Certificate in IPR Management Lecture 3
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This is part of a Certificate in IPR Managemen given by the Law Society of Ireland. Summer 2013
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Certificate in IPR Management Lecture 3
- 2. Outline • Recap • Strategy Overview • IP Audit • Searching • Strategy formation • Implementation
- 3. Patent Space Monetize Exclude Interact Licence Sell Collateralise Enforcement Threat Access other innovation Leverage Standards Interoperability
- 5. Defensive Patents Trade Marks Know-How Relationships Conflict Avoidance/Resolution • Protection (exclude others) • Design Freedom • Cross-licensing (defensive) • Litigation bargaining power • Protection (exclude others) • Protection (trade secret) N/A Offensive Revenue Generation • Products and Services: Sales, Licensing, JV, Optimisation of core tech, Value from non-core tech, Integration • Patents: Sales, Licenses, Infringement policing • Increased bargaining power (e.g. suppliers, customers, affiliates, JV partners) • Market penetration • Increased speed to market • Products and Services: Sales, JV, Alliance • TM: Sales, licensing, co- branding, Infringement policing • Sales • Licenses • JV • Strategic Alliances • Integration • Increased speed to market • Product and services sales Cost Reduction • Litigation avoidance • Access to technology of others • Improved knowledge transfer • Reduce knowledge gaps • Litigation avoidance • Access to tech of others • Litigation avoidance • Improved knowledge transfer • Reduced marketing costs Strategic Position • Reputation/image • Exclusivity/blocking • Barrier to competition • Supplier control • Customer control • Optimization of core technology • Name recognition • Customer Loyalty • Barrier to comp • JV • Alliance • Reputation/image • Barrier to entry • Reputation/Image • Customer loyalty • Barrier to entry Adapted from “Edison in the boardroom revisited” S Harrison and P Sullivan 2012
- 8. Strategy Overview Objective Information Strategy Implementation
- 9. Example: Juniper Networks • Juniper is not in the business of IP it is in the business of selling products • IP strategy has to support the business strategy by: – Counter assertion against operating companies – Sustaining competitive advantage – Preventing copying/reverse engineering
- 10. Strategy Overview Objective Information Strategy Implementation
- 11. Categories of Information • Business • Technology • Existing IP • IP Landscape • Resources
- 12. www.newmorningip.com +353 1 254 2340 IP Audit External Internal
- 13. www.newmorningip.com +353 1 254 2340 Source: WIPO Source: WIPO
- 14. www.newmorningip.com +353 1 254 2340 External • Patent searching and landscape • TM databases • Design right filings • Competitive intelligence
- 16. Strategy Overview Objective Information Strategy Implementation
- 18. – first 15 years • 1991 startup • 2002 Launches first GPS navigation product • 2004 first standalone portable device • 2004-2005 7x growth • 2005 NYSE/Euronext Amsterdam listing • 2006 TomTom aggressively enters US threatening Garmin’s 50% market share
- 19. State of Play 2006 0 50 100 150 200 250 300 Garmin TomTom 0 100 200 300 400 500 600 Garmin TomTom US revenues ($M) Granted US Patents
- 20. – what happened next • Crisis in the company • Hired a Director of IP Strategy (Peter Spour) • Bought three patents • Countersued against Garmin • 2007 Settled all WW litigation with Garmin • Developed a patenting strategy • Began targeted patenting
- 21. - now thriving • 2009 Sued by Microsoft Corp • Settled with cross-licence • 4X US revenue increase 2006-2010 • Firmly established as #2 in US with appropriate patent portfolio • Approx. 5-10 patent litigations in progress
- 22. TomTom’s patenting activity 0 20 40 60 80 100 120 140 160 180 200 WW Patenting Activity 2003 2005 2007 2009 Garminsuit2006
- 23. Strategy Overview Objective Information Strategy Implementation
- 25. Protecting the Core New Initiatives Growing the core IAM Conservative Progressive Aggressive Protect 75% 60% 45% Grow 15% 20% 25% New 5% 12% 20% IAM 5% 8% 10% Adapted from “Harvesting Intangible Assets” A Sherman 2012 Priorities
- 26. Review Criteria • Is there existing prior art? • Does the invention have commercial potential • Is the invention patentable? • Can it serve or strategic purpose? • Will a patent on this deliver a business advantage? • Do we have other competitive advantages that reduce or enhance the need for a patent? • Does a patent on this invention support our position in the technology space • Are willing to litigate over this patent if challenged • Can we detect an infringement of this patent? • Are the business, legal and technical risks acceptable? • Would the invention be useful to someone else? • Does it relate to a standard? • Does it align with filing targets?
- 27. Prepare for Implementation • 6 P’s – Policy for IP management – Personnel practices – Portfolio management practises – Procurement practises – Partnering practises – Policing activities
- 28. Resources • Are you sure you have a strategy? – http://bit.ly/hRxc0w • INTIPSA TIPS series – http://www.intipsa.com/45-resources/briefing-notes/95- briefingnotes.html • Books – Driving Innovation by Micael A Gollin – Edison in the Boardroom Revisited by Suzanne S Harrison and Patrick H Sullivan – Burning the Ships by Marshal Phelps and David Klein – The Defense of the Mieza Chip by Robert Cantrell and Duncan Bucknell
- 29. APPENDIX
- 33. SO - WHAT NEEDS TO BE DONE?
- 34. Rationale • Patent risks for growing business • Move from service to product based model • Signalling value to investors
- 35. The Business Model Investors Prefer, MIT Sloan Management Review June 22 2011
- 36. Business Value • Defence • Cost avoidance • Revenue Generation • Strategic
- 37. 37 What needs to change? Business Value Business IP Technology Creation Business Technology Now Future CIPO
- 38. New Processes
- 39. Proposal Phases
- 40. Phase 1: Consolidate Position • Strategy capture • Initial positioning landscape • Preliminary portfolio specification • Process development • IP awareness training and development
- 41. Phase 2: Managed Portfolio • More detailed patent landscape • Mapping and planning patent portfolio • Screening criteria & process development • IP office development, metrics & reporting • Prototype “make vs buy” • Begin systematic innovation training
- 42. Phase 3: Value Capture • Go beyond purely defensive forms of value • Define what value means for Openet • Relate to business strategy • Define IP office support • CIPO role becomes defined • Build a credible IP value proposition for investors
- 43. Phase 4: Synthesis • More productivity throughout entire patent value chain • Deepen impact on Openet • Regular use of patents for CI • Patent attorney on staff • Difference between invention and innovation • Expand systematic innovation capabilities
- 44. Phase 5: Create the Future • Patents used as strategic options • Value of all elements of portfolio understood • Patent strategy and process reviewed regularly
- 45. fred.logue@newmorningip.com +353 (0)1 254 2340 l www.newmorningip.com l @newmorningip