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Intellectual property (IP) management: organizational
processes and structures, and the role of IP donations
Bo Carlsson Æ Monica Dumitriu Æ Jeffrey T. Glass Æ
Craig Allen Nard Æ Richard Barrett
Ó Springer Science+Business Media, LLC 2008
Abstract This paper examines intellectual property (IP) management in U.S. companies
and addresses three questions: What are typical sources of IP? How do companies manage
IP? What role do donations of IP play in IP management? We used in-depth interviews and
an on-line survey to gather data. We found that firms develop their IP position from a wide
variety of sources such as joint ventures, acquisitions, and consulting contracts, but internal
development is still the primary source of IP. Organizationally, three structural archetypes
of IP management were identified: a centralized structure, a purely decentralized IP
structure and a compromise structure involving a divisional assignment where a multi-
business unit or division committee oversees IP. IP donations clearly do not appear to be a
major phenomenon at the present time. Our survey results suggest that tax benefits are an
important driver and that recent tax law changes have diminished the incentives to donate
IP. The uncertainty of tax benefits and the costs associated with IP valuation appear to be
the main disincentives.
Keywords Intellectual property Á Management Á Sourcing Á Organization Á
Donations
B. Carlsson (&) Á M. Dumitriu
Department of Economics, Weatherhead School of Management, Case Western Reserve University,
11119 Bellflower Road, Cleveland, OH 44106-7235, USA
e-mail: Bo.Carlsson@case.edu
J. T. Glass
Department of Electrical and Computer Engineering, Pratt School of Engineering,
Duke University, 213 Hudson Hall, Science Drive,
Box 91300, Durham, NC 27708-0300, USA
C. A. Nard
School of Law, Case Western Reserve University, 11075 East Boulevard,
Cleveland, OH 44106-7148, USA
R. Barrett
Barrett Consulting, Inc., 339 Bentleyville Road, Moreland Hills, OH 44022, USA
123
J Technol Transfer
DOI 10.1007/s10961-008-9082-2
JEL Classifications D21 Á D23 Á K34 Á L10 Á L22 Á L24
1 Introduction
Intellectual property (IP) management issues are gaining increased attention from corpo-
rations that are scrutinizing their portfolios searching for a better return on investment in
technology and R&D. Patents have become an important responsibility for managers in
technology-based companies as well as an important part of justifying R&D expenses (see
Arora et al. 2003). In a comprehensive strategy, reasons for patenting have been shown to
extend beyond direct profit from the invention to blocking, cross licensing, and prevention
of law suits (Cohen et al. 2000). Given the importance and value of patents and, more
generally, intellectual property, many firms are increasingly realizing the value of their IP
department. These departments possess unique strategic information about the firms’
business units. An IP Integrated Management System (IPIMS) has been proposed in the
literature to take advantage of the unique position of the IP Department (Daizadeh 2003).
Utilizing the IP department as a repository of knowledge and a bridge between R&D and
market information are important aspects of this system. Other studies have focused on the
legal aspects of protecting IP, decision-making processes for IP, utilization of software to
assist with IP management and even compensation systems which enhance IP (Ruston
1996; Spector and Zuckerman 1997; Wolf 1999; Teece 2000; Xu et al. 2001; Ernst and
Soll 2003; Pauly 2003).
The research presented in this note focuses on three questions:
• What are typical sources of IP?
• How do companies manage IP?
• What role do donations of IP play in a company’s IP management?
2 Description of the data and methodology
A case study methodology was utilized with a sample of 15 companies in Northeast
Ohio. Semi-structured interviews were conducted on site at each of the companies. The
data were analyzed using standard procedures for qualitative analysis (Eisenhardt 1989;
Larsson 1993). At least two members of the research team were present at each inter-
view, which normally took about 1.5 h. The interview guide is available upon request.
The 15 companies were chosen from an initial list of 100 technology-based companies in
Northeast Ohio generated from previous research by one of the authors (RB). Twenty-
five companies that were judged likely to be involved with generating and protecting IP
were then selected to participate in the study. Of these, we were able to arrange inter-
views at the chief technology officer or IP manager (or IP counsel) level at 15 of these
companies; eight public and seven private. The companies ranged in size from about 25
employees to 95,000 and in age from start-ups to companies 135 years old. Five
industries (reflecting areas of relative strength in the regional economy) were primary
targets: (1) instruments and electronics, (2) biotechnology/biomedicine, (3) polymers and
advanced materials, (4) software, and (5) industrial machinery. The companies agreed to
participate in this study on the condition of anonymity, and thus their names are
withheld.
B. Carlsson et al.
123
3 What are typical sources of IP?
The first set of questions in the interviews related to the sources of IP. The interview results
show that the vast majority of IP in the sample firms was obtained from in-house devel-
opment. In all but three of the interviewed firms, technology development was centralized
in a central R&D group, with some functions decentralized to the division level.
The interviewed companies were much more focused on in-house technology devel-
opment than on acquiring technology or IP from outside the firm. This was generally true
for all the interviewed firms, but technology acquisition from outside played a more
prominent role in the smaller companies. In fact, some of the smaller companies started
with external (licensed) technology, but subsequently relied primarily on internally
developed technology for most of their needs. Several of the smaller companies continued
to assign personnel to systematically look for external technology. As a consequence, the
smaller companies were, surprisingly, looking more systematically at technology acqui-
sition opportunities and were better organized to acquire technology from outside than the
larger companies. This may be related to the fact that new technology developments were
central to the survival of the small firms and thus represented a more immediate need than
in the larger companies.
Only two companies relied exclusively on in-house R&D. All the other companies
relied at least to some extent on external sources. Joint ventures/alliances were the most
commonly cited source of external technology (eight mentions), followed by acquisition of
companies (seven mentions), acquisition of licenses and consulting/contract R&D (six
mentions each). Joint ventures were never mentioned as the most important source of
external technology. Instead, acquisition of companies was the most important source of
external technology in four cases, while contract R&D played that role in three cases and
acquisition of licenses in two cases.
Few companies pursued a strategy of regularly licensing external technology except for
a small fraction of their needs. In cases where external technology was obtained, it was
primarily in non-core areas. In general there was a trend toward making better use of, and
being more open to, external technology. Some companies obtained technology by
acquiring other companies, although the primary driver for the acquisition was just as
likely to be distribution or customer networks. Companies were likely to use universities
for recruiting employees and as a source of consultants, but they were unlikely to obtain
successful technology from universities. Nonetheless, four of the companies had sub-
stantial collaborations with universities to develop technology.
Some of the companies allowed the individuals, product managers, or product devel-
opment teams to decide when they needed technology from the outside. These people are
the ‘‘most knowledgeable’’ about what is appropriate to license. One of the interviewed
firms seemed to be ahead of all the other companies in this regard with an intellectual asset
management team, gatekeepers matching external technologies to corporate strategy, and a
skills and capabilities database. Several companies used databases to search externally,
including the United States Patent & Trademark Office and yet2.com. One of the small
companies in the survey noted that a venture capital firm was closely involved in any
technology acquisition they considered, probably due to the start-up nature of this company.
All but two of the interviewed firms have licensed technology from external sources,
although four companies have done so on a very limited basis, involving either technol-
ogies peripheral to the main business or so-called ‘‘use licenses.’’ The companies that
obtained licenses did so from a variety of sources, including both universities and other
companies. One company commented that universities tend to overvalue their licenses,
Intellectual property (IP) management
123
since they usually involve early-stage technology. The main rationale for entering into a
license was that it was cheaper and faster than in-house development (although in one case
the opposite result occurred). The license was then typically used to develop the tech-
nology further, protect the new intellectual property (via patent or trade secret), and use it
in developing new business.
The choice between buying a license and in-house development depended in part on the
expected length of the product life cycle. In most cases, licensed technology was found to
meet the needs of the licensee. The protection of the licensed technology was primarily in
the form of patents, but also trade secrets were used in joint ventures, as well as cross-
licensing. Technology that could not be detected or easily reverse engineered was kept as a
trade secret; if it could be reverse engineered, it was patented. Since detection technology
is improving, patents are being sought more frequently than in the past. On the other hand,
even in cases when reverse engineering was a concern, trade secrets were still utilized.
Defensive patenting occurred, but it was not a common practice.
The sources of IP may be summarized as follows: (1) In-house development was the
primary source for all the companies interviewed but only 2 of the 15 companies relied
exclusively on in-house development; (2) Small companies were more likely to system-
atically search for external technology but were still reliant primarily on internal
development; (3) Joint ventures/alliances were the most commonly cited source of external
technology (eight mentions), followed by acquisition of companies (seven mentions),
acquisition of licenses and consulting/contract R&D (six mentions each); and (4) Uni-
versities were rarely used as significant sources of technology except as the initial source at
the formation of the company; nonetheless, four companies maintained technology
development collaborations with universities.
4 How do companies manage intellectual property?
4.1 Introduction
All but three of the interviewed firms own patents or have patents pending. The number of
patents owned ranged from one to over 200. As expected, the companies also use trade
secret protection in combination with patents. The main reasons companies cited for using
trade secrets instead of patents were the risks associated with disclosing technology in
patent applications, the costs of patent applications, and the trend of increasing lead times
for patent actions and decreasing product life cycles, rendering the patent protection period
too short. Some firms mentioned that improved reverse engineering techniques by com-
petitors force them to rely more on patents than in the past while also working on new
product designs that are harder to reverse engineer.
The companies that did not formally rely on trade secrets were among the smallest and
youngest in the sample. Presumably they had proprietary information within their firm but
their lack of formal processes or even concern for protecting trade secrets was striking.
They did not have significant intellectual property to protect and seemed to be more
interested in making sure that vendors and customers understand their technology than in
protecting it. However, they also were pursuing patents to protect key parts of their
intellectual property, as well as to establish their technological capability credentials. Other
companies also pursued patents in order to increase the value of the company to impress
investors and/or provide leverage in discussions with strategic partners, in addition to the
more usual goals of excluding competitors and obtaining a competitive advantage.
B. Carlsson et al.
123
One company mentioned that the value of their patents had been questioned due to both
product margin pressure and the lack of respect for patents in China, where they were doing
increasing business. Another company noted that fear of major competitors held them back
from patenting and from enforcing patents they had already obtained: they did not want to
get into patent battles with large competitors. They were fearful that if they enforced their
patents, then a large competitor might enforce some of their own, causing significant legal
expenses for the company. One company had an internal competitive analysis group that
reviewed what type of intellectual property protection was most beneficial.
4.2 IP management processes
During the interviews, some common themes emerged with regard to the process of
managing intellectual property. A general schematic of these processes is shown in Fig. 1.
In general, the IP processes we observed began with encouragement from either an
internal IP committee or from investors in the case of the small companies. These groups
tended to have a ‘‘big picture’’ view of the IP process and could identify general areas for IP
development that would be valuable to the firm. They were market driven and relied on
external observations to determine the IP areas that were of interest. These groups some-
times relied on electronic searches and databases to assist them with information gathering
in order to make determinations of what areas were most important for IP development. The
inventor was the next critical link in this process. Inventors were sometimes supported by IP
training and internal seminars in addition to the general directions identified by the IP
Committee or investors. The importance and the amount of emphasis placed on the IP areas
identified by the centralized committee or investors vs. the more specific or singular IP
developed by the individual inventor varied widely between firms.
After an inventor has generated a specific patent idea (generally disclosed to the firm on
a standardized form for internal review), the interviews revealed two general paths the
disclosure could take. In one case a formal review by a patent committee was the next stage
of the process (‘‘Path B’’, Fig. 1). The committee could be made up of a variety of people,
depending on the firm, but it was generally cross divisional and asked the expected
IP Committee or
Investors
Push for Strategic IP
IP Committee
Inventor(s)
Line Manager
Ideas generated
(tend to be specific
and technology
driven)
Ideas generated
(tend to be
general and
driven by external
observations)
Electronic Searches,
IP Brokers, etc.
Path A
Path B
IP Training, Seminars,
etc.
Screening techniques
and checklists
Patent Prosecution
(usually an outside
firm)
Fig. 1 Archetypes of two general IP management processes
Intellectual property (IP) management
123
questions about strategic fit, defensibility, expected return, etc. In some firms, however, the
disclosure went simply from the inventor to a line manager (‘‘Path A,’’ Fig. 1) who made
an informal determination of the value of the proposed invention and decided on whether
or not to pursue the patent. Prosecution of the patent was then conducted outside the firm
(i.e., outsourced to an external firm) in all cases.
In the case of Path B, review by a corporate-wide patent committee, leveraging the
patent across divisions is facilitated. That is, cross-division synergies are more easily
identified by such a committee than by divisional line managers. But the process is nec-
essarily slowed by the use of such a committee simply due to the logistics of committee
meetings and decision making processes for a cross-divisional committee as opposed to an
individual. This highlights the advantages of Path A which utilizes the line manager for the
review. The process is rapid and focused on the divisional needs. Thus, when a patent is
‘‘time-critical’’ and the cross-divisional synergies are not important, the line manager path
(A) is an appropriate way to organize the disclosure screening process.
Path A advantages include: (1) rapid, non-bureaucratic process, (2) decisions made with
focus on divisional needs, (3) intimate customer knowledge is held by the decision maker,
and (4) budgetary authority and responsibility are closely aligned with the patent decision.
Path A is utilized when: (a) IP synergies between Divisions are weak, (b) technology is
moving rapidly and the patent is time-sensitive, and (c) divisional managers have sufficient
knowledge in IP.
Path B has the following advantages: (1) can leverage patent synergies across Divisions,
(2) allows deeper IP expertise to be applied to the patent process, and (3) can more easily
consider corporate needs and long-term corporate strategies. Path B is utilized when (a)
platform technologies exist that span multiple divisions, (b) divisions are segmented by
customer or application but utilize similar technologies to address these customer seg-
ments, and (c) firm is moving into new technology areas that require the development of IP
that is entirely new to the firm.
4.3 IP management organizational structures
Several organizational structures for managing intellectual property were also extracted
from the interview data. These can be categorized in the following three representations:
(1) Business Unit (BU) Assignment Model, (2) Centralized IP Model, and (3) Decen-
tralized IP Model.
The BU Assignment Model illustrated in Fig. 2 should be utilized when it is critical to
leverage IP across BU’s for the success of the organization but the appropriate IP is not
easily uncovered. That is, the IP is deep within the BU and is not easily accessed by a fully
centralized IP group. The attributes of this model include:
• Strong BU buy-in and input to IP processes
• Facilitates training of researchers in IP process
• Supports integrated IP strategy
• Provides growth opportunity for technical staff
• Flexible resources applied as needed
A Centralized IP Model was also observed during this research and is represented in Fig. 3.
When IP is important but can easily be accessed from outside the BU, this is a reasonable
model. It is also appropriate when the IP is relatively complex, involving multiple licensing
issues and/or potential future litigation issues. Its attributes include:
B. Carlsson et al.
123
• IP expertise is easily developed and maintained
• Depth of IP analysis is strong (external threats and internal opportunities)
• May not get BU input and thus some IP may be overlooked
• High fixed costs
IP management can also be fully decentralized as shown in Fig. 4. If there is no strong
need to leverage know-how across the business units and the IP issues encountered by the
BU’s are not extraordinarily complex, this is an appropriate model. Its attributes include:
• Individual BU needs addressed well
• Allows for individualized BU strategy
• May not have consistent IP quality across company
• May have duplication of efforts and thus low efficiency
Finally, all of these models can be enhanced by Information Technology (IT) support and a
variety of tools. The most common is the ‘‘Idea Database.’’ Other tools include
BU 1 BU 2 BU 3 BU 4
IP Team
CEO
BU = Business Unit or
Technology Group
Each BU or technology
group assigns a person to a
company wide IP team,
generally part time
BU 1 BU 2 BU 3 BU 4
IP Team
CEO
BU = Business Unit or
Technology Group
Each BU or technology
group assigns a person to a
company wide IP team,
generally part time
Fig. 2 Business Unit
Assignment Model
BU 1 BU 2 BU 3 BU 4
CEO
BU = Business Unit or Technology Group
A Central IP Group Reports
directly to Corporate
Headquarters and Manages IP
IP GroupBU 1 BU 2 BU 3 BU 4
CEO
BU = Business Unit or Technology Group
A Central IP Group Reports
directly to Corporate
Headquarters and Manages IP
IP Group
Fig. 3 Centralized IP Model
BU 1 BU 2 BU 3 BU 4
CEO
BU = Business Unit or Technology Group
Each BU is responsible for
its own IP and devotes
resources as needed
BU 1 BU 2 BU 3 BU 4
CEO
BU = Business Unit or Technology Group
Each BU is responsible for
its own IP and devotes
resources as needed
Fig. 4 De-centralized IP Model
Intellectual property (IP) management
123
sophisticated means of tracking IP from its inception through patent prosecution. In the
fully Decentralized Model, the IT is the primary method to insure that any synergies across
the BU’s are captured. Other models rely on personnel assignments to accomplish a similar
result but are expected to be more effective if implemented with an IT network for the
intellectual property.
4.4 Miscellaneous observations
Most companies did not patent technology that they did not intend to directly commer-
cialize. Thus, the value of licensing was not a consideration in patent decisions. Although
this may overlook ways to capture value from existing know-how, the defocusing effect of
pursuing patents that would not apply directly to a product was deemed to outweigh the
possible benefits. When asked about the extent to which the company’s industry relies on
patent protection, trade secrets, lead time advantage, or other forms of protection of
intellectual property, six companies put patents first, five placed trade secrets first, and four
said that lead time was most important.
Most of the companies indicated that they would use an external patent database as a
way to find technologies to in-license if an effective method (i.e., a broker) could be found
to access the technologies. A few brokers were mentioned, but none were judged to be
highly successful. Concern was expressed about support for external technology once it is
found: a broker can market technologies, but not support them.
4.5 What role do donations of IP play in a company’s IP process?
A new process of technology transfer has emerged during the past 10–15 years––Intel-
lectual Property (IP) donations––a form of IP brokering. In this process, firms with IP that
they do not intend to commercialize or otherwise competitively exploit,1
donate this IP to a
nonprofit organization, such as a university or a technology-based nonprofit organization.
This enables the donating firm to gain immediate value through the tax implications of the
donation and allows the donee organization, at least in theory, to commercially exploit the
IP through, for example, practicing the IP in-house or licensing it to a third party. This
transaction is a type of ‘‘brokering’’ which, in its broadest form, can be likened to the
development of the securities market when brokers and stock exchanges emerged to
facilitate the flow of funds from investor to corporate entity. In this case the flow of
technological know-how is enhanced via this intellectual property transfer through the
nonprofit organization.2
We asked each firm whether they had donated or thought about donating their IP to a
nonprofit organization. We found that only one firm actually donated some of its IP. The
donor firm in the present study is a large public company with large internal development
and research groups and a well developed IP intelligence quotient. While other firms
considered donating, they ultimately decided against it for reasons relating to: (1) the high
cost of obtaining a monetary valuation of the property to be donated. IP valuation is a
1
A reason might be that a change in company strategic direction has identified certain IP to be outside the
new areas of interest or that an acquisition has included IP that is not part of their core business.
2
A technology brokerage function could also be a ‘‘for-profit’’ endeavor such as is being pursued by
‘‘yet2.com’’ and NineSigma, Inc. among others.
B. Carlsson et al.
123
costly and time-intensive endeavor. This problem is exacerbated by the second reason
given: (2) Uncertainty surrounding the tax benefits arising from an IP donation. Congress
frequently modifies the tax code, and interpretation of the tax code by the IRS also evolves.
In fact, in October 2004, The American Jobs Creation Act (FSC/ETI bill) was signed into
law, reducing the tax benefits stemming from an IP donation and increasing the scrutiny
that accompanies IP donations; (3) The high cost of technology transfer resulting from the
donee’s desire to have access to the donor’s know-how relevant to the IP asset and the
ongoing financial commitment that many donees require from the donors to meet the costs
associated with patent maintenance fees and R&D support to enhance the patents; and (4)
Cultural obstacles within the donor firm. This reason is more nebulous and firm specific,
but the common theme is a general discomfort with the concept of donating IP or a firm
structure that is ill-suited to implement a donation process.
There are also more general reasons why IP donations may not even be considered. One
reason may be that the costs of completing the donation exceed the tax deduction value.
There is more incentive if the donor does not need to pay an external party for the valuation
study. Also, the company must be profitable in the year of the donation or there is no
allowable deduction. Further, it may be necessary for the donor to assemble a package that
would be attractive to a donee. This might include hardware, know-how, etc., that would
shorten the path to commercialization and reduce their risk. In addition, the donor must
have a certain risk tolerance due to the uncertainty about how the IRS will view the
donation and the fact that the IP could eventually be obtained by a competitor.
Many smaller, privately owned, technology-focused companies have high IP intelli-
gence quotients and sophisticated IP management. However, often donation is not as
compelling to them because their tax management strategy is different from that of a public
company. They are not as driven to maximize annual profit but rather are often more
interested in increasing the asset value through the IP.
It is interesting to note that donees are becoming more selective. Universities look for
synergies with research or a venture with which they are already engaged. They are much
less interested in donations that offer them little prospect for commercialization. They are
even increasingly questioning how protectable the technology is in the global marketplace,
particularly in China. Early stage technology donations that do not include hardware,
software, expertise, supportable test data and documentation and in many cases research
funding support, are often not acceptable.
In order to further substantiate our interview findings we decided to gather more data.
An on-line survey was sent to over 7,200 companies nationally, and follow-up phone calls
were made. However, the response rate was quite low (1%); hence, only an impres-
sionistic summary of the results is reported here. Details of the survey are available upon
request.
Only 3 of the 21 companies that gave quality responses reported that they had donated
IP. 15 other companies reported that they had donated but did not provide much detail.
Generating good will was the most commonly cited reason, followed by tax benefits and
other financial benefits. Philanthropy was also cited as a reason.
Among the 18 companies that did not donate IP, four stated that the primary reasons
why they did not donate were anticipated tax law changes and that the costs of the IP
valuation process were too high. Three of the companies stated that the tax benefit legit-
imacy was uncertain. Other reasons were that the company had no IP to donate, and that
patents might have minimal value to someone outside their business.
Similar answers were given when the companies that did not donate IP were asked
whether they expected to donate patents in the future. 10 stated that some of the primary
Intellectual property (IP) management
123
reasons why they will not donate patents included an uncertain tax benefit valuation and 8
agreed that other reasons included the possible tax law changes and the high valuation
costs. Other reasons cited include that as more and more people have access to the same
information, lead time will become more important than patenting.
In the follow-up telephone conversations a few other reasons emerged for not donating
IP to a nonprofit organization: (1) there is no IP to donate, or (b) the company is too small,
and (c) their venture capitalists would not allow an IP donation. Yet another reason why
companies do not donate is that they do not develop their IP in-house.
5 Summary and concluding remarks
The firms interviewed for this study develop their IP position from a wide variety of sources
such as joint ventures, acquisitions and consulting contracts. However, internal develop-
ment was still the primary source of IP. Internal patenting processes appeared to follow two
general paths; one which relied on some type of IP committee and another which simply
empowered divisional line managers to make patenting decisions. Organizationally, three
structural archetypes were identified, each with its unique advantages and drawbacks.
Whereas a centralized structure is more conducive to maintaining patent expertise, lever-
aging patents and IP across divisions, it can be slow and unresponsive to divisional needs. A
purely decentralized IP structure may be able to respond rapidly and capture hidden IP
within a division but will not be as able to find synergies across divisions. Also, it may not
have the depth of patent expertise needed for the development of a complex IP strategy.
Perhaps the best compromise structure observed in this study involves the divisional
assignment where a multi-business unit or division committee oversees IP. This enables the
needs of the divisions to be met while leveraging IP across multiple divisions. The semi-
centralized nature of this archetype is also conducive to a reasonable depth of IP knowledge
by creating a centralized IP team while sharing costs among divisions.
Concerning IP donations, the response rate to our on-line survey was too low for us to
draw any definitive conclusions. IP donations clearly do not appear to be a major phe-
nomenon. Our survey results suggest that tax benefits are an important driver and that
recent tax law changes have diminished the incentives to donate IP. Potential good will
benefits constitute another motive. The uncertainty of tax benefits and the costs associated
with IP valuation appear to be the main disincentives. Our impression is that the low
survey response rate may be attributable to the timing of the survey (fall 2004, while
federal legislation was pending), a lack of interest in IP donations, and the generally low
response rates to on-line surveys.
Given the tentative nature of our findings (due to the small number of data points),
additional research on technology sourcing and IP management strategy and organization
is clearly needed.
Acknowledgement This project was supported by a Presidential Research Initiative Grant (PRI #42786)
from Case Western Reserve University which is hereby gratefully acknowledged.
References
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JTT article online version (1)

  • 1. Intellectual property (IP) management: organizational processes and structures, and the role of IP donations Bo Carlsson Æ Monica Dumitriu Æ Jeffrey T. Glass Æ Craig Allen Nard Æ Richard Barrett Ó Springer Science+Business Media, LLC 2008 Abstract This paper examines intellectual property (IP) management in U.S. companies and addresses three questions: What are typical sources of IP? How do companies manage IP? What role do donations of IP play in IP management? We used in-depth interviews and an on-line survey to gather data. We found that firms develop their IP position from a wide variety of sources such as joint ventures, acquisitions, and consulting contracts, but internal development is still the primary source of IP. Organizationally, three structural archetypes of IP management were identified: a centralized structure, a purely decentralized IP structure and a compromise structure involving a divisional assignment where a multi- business unit or division committee oversees IP. IP donations clearly do not appear to be a major phenomenon at the present time. Our survey results suggest that tax benefits are an important driver and that recent tax law changes have diminished the incentives to donate IP. The uncertainty of tax benefits and the costs associated with IP valuation appear to be the main disincentives. Keywords Intellectual property Á Management Á Sourcing Á Organization Á Donations B. Carlsson (&) Á M. Dumitriu Department of Economics, Weatherhead School of Management, Case Western Reserve University, 11119 Bellflower Road, Cleveland, OH 44106-7235, USA e-mail: Bo.Carlsson@case.edu J. T. Glass Department of Electrical and Computer Engineering, Pratt School of Engineering, Duke University, 213 Hudson Hall, Science Drive, Box 91300, Durham, NC 27708-0300, USA C. A. Nard School of Law, Case Western Reserve University, 11075 East Boulevard, Cleveland, OH 44106-7148, USA R. Barrett Barrett Consulting, Inc., 339 Bentleyville Road, Moreland Hills, OH 44022, USA 123 J Technol Transfer DOI 10.1007/s10961-008-9082-2
  • 2. JEL Classifications D21 Á D23 Á K34 Á L10 Á L22 Á L24 1 Introduction Intellectual property (IP) management issues are gaining increased attention from corpo- rations that are scrutinizing their portfolios searching for a better return on investment in technology and R&D. Patents have become an important responsibility for managers in technology-based companies as well as an important part of justifying R&D expenses (see Arora et al. 2003). In a comprehensive strategy, reasons for patenting have been shown to extend beyond direct profit from the invention to blocking, cross licensing, and prevention of law suits (Cohen et al. 2000). Given the importance and value of patents and, more generally, intellectual property, many firms are increasingly realizing the value of their IP department. These departments possess unique strategic information about the firms’ business units. An IP Integrated Management System (IPIMS) has been proposed in the literature to take advantage of the unique position of the IP Department (Daizadeh 2003). Utilizing the IP department as a repository of knowledge and a bridge between R&D and market information are important aspects of this system. Other studies have focused on the legal aspects of protecting IP, decision-making processes for IP, utilization of software to assist with IP management and even compensation systems which enhance IP (Ruston 1996; Spector and Zuckerman 1997; Wolf 1999; Teece 2000; Xu et al. 2001; Ernst and Soll 2003; Pauly 2003). The research presented in this note focuses on three questions: • What are typical sources of IP? • How do companies manage IP? • What role do donations of IP play in a company’s IP management? 2 Description of the data and methodology A case study methodology was utilized with a sample of 15 companies in Northeast Ohio. Semi-structured interviews were conducted on site at each of the companies. The data were analyzed using standard procedures for qualitative analysis (Eisenhardt 1989; Larsson 1993). At least two members of the research team were present at each inter- view, which normally took about 1.5 h. The interview guide is available upon request. The 15 companies were chosen from an initial list of 100 technology-based companies in Northeast Ohio generated from previous research by one of the authors (RB). Twenty- five companies that were judged likely to be involved with generating and protecting IP were then selected to participate in the study. Of these, we were able to arrange inter- views at the chief technology officer or IP manager (or IP counsel) level at 15 of these companies; eight public and seven private. The companies ranged in size from about 25 employees to 95,000 and in age from start-ups to companies 135 years old. Five industries (reflecting areas of relative strength in the regional economy) were primary targets: (1) instruments and electronics, (2) biotechnology/biomedicine, (3) polymers and advanced materials, (4) software, and (5) industrial machinery. The companies agreed to participate in this study on the condition of anonymity, and thus their names are withheld. B. Carlsson et al. 123
  • 3. 3 What are typical sources of IP? The first set of questions in the interviews related to the sources of IP. The interview results show that the vast majority of IP in the sample firms was obtained from in-house devel- opment. In all but three of the interviewed firms, technology development was centralized in a central R&D group, with some functions decentralized to the division level. The interviewed companies were much more focused on in-house technology devel- opment than on acquiring technology or IP from outside the firm. This was generally true for all the interviewed firms, but technology acquisition from outside played a more prominent role in the smaller companies. In fact, some of the smaller companies started with external (licensed) technology, but subsequently relied primarily on internally developed technology for most of their needs. Several of the smaller companies continued to assign personnel to systematically look for external technology. As a consequence, the smaller companies were, surprisingly, looking more systematically at technology acqui- sition opportunities and were better organized to acquire technology from outside than the larger companies. This may be related to the fact that new technology developments were central to the survival of the small firms and thus represented a more immediate need than in the larger companies. Only two companies relied exclusively on in-house R&D. All the other companies relied at least to some extent on external sources. Joint ventures/alliances were the most commonly cited source of external technology (eight mentions), followed by acquisition of companies (seven mentions), acquisition of licenses and consulting/contract R&D (six mentions each). Joint ventures were never mentioned as the most important source of external technology. Instead, acquisition of companies was the most important source of external technology in four cases, while contract R&D played that role in three cases and acquisition of licenses in two cases. Few companies pursued a strategy of regularly licensing external technology except for a small fraction of their needs. In cases where external technology was obtained, it was primarily in non-core areas. In general there was a trend toward making better use of, and being more open to, external technology. Some companies obtained technology by acquiring other companies, although the primary driver for the acquisition was just as likely to be distribution or customer networks. Companies were likely to use universities for recruiting employees and as a source of consultants, but they were unlikely to obtain successful technology from universities. Nonetheless, four of the companies had sub- stantial collaborations with universities to develop technology. Some of the companies allowed the individuals, product managers, or product devel- opment teams to decide when they needed technology from the outside. These people are the ‘‘most knowledgeable’’ about what is appropriate to license. One of the interviewed firms seemed to be ahead of all the other companies in this regard with an intellectual asset management team, gatekeepers matching external technologies to corporate strategy, and a skills and capabilities database. Several companies used databases to search externally, including the United States Patent & Trademark Office and yet2.com. One of the small companies in the survey noted that a venture capital firm was closely involved in any technology acquisition they considered, probably due to the start-up nature of this company. All but two of the interviewed firms have licensed technology from external sources, although four companies have done so on a very limited basis, involving either technol- ogies peripheral to the main business or so-called ‘‘use licenses.’’ The companies that obtained licenses did so from a variety of sources, including both universities and other companies. One company commented that universities tend to overvalue their licenses, Intellectual property (IP) management 123
  • 4. since they usually involve early-stage technology. The main rationale for entering into a license was that it was cheaper and faster than in-house development (although in one case the opposite result occurred). The license was then typically used to develop the tech- nology further, protect the new intellectual property (via patent or trade secret), and use it in developing new business. The choice between buying a license and in-house development depended in part on the expected length of the product life cycle. In most cases, licensed technology was found to meet the needs of the licensee. The protection of the licensed technology was primarily in the form of patents, but also trade secrets were used in joint ventures, as well as cross- licensing. Technology that could not be detected or easily reverse engineered was kept as a trade secret; if it could be reverse engineered, it was patented. Since detection technology is improving, patents are being sought more frequently than in the past. On the other hand, even in cases when reverse engineering was a concern, trade secrets were still utilized. Defensive patenting occurred, but it was not a common practice. The sources of IP may be summarized as follows: (1) In-house development was the primary source for all the companies interviewed but only 2 of the 15 companies relied exclusively on in-house development; (2) Small companies were more likely to system- atically search for external technology but were still reliant primarily on internal development; (3) Joint ventures/alliances were the most commonly cited source of external technology (eight mentions), followed by acquisition of companies (seven mentions), acquisition of licenses and consulting/contract R&D (six mentions each); and (4) Uni- versities were rarely used as significant sources of technology except as the initial source at the formation of the company; nonetheless, four companies maintained technology development collaborations with universities. 4 How do companies manage intellectual property? 4.1 Introduction All but three of the interviewed firms own patents or have patents pending. The number of patents owned ranged from one to over 200. As expected, the companies also use trade secret protection in combination with patents. The main reasons companies cited for using trade secrets instead of patents were the risks associated with disclosing technology in patent applications, the costs of patent applications, and the trend of increasing lead times for patent actions and decreasing product life cycles, rendering the patent protection period too short. Some firms mentioned that improved reverse engineering techniques by com- petitors force them to rely more on patents than in the past while also working on new product designs that are harder to reverse engineer. The companies that did not formally rely on trade secrets were among the smallest and youngest in the sample. Presumably they had proprietary information within their firm but their lack of formal processes or even concern for protecting trade secrets was striking. They did not have significant intellectual property to protect and seemed to be more interested in making sure that vendors and customers understand their technology than in protecting it. However, they also were pursuing patents to protect key parts of their intellectual property, as well as to establish their technological capability credentials. Other companies also pursued patents in order to increase the value of the company to impress investors and/or provide leverage in discussions with strategic partners, in addition to the more usual goals of excluding competitors and obtaining a competitive advantage. B. Carlsson et al. 123
  • 5. One company mentioned that the value of their patents had been questioned due to both product margin pressure and the lack of respect for patents in China, where they were doing increasing business. Another company noted that fear of major competitors held them back from patenting and from enforcing patents they had already obtained: they did not want to get into patent battles with large competitors. They were fearful that if they enforced their patents, then a large competitor might enforce some of their own, causing significant legal expenses for the company. One company had an internal competitive analysis group that reviewed what type of intellectual property protection was most beneficial. 4.2 IP management processes During the interviews, some common themes emerged with regard to the process of managing intellectual property. A general schematic of these processes is shown in Fig. 1. In general, the IP processes we observed began with encouragement from either an internal IP committee or from investors in the case of the small companies. These groups tended to have a ‘‘big picture’’ view of the IP process and could identify general areas for IP development that would be valuable to the firm. They were market driven and relied on external observations to determine the IP areas that were of interest. These groups some- times relied on electronic searches and databases to assist them with information gathering in order to make determinations of what areas were most important for IP development. The inventor was the next critical link in this process. Inventors were sometimes supported by IP training and internal seminars in addition to the general directions identified by the IP Committee or investors. The importance and the amount of emphasis placed on the IP areas identified by the centralized committee or investors vs. the more specific or singular IP developed by the individual inventor varied widely between firms. After an inventor has generated a specific patent idea (generally disclosed to the firm on a standardized form for internal review), the interviews revealed two general paths the disclosure could take. In one case a formal review by a patent committee was the next stage of the process (‘‘Path B’’, Fig. 1). The committee could be made up of a variety of people, depending on the firm, but it was generally cross divisional and asked the expected IP Committee or Investors Push for Strategic IP IP Committee Inventor(s) Line Manager Ideas generated (tend to be specific and technology driven) Ideas generated (tend to be general and driven by external observations) Electronic Searches, IP Brokers, etc. Path A Path B IP Training, Seminars, etc. Screening techniques and checklists Patent Prosecution (usually an outside firm) Fig. 1 Archetypes of two general IP management processes Intellectual property (IP) management 123
  • 6. questions about strategic fit, defensibility, expected return, etc. In some firms, however, the disclosure went simply from the inventor to a line manager (‘‘Path A,’’ Fig. 1) who made an informal determination of the value of the proposed invention and decided on whether or not to pursue the patent. Prosecution of the patent was then conducted outside the firm (i.e., outsourced to an external firm) in all cases. In the case of Path B, review by a corporate-wide patent committee, leveraging the patent across divisions is facilitated. That is, cross-division synergies are more easily identified by such a committee than by divisional line managers. But the process is nec- essarily slowed by the use of such a committee simply due to the logistics of committee meetings and decision making processes for a cross-divisional committee as opposed to an individual. This highlights the advantages of Path A which utilizes the line manager for the review. The process is rapid and focused on the divisional needs. Thus, when a patent is ‘‘time-critical’’ and the cross-divisional synergies are not important, the line manager path (A) is an appropriate way to organize the disclosure screening process. Path A advantages include: (1) rapid, non-bureaucratic process, (2) decisions made with focus on divisional needs, (3) intimate customer knowledge is held by the decision maker, and (4) budgetary authority and responsibility are closely aligned with the patent decision. Path A is utilized when: (a) IP synergies between Divisions are weak, (b) technology is moving rapidly and the patent is time-sensitive, and (c) divisional managers have sufficient knowledge in IP. Path B has the following advantages: (1) can leverage patent synergies across Divisions, (2) allows deeper IP expertise to be applied to the patent process, and (3) can more easily consider corporate needs and long-term corporate strategies. Path B is utilized when (a) platform technologies exist that span multiple divisions, (b) divisions are segmented by customer or application but utilize similar technologies to address these customer seg- ments, and (c) firm is moving into new technology areas that require the development of IP that is entirely new to the firm. 4.3 IP management organizational structures Several organizational structures for managing intellectual property were also extracted from the interview data. These can be categorized in the following three representations: (1) Business Unit (BU) Assignment Model, (2) Centralized IP Model, and (3) Decen- tralized IP Model. The BU Assignment Model illustrated in Fig. 2 should be utilized when it is critical to leverage IP across BU’s for the success of the organization but the appropriate IP is not easily uncovered. That is, the IP is deep within the BU and is not easily accessed by a fully centralized IP group. The attributes of this model include: • Strong BU buy-in and input to IP processes • Facilitates training of researchers in IP process • Supports integrated IP strategy • Provides growth opportunity for technical staff • Flexible resources applied as needed A Centralized IP Model was also observed during this research and is represented in Fig. 3. When IP is important but can easily be accessed from outside the BU, this is a reasonable model. It is also appropriate when the IP is relatively complex, involving multiple licensing issues and/or potential future litigation issues. Its attributes include: B. Carlsson et al. 123
  • 7. • IP expertise is easily developed and maintained • Depth of IP analysis is strong (external threats and internal opportunities) • May not get BU input and thus some IP may be overlooked • High fixed costs IP management can also be fully decentralized as shown in Fig. 4. If there is no strong need to leverage know-how across the business units and the IP issues encountered by the BU’s are not extraordinarily complex, this is an appropriate model. Its attributes include: • Individual BU needs addressed well • Allows for individualized BU strategy • May not have consistent IP quality across company • May have duplication of efforts and thus low efficiency Finally, all of these models can be enhanced by Information Technology (IT) support and a variety of tools. The most common is the ‘‘Idea Database.’’ Other tools include BU 1 BU 2 BU 3 BU 4 IP Team CEO BU = Business Unit or Technology Group Each BU or technology group assigns a person to a company wide IP team, generally part time BU 1 BU 2 BU 3 BU 4 IP Team CEO BU = Business Unit or Technology Group Each BU or technology group assigns a person to a company wide IP team, generally part time Fig. 2 Business Unit Assignment Model BU 1 BU 2 BU 3 BU 4 CEO BU = Business Unit or Technology Group A Central IP Group Reports directly to Corporate Headquarters and Manages IP IP GroupBU 1 BU 2 BU 3 BU 4 CEO BU = Business Unit or Technology Group A Central IP Group Reports directly to Corporate Headquarters and Manages IP IP Group Fig. 3 Centralized IP Model BU 1 BU 2 BU 3 BU 4 CEO BU = Business Unit or Technology Group Each BU is responsible for its own IP and devotes resources as needed BU 1 BU 2 BU 3 BU 4 CEO BU = Business Unit or Technology Group Each BU is responsible for its own IP and devotes resources as needed Fig. 4 De-centralized IP Model Intellectual property (IP) management 123
  • 8. sophisticated means of tracking IP from its inception through patent prosecution. In the fully Decentralized Model, the IT is the primary method to insure that any synergies across the BU’s are captured. Other models rely on personnel assignments to accomplish a similar result but are expected to be more effective if implemented with an IT network for the intellectual property. 4.4 Miscellaneous observations Most companies did not patent technology that they did not intend to directly commer- cialize. Thus, the value of licensing was not a consideration in patent decisions. Although this may overlook ways to capture value from existing know-how, the defocusing effect of pursuing patents that would not apply directly to a product was deemed to outweigh the possible benefits. When asked about the extent to which the company’s industry relies on patent protection, trade secrets, lead time advantage, or other forms of protection of intellectual property, six companies put patents first, five placed trade secrets first, and four said that lead time was most important. Most of the companies indicated that they would use an external patent database as a way to find technologies to in-license if an effective method (i.e., a broker) could be found to access the technologies. A few brokers were mentioned, but none were judged to be highly successful. Concern was expressed about support for external technology once it is found: a broker can market technologies, but not support them. 4.5 What role do donations of IP play in a company’s IP process? A new process of technology transfer has emerged during the past 10–15 years––Intel- lectual Property (IP) donations––a form of IP brokering. In this process, firms with IP that they do not intend to commercialize or otherwise competitively exploit,1 donate this IP to a nonprofit organization, such as a university or a technology-based nonprofit organization. This enables the donating firm to gain immediate value through the tax implications of the donation and allows the donee organization, at least in theory, to commercially exploit the IP through, for example, practicing the IP in-house or licensing it to a third party. This transaction is a type of ‘‘brokering’’ which, in its broadest form, can be likened to the development of the securities market when brokers and stock exchanges emerged to facilitate the flow of funds from investor to corporate entity. In this case the flow of technological know-how is enhanced via this intellectual property transfer through the nonprofit organization.2 We asked each firm whether they had donated or thought about donating their IP to a nonprofit organization. We found that only one firm actually donated some of its IP. The donor firm in the present study is a large public company with large internal development and research groups and a well developed IP intelligence quotient. While other firms considered donating, they ultimately decided against it for reasons relating to: (1) the high cost of obtaining a monetary valuation of the property to be donated. IP valuation is a 1 A reason might be that a change in company strategic direction has identified certain IP to be outside the new areas of interest or that an acquisition has included IP that is not part of their core business. 2 A technology brokerage function could also be a ‘‘for-profit’’ endeavor such as is being pursued by ‘‘yet2.com’’ and NineSigma, Inc. among others. B. Carlsson et al. 123
  • 9. costly and time-intensive endeavor. This problem is exacerbated by the second reason given: (2) Uncertainty surrounding the tax benefits arising from an IP donation. Congress frequently modifies the tax code, and interpretation of the tax code by the IRS also evolves. In fact, in October 2004, The American Jobs Creation Act (FSC/ETI bill) was signed into law, reducing the tax benefits stemming from an IP donation and increasing the scrutiny that accompanies IP donations; (3) The high cost of technology transfer resulting from the donee’s desire to have access to the donor’s know-how relevant to the IP asset and the ongoing financial commitment that many donees require from the donors to meet the costs associated with patent maintenance fees and R&D support to enhance the patents; and (4) Cultural obstacles within the donor firm. This reason is more nebulous and firm specific, but the common theme is a general discomfort with the concept of donating IP or a firm structure that is ill-suited to implement a donation process. There are also more general reasons why IP donations may not even be considered. One reason may be that the costs of completing the donation exceed the tax deduction value. There is more incentive if the donor does not need to pay an external party for the valuation study. Also, the company must be profitable in the year of the donation or there is no allowable deduction. Further, it may be necessary for the donor to assemble a package that would be attractive to a donee. This might include hardware, know-how, etc., that would shorten the path to commercialization and reduce their risk. In addition, the donor must have a certain risk tolerance due to the uncertainty about how the IRS will view the donation and the fact that the IP could eventually be obtained by a competitor. Many smaller, privately owned, technology-focused companies have high IP intelli- gence quotients and sophisticated IP management. However, often donation is not as compelling to them because their tax management strategy is different from that of a public company. They are not as driven to maximize annual profit but rather are often more interested in increasing the asset value through the IP. It is interesting to note that donees are becoming more selective. Universities look for synergies with research or a venture with which they are already engaged. They are much less interested in donations that offer them little prospect for commercialization. They are even increasingly questioning how protectable the technology is in the global marketplace, particularly in China. Early stage technology donations that do not include hardware, software, expertise, supportable test data and documentation and in many cases research funding support, are often not acceptable. In order to further substantiate our interview findings we decided to gather more data. An on-line survey was sent to over 7,200 companies nationally, and follow-up phone calls were made. However, the response rate was quite low (1%); hence, only an impres- sionistic summary of the results is reported here. Details of the survey are available upon request. Only 3 of the 21 companies that gave quality responses reported that they had donated IP. 15 other companies reported that they had donated but did not provide much detail. Generating good will was the most commonly cited reason, followed by tax benefits and other financial benefits. Philanthropy was also cited as a reason. Among the 18 companies that did not donate IP, four stated that the primary reasons why they did not donate were anticipated tax law changes and that the costs of the IP valuation process were too high. Three of the companies stated that the tax benefit legit- imacy was uncertain. Other reasons were that the company had no IP to donate, and that patents might have minimal value to someone outside their business. Similar answers were given when the companies that did not donate IP were asked whether they expected to donate patents in the future. 10 stated that some of the primary Intellectual property (IP) management 123
  • 10. reasons why they will not donate patents included an uncertain tax benefit valuation and 8 agreed that other reasons included the possible tax law changes and the high valuation costs. Other reasons cited include that as more and more people have access to the same information, lead time will become more important than patenting. In the follow-up telephone conversations a few other reasons emerged for not donating IP to a nonprofit organization: (1) there is no IP to donate, or (b) the company is too small, and (c) their venture capitalists would not allow an IP donation. Yet another reason why companies do not donate is that they do not develop their IP in-house. 5 Summary and concluding remarks The firms interviewed for this study develop their IP position from a wide variety of sources such as joint ventures, acquisitions and consulting contracts. However, internal develop- ment was still the primary source of IP. Internal patenting processes appeared to follow two general paths; one which relied on some type of IP committee and another which simply empowered divisional line managers to make patenting decisions. Organizationally, three structural archetypes were identified, each with its unique advantages and drawbacks. Whereas a centralized structure is more conducive to maintaining patent expertise, lever- aging patents and IP across divisions, it can be slow and unresponsive to divisional needs. A purely decentralized IP structure may be able to respond rapidly and capture hidden IP within a division but will not be as able to find synergies across divisions. Also, it may not have the depth of patent expertise needed for the development of a complex IP strategy. Perhaps the best compromise structure observed in this study involves the divisional assignment where a multi-business unit or division committee oversees IP. This enables the needs of the divisions to be met while leveraging IP across multiple divisions. The semi- centralized nature of this archetype is also conducive to a reasonable depth of IP knowledge by creating a centralized IP team while sharing costs among divisions. Concerning IP donations, the response rate to our on-line survey was too low for us to draw any definitive conclusions. IP donations clearly do not appear to be a major phe- nomenon. Our survey results suggest that tax benefits are an important driver and that recent tax law changes have diminished the incentives to donate IP. Potential good will benefits constitute another motive. The uncertainty of tax benefits and the costs associated with IP valuation appear to be the main disincentives. Our impression is that the low survey response rate may be attributable to the timing of the survey (fall 2004, while federal legislation was pending), a lack of interest in IP donations, and the generally low response rates to on-line surveys. Given the tentative nature of our findings (due to the small number of data points), additional research on technology sourcing and IP management strategy and organization is clearly needed. Acknowledgement This project was supported by a Presidential Research Initiative Grant (PRI #42786) from Case Western Reserve University which is hereby gratefully acknowledged. References Arora, A., Ceccagnoli, M., & Cohen, W. M. (2003). R&D and the patent premium. Working Paper 9431, http://www.nber.org/papers/w9431, National Bureau of Economic Research, January. B. Carlsson et al. 123
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