
  • 17.
    Sales Forecast  Product Expiry 2008 2009 2010 2011 2012 2013 2014 2015 2016 2017 2018 Product A 2016.00 0.70 0.72 0.74 0.75 0.76 0.77 0.78 0.79 0.80 0.50 0.20 Product B 2019.00 0.15 0.16 0.25 0.35 0.40 0.50 0.55 0.60 0.62 0.65 0.68 Product C 2019.00 0.15 0.35 0.50 0.70 1.00 1.30 1.80 2.20 2.60 2.70 2.80 Product D 2024.00 0.00 0.00 0.00 0.10 0.20 0.30 0.40 0.50 0.60 0.70 0.80 Product E 2025.00 0.00 0.00 0.20 0.45 0.90 1.25 1.40 1.55 1.85 1.90 2.00 Total Revenue 1 1.23 1.69 2.35 3.26 4.12 4.93 5.64 6.47 6.45 6.48 % Growth   23 37.4 39.05 38.7 26.4 19.7 14.4 14.7 -0.3 0.47
  • 18.
    Contribution to EstimateSales IP Activities Strengthen product values and brand image through patented technology. Technology synergy / product synergy. Strengthen sale, marketing and services through fostering IP culture and respect for IP among staff in these segments. Promoting utilization, commercialization of patented technologies.
  • 19.
    IP as SalesCatalyst Acquisitions Licensing Research Collaboration Developing spin-off technologies around the core areas.
  • 20.
    IP objectives forCorporate objectives
  • 21.
    Vision & MissionChallenges for the Company Increased sales Customer Satisfaction Challenge heterogeneous product/business Launch new product on the market Human Resource Development & Improve Competency Cost cutting Technology Portfolio 1. Observe 2. Study 3. Invest 4. Optimize 5. Divest Patent Portfolio 1. Explore 2. Generate 3. Protect 4. Optimize 5. Decline Take Action • Prioritisation of activities • Planning of activities • Execution of activities • Measurement of effectiveness St. Gallen approach to Strategic Management Of Patent Portfolios
  • 22.
    IP Objectives inlinewith Corporate objectives Strengthen IP Structure Concentrate R&D development in line with growth strategy Developing network between segments/departments Patent Prosecution to safeguard the IP of the company. Working with partners to develop new technologies. Panning and implementation of IP procedures effectively. Identify and develop new ideas from the R & D and generate IP. Cost reduction in various IP activities such as Patent searching,      Drafting and Prosecution and Attorney Fees.
  • 23.
    List of Ideason IP activities for Corporate Objectives Fostering IP culture as corporate strategy, IP dissemination and awareness among departments Good personnel management (HR) to combat leakage of technology and infringement on trade secret Good information management Motivate employee’s invention, innovation, Improve quality, production and reduce cost through utilization of IP information or patented technology Licensing in, licensing out, cross licensing with business partners IP Enforcement
  • 24.
    KPI on IPActivities KPI on IP Activities   Number of applications file by the company.   Number of patent granted and successfully commercialized.   Total revenue generate as a result of IP Activity (licensing out).   Increase in turnover (as a result of IP activity).   Number of IPR infringement/enforcement cases.   Reduction in cost (as a result of implementation of IP strategies).
  • 25.
    Inter Departmental Communications1. Research Teams: -to research and develop technology in line with corporate objectives 2. Corporate Planning: -to develop clear strategy and direction of the company 3. Finance: -to provide financial support for R&D projects/activities -to provide financial support for filing for protection of IPR, prosecution and maintenance of IPR 4. Quality: to improve quality control measures to ensure customer confident and satisfaction on our products/services
  • 26.
    5. HR &Administration: To develop employment guideline and ownership on employee’s invention (employment contract) Good management of employee to avoid/combat leakage of technology and infringement of trade secrets To fostering IP culture and create IP awareness and respect for IPR Provide incentive for new invention proposed/invent by the employee 6. Sale and Marketing: -To ensure that IPR is secured prior to launching/marketing/disclosing of new technology -To incorporate IP aspects into products to make the customer appreciate/satisfy with our product (i.e. environmentally friendly technologies) 7. IP: - To develop good information management ; monitoring and assessment of IPR. Inter Departmental Communications….
  • 27.
    Audit System onIP Activities The goal of the audit is to evaluate each IP asset in terms of present corporate objectives. Since corporate objectives change over time, it is expected that some existing IP assets will no longer be key to current corporate goals. These assets can then be exploited to: Generate new revenue via sale or licensing, or Reduce expenses via IP donations or abandonment Each phase of the audit is reviewed by key members of each relevant business unit, including marketing and legal. The key tasks of the audit include: IP Asset Identification IP profiling ROI Assessments
  • 28.