The document discusses the evolving landscape of intellectual property (IP), highlighting significant events, trends, and strategies in the IP market. It emphasizes the economic importance of IP, particularly for startups, and examines the impact of legislation like the America Invents Act. The document also explores various IP monetization strategies and risk management for early-stage companies.

1. 2014 STEM Educator Academy
Emerging Landscape for Intellectual
Property
Dipanjan (DJ) Nag, Ph.D., MBA, CLP, RTTP
President and CEO, IP Shakti, LLC
Adjunct Faculty, Rutgers University
Visiting Professor, Shizuoka University

2. BACKGROUND

3. BACKGROUND
ClearView Diagnostics
Innovating For Life
35 Startups and >300 licenses

4. INTELLECTUAL PROPERTY: YOUR PRIME ASSET

5. Components of S&P 500 Market Value
Data: Ned Davis Research, Inc.
http://www.youtube.com/watch?v=3Uzmg2bEgv8&feature=player_embedded

6. Components of S&P 500 Market Value
Components of S&P 500® Market Capitalization
14,000
12,000
10,000
8,000
6,000
4,000
2,000
-
1973 1975 1977 1979 1981 1983 1985 1987 1989 1991 1993 1995 1997 1999 2001 2003 2005
S&P 500 Market Cap ($ '000s)
Market Premium
Intangible Book Value
Tangible Book Value
Data: Ned Davis Research, Inc.

7. Greed and fear drives any market

9. IP MARKETS
Emerging Trends

10. Ten things that changed the world of IP*
• Sale of Nortel’s portfolio for >$4.5 B
a. Sale of Kodak’s portfolio
b. Facebook acquisition of AOL patents/ Google buying Motorola Mobility
*In the last 30 years

11. Ten things that changed the world of IP*
Intellectual Ventures created – own >70,000 US patents

12. Ten things that changed the world of IP*
• IBM makes > $1 Billion from licensing intellectual property
• Technicolor > 650 Million

13. Ten things that changed the world of IP*
• P&G gets rid of the NIH (not invented here) syndrome
a. Rise of Open Innovation
b. Pharma has >80% of drugs from Universities

14. Ten things that changed the world of IP*
• The signing of Bayh-Dole act in 1980
a. Success of technology transfer

15. Technology Commercialization in Numbers*
15
Research
Funding
(~$693B)
~293,000
Invention
Disclosures
~152,000 Patent
Applications
~61,200 Patents
Awarded
67,102 active
license &
options,
7,781 start-ups
* Source AUTM Licensing Survey 1991-2011

16. Ten things that changed the world of IP*
Outsourcing of legal services – LPO, KPO, BPO

17. Ten things that changed the world of IP*
Rise of the Patent Trolls……

18. Ten things that changed the world of IP*
The rise of global market players BRIC and others…..

19. Ten things that changed the world of IP*
• The America Invents Act – IPR, CBM and other changes

20. Ten things that changed the world of IP*
• Apple v. Samsung and many other epic battles

21. INTRODUCTION
• Increased number of players in the IP market place.
• Non-performing entities making news.
• Telecommunications and pharmaceutical patent wars.
• Transactions in patents have increased by many folds and through a
varied genre of players.
• Economic significance highlights the mired dynamics.

22. This is not a Strategy!

23. Patent-lawsuit firm sues window makers
A New York firm claims that 10 companies are infringing on its patents for window-frame construction.
“We are looking for amicable cases, not just lawsuits,” said Robert Berman, president and CEO of
CopyTele Inc., the Melville, N.Y., parent company of the firm launching the lawsuits. Berman said in a
telephone interview that subsidiary J-Channel Industries Corp. also will pursue royalties from window
companies not named in the lawsuits.
Ten companies face civil suits in U.S. District Court in Knoxville, Tenn., after J-Channel filed its
complaint and suits Aug. 7.
J-Channel was created as a subsidiary of CopyTele to pursue alleged window-frame patent
infringement, Berman said. Copy¬- Tele’s primary business is “monetization and assertion of patents.”
Patent lawsuit comes home!

24. LAW OF “UNINTENDED CONSEQUENCES”
THE America Invents Act (AIA) Patent Reform Legislation

25. Do you know the changes?

26. New Rules to Invalidate Patents
Inter Partes Review
Covered Business Method Patents
Crowd comes to
patents

27. Rise of the “Reverse Trolls”

28. THE EVER CHANGING IP MARKET

29. IP development
CLASSIFICATION OF IP MARKETS VALUE CHAIN
IP sellers
IP facilitators
IP development & licensing
companies
IP Markets Value Chain
Defensive IP pools
IP aggregators
IP buyers
Patent Licensing & Enforcement
Companies
Single asserters Licensing agents Brokers Auctioneers Exchanges M&A advisory firms

30. VALUE CHAIN MAPPED TO QUADRANTS VALUE CHAIN MAPPED TO QUADRANTS

31. IP MANAGEMENT TRENDS
Corporate Strategy

32. IP Management for Companies
• Reduce
competition
• Patent
Trolling
• IBM Model
• Pure licensing
• NPEs vs. PAE
• Protect
Product
• Protect
Margin
• Increased
valuation
• Growth
• M & A
Strategic Defensive
Revenue Offensive

33. IP MANAGEMENT TRENDS
University Technology Transfer Strategy

34. Know your
BATNA
Best Alternative to Negotiated Agreement

35. IP negotiation – In a University Setting
First right to negotiate
First right of refusal
Exclusive Option
Non-exclusive license
NERF
Exclusive license
Exclusive royalty free
Assignment

36. IP Monetization Strategies
Licensing Selling
OTC
Litigation Auditing

37. Key Take Aways For Universities
IP Matters
 Not all IP is created equally!
 Focus on your claims, that is what makes it valuable
University claw back into IP
 If the startup fails who gets the IP?
 Improvements and fields of use
IP as a collateral
 Can you loan money on the IP?
Revenue strategy for an early stage startup
 Can you license the IP as a source of revenue?

38. BEG, BORROW AND BUILD: THE LEANER STARTUP
Adapting to the new model

41. It is all about risk mitigation
F&F • $25K-
$100K
Angel • $50K-
$250K
Series
A
• $500K-
$2MM
Series
B
• $2MM-
$25MM
IPO
Risk
Time
Key Risks are:
- Management risk
- Intellectual property risk
- Technology risk

42. Life Cycle of a Startup

43. Conclusions
- Intellectual property fuels the knowledge economy
- Startups are the projectiles for “disruptive innovation”
- Intellectual property as an asset class is here to stay