SKGF_Presentation_Left Turns Only - Making Sense of Nanotech IP Strategy_2004

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The document discusses intellectual property (IP) strategy for nanotechnology companies. It suggests that business strategy should drive IP strategy. It categorizes different types of nanotechnology companies, including technology enablers, application providers, technology adopters, and intellectual capital builders. It provides tips for developing an effective IP strategy, such as engaging experienced advisors, maintaining an IP plan and employee incentive system, educating employees on IP basics, assessing the value of IP, determining the right protection, and leveraging IP for funding, licensing and cross-licensing deals.

Technology

Making Sense of Nanotech IP Strategy

Donald J. Featherstone
Director
Sterne, Kessler, Goldstein & Fox
donf@skgf.com

Michael D. Specht
Attorney
Sterne, Kessler, Goldstein & Fox
mspecht@skgf.com

Presented at:
International Engineering Consortium
NanoEngineering World Forum
June 23, 2003 - Marlborough, MA

© 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C.

“Innovative companies have been thrust
into an intellectual property arms race.”
- from Ideas to Assets

1 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 1

No. . . Just a Horse Race . . .

With Winners, Losers and Some No Shows.

2 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 2

Business strategy drives IP strategy,
not the other way around.

Nanotechnology is no different.

3 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 3

Technology Enabler
l
primarily provides nanotechnology to others (e.g.,
l
Nanosys, Quantum Dot, Nanotek)

Application Provider
l
primarily produces a product or service based on
l
nanotechnology (e.g., Nanoink)

Technology Adopter
l
primarily adopts nanotechnology from others to
l
enhance products (e.g., Levi’s)

4 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 4

Intellectual (and Revenue) Capital Builder (e.g.,
l
MIT, Northwestern, Harvard)
primarily develops fundamental nanotechnology for
l
intellectual and revenue stimulation

The Government
l

5 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 5

Intellectual Asset Management Strategy

IP Value Generation Foundation
l

IP Value Generation Process
l

6 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 6

Leverage

Protect
IP Value Generation
Process
Value

Identify
Preparation Education
IP Value Generation
Foundation

7 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 7

Engage experienced IP advisors
l
Shortage of experienced IP advisors in Nano
–

Maintain an IP Strategy and Plan
l
Recognized importance in Nano
–

Maintain an Employee IP Incentive System
l
Not much in early stage nano, still driven by emerging
–
nature of technology
Know what you own, own what you know
l

8 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 8

Communicate your IP Strategy & Plan
l
Internal
–
– External – Give notice that you are a player
(when you are a player)

Educate Team Members and
l
Stakeholders on IP Basics
Patent barring events
–
Timetables for patents to issue
–
Don’t pretend to be patent attorneys
–

9 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 9

Internal
l
Invention Disclosure Forms
– Really Good Stuff
Engineering Brainstorming
–
Marketing Brainstorming
–

Engineering
External Marketing
l
VC Bumblebees
–
External IP Identification Tools
–

10 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 10

Assess value to your business strategy
l

Assess value to others (if not within your
l
business strategy)
Cross Licensing Potential
–
Revenue Potential
–
Defensive Value
–

11 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 11

What is the right form of IP Protection?
l

Pursue IP Protection
l

License In – Level of Exclusivity, Future
l
Development, Term, Field of Use

12 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 12

Enhance the value of your product
l
License out
l
Cross License
l
Basis for Funding
l
Company Credibility
l

13 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 13

Marvin C. Guthrie presented at the International Engineering Consortium NanoEngineering World Forum on June 23, 2003. The presentation discussed intellectual property strategies for transferring technology depending on whether you are from academia, industry or venture capital. It also covered issues like funding source encumbrances, acquiring technology through assignments and licenses, exclusivity in licenses, and considerations in licensing agreements like maintenance of IP and enforcement.

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SKGF_Presentation_Left Turns Only - Making Sense of Nanotech IP Strategy_2004

1. Making Sense of Nanotech IP Strategy Donald J. Featherstone Director Sterne, Kessler, Goldstein & Fox donf@skgf.com Michael D. Specht Attorney Sterne, Kessler, Goldstein & Fox mspecht@skgf.com Presented at: International Engineering Consortium NanoEngineering World Forum June 23, 2003 - Marlborough, MA © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C.

5. Technology Enabler l primarily provides nanotechnology to others (e.g., l Nanosys, Quantum Dot, Nanotek) Application Provider l primarily produces a product or service based on l nanotechnology (e.g., Nanoink) Technology Adopter l primarily adopts nanotechnology from others to l enhance products (e.g., Levi’s) 4 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 4

6. Intellectual (and Revenue) Capital Builder (e.g., l MIT, Northwestern, Harvard) primarily develops fundamental nanotechnology for l intellectual and revenue stimulation The Government l 5 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 5

9. Engage experienced IP advisors l Shortage of experienced IP advisors in Nano – Maintain an IP Strategy and Plan l Recognized importance in Nano – Maintain an Employee IP Incentive System l Not much in early stage nano, still driven by emerging – nature of technology Know what you own, own what you know l 8 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 8

10. Communicate your IP Strategy & Plan l Internal – – External – Give notice that you are a player (when you are a player) Educate Team Members and l Stakeholders on IP Basics Patent barring events – Timetables for patents to issue – Don’t pretend to be patent attorneys – 9 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 9

11. Internal l Invention Disclosure Forms – Really Good Stuff Engineering Brainstorming – Marketing Brainstorming – Engineering External Marketing l VC Bumblebees – External IP Identification Tools – 10 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 10

12. Assess value to your business strategy l Assess value to others (if not within your l business strategy) Cross Licensing Potential – Revenue Potential – Defensive Value – 11 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 11

13. What is the right form of IP Protection? l Pursue IP Protection l License In – Level of Exclusivity, Future l Development, Term, Field of Use 12 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 12

SKGF_Presentation_Left Turns Only - Making Sense of Nanotech IP Strategy_2004

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