Tech innovation s10_ip

Technology and Innovation
Management:
S10
Intellectual Property (IP) Strategy and
management
Raj C Thiagarajan, PhD
To
SIBM SIII MBA Students

ATOA Scientific Technologies
Engineering Simulation For Innovation

What is this map?
a) Technology road
map?
b) London tube
railway roadmap to
major offices?
c) Business
partnership?

ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management 2

IP War
Mobile phone patent
suits


Why
Exponential Growth

Worldwide shipment of PC, 10%
mobile phones (2008)
Notebook, 10%

Future
Mobile phone,
80%


IP Strategy and management
• Intellectual Property
– Patents, Trade secret, copyright,…

• IP Strategy
– Inventor,
– Technology Manager
– Operations Manager

• Practical implementation
• Mobile phone example
• IP plays a critical role in Technology management


What is “Intellectual Property”?
"Intellectual property" ("IP") is a term that includes
• Patents,
• Trade secrets,
• Trademarks and
• Copyrights.

• “Intellectual Property” is a product of the human mind or
intellect in which the law recognizes a property right and
protects against unauthorized use by others.


Why is IP Important?
• Competitive Edge
• Offend and Defend off Aggression from Competitors
• Higher Value Products
• Negotiation Leverage with Suppliers & Customers
• Deal Leverage for Acquisitions or Spinouts
• Stronger Market Position
• Better Access to Capital
• Prestige for Company
• Prestige for Employees
• Licensing
• Innovation perception


Patent
• A U.S. patent is an
intellectual property right
that is granted by the US
government
– gives its owner the right
to exclude others from
making, using, selling
the invention covered
by patent within US.
– expires 20 years from
filing date


The First mobile patent
• Cooper is the first inventor
named on "Radio telephone
system" filed on October 17,
1973 with the US Patent
Office and later issued as US
Patent 3,906,166.

Image Source: http://en.wikipedia.org/wiki/History_of_mobile_phones


Anatomy
Front page:
– Title
– Filing Date vs. Issue Date
– Assignee= Owner
– Related Application Data
– Technology Class Codes
– Prior Art References Cited
– Abstract
– Front Page Illustration

Specification + Drawings
• Set forth the precise invention for which a patent is solicited, in such
manner as to distinguish it from other inventions and from what is old
• Detailed written description typically corresponds to illustration(s) of
invention and/or prior art through numerical annotations

Preferred and other embodiment
• The best mode contemplated by the inventor for carrying out the invention
Claims
• The specification concludes with distinct claims of the subject matter
which the applicant regards as the invention.
• Claim is an important part of the patent.
• This defines the scope of the legal protection.


Why are Patents important?
• For the firm Inventions & patents provide a competitive
advantage in the market place:
– making unique products.
– preventing competition from copying technology
– protecting Firm from law suits from others
– To get price premium

• For the inventors,
– Win win: Awards & Rewards
– Professional Recognition
– Career Growth


Patentability
U.S. PATENT
NO. 7,842,379
Novel Issued
• To be patentable, an invention must be
new, i.e., different in some way from all
prior art that is available to the public
• cannot be publicly known or used by
NOVEL
others prior to the date of invention
• cannot have been patented or described
in a printed publication anywhere in the
world prior to the date of invention NONOBVIOUS

• Nonobvious
USEFUL
• Useful
STATUTORY SUBJECT
MATTER

What is Patentable?
• Processes, including new use of known process
– Polymer Processing , food processing.

• Articles of manufacture
– Iphone,
• Machines, Software, Algorithms, etc.
– Engines, Networking software, analysis algorithm

• Compositions of matter
– Metal, glass, Polymer, Alloy, Semiconductors

• Improvements of inventions in any of the above classes
– How to make substantially better, faster, cheaper.


What is a Copyright?

• A way of protecting the expression of an idea
• It does not protect the idea itself.
• It goes to how you express it--the form of the
expression
©
• Software code and technical support
documentation are copyrightable
• Freeware, check and use.

• Creative Commons licenses provide simple,
standardized alternatives to the “all rights
reserved” paradigm of traditional copyright.

What is a Trade Secret?
• Proprietary information which
is business critical and commercially
valuable and kept secret

• If not kept secret, it becomes
publicly available

• Selection of trade secret vs Patent is
a critical strategic choice.


Trade Secret vs. Patent
Patent Criterion Trade Secret
Between 5 and 20 years Innovation Life < 5 years or > 20 years

Easy Ability to Reverse Engineer/ Difficult
Copy

No protections to protect secret Protection mechanisms in Place Protected from inadvertent or
status of innovation intentional divulgation

Patentable Subject Matter Non-patentable

Shared with task environment Sharing of Innovation details Within Firm only

Core Technology Nature of Innovation Incremental Improvement

Highly Likely Licensing Potential Unlikely

Customer or Public Innovation Use Internal Firm


Strategic IP

Market Strategic IP Technology
• Strategy Offensive /
Defensive • Engineering
• Product
Publications • Landscape
• Customer Patents • Prior art
• Competition Copyright
Trade Secrets • Associations


Strategic IP

“Technology Push ” “Market Pull”
• Create ideas
• Develop business strategy
• Do experimental
demonstration • Define target product, market,
• Disclosure segment
• Evaluation for Priority • IP–assessment
• Patent application Filing • Identify strategic idea area
• Patent portfolio
management • Targeted idea generation

• Technology Ideas. • Marketable Ideas


IP Strategy
Intellectual Property

IP team
Offensive Defensive

Strategic Business
development Establish prior Patent
Patent art, Freedom to Infringement
and Practice avoidance
Filing Collaborations

Competitive IP Landscape, Strategic Patent Portfolio


IP strategy process
Idea, Invention
management System

Business Strategy / IP Strategies
Patenting filing
Market Assessment prioritization system
IP Direction
Concepts,
Competitive IP Disclosures “Patent” search Systems
landscape Analysis Filings, Online
(Gap analysis) Publications Micropatent
Delphion
…

Competitive
External Publications,
Intelligence Systems
Technology and IP.Com
Competitive
Intelligence


IP Landscape

Competition
Technology

Licensing
Patents Competitor
Patents
Patents
Licenses Publications

Cross ©
Licenses
Trade Secret
Operations
Leader


Typical IP landscape
Growth Space

Competitor Y

OI

Firm Patent Footprint

OI – Outside - IN


Competitive landscaping

Publish
Patent

Trade secret

Research

Operations
Leader


1: Research :
First step to build your landscape
• What patents do we have in this strategic growth area?
• What is the license status?
• Is there any research agreements/ obligations?
• What was published in this area?
• What are competitive patents, interests?
• What is the status of prior art ?
– Patent position
– Freedom to Practice?
– Licensing Strategy
– Gap analysis and opportunity identification


2: Evaluate Patent Position
• Can this IP provide competitive edge to the Firm?
• Is the invention Novel? Useful? Non-obvious?
• Is Licensing, Business patent partnership is possible?
• Technical Merit Evaluation :
– Breakthrough, Substantial or incremental
– Technical Feasibility
• Evaluate Business or market metrics:
– Impact of the idea for customer experience / value
creation.
– Use for the Firm competitive edge
– Potential Use by Competitor
• How does Patent play into the business strategy?

3: Strategic IP Decision Flow
IDEA
Is the idea Can be
used as defensive / Yes
offensive patent?
No
Novel, Nonobvious,
No useful and IP Value Yes
to the firm?

Patent
Publish May be File

Commercial Value
No to the Firm? May be

Yes Hold
Trade
Secret


3a. Patenting Fishbone

Conceptual Competitive Procedural
Not Trade Secret Prior art
Non-obvious researched
Defensive disclosure IP strategy
Novel documented
Freedom to
Useful Invention
Operate Patenting
date established
Success
Top Management Knowledge Centre budget
Patent Attorney time Precede prior art
support
FILE submission Invention date Competitive
Business Maintenance fees & established
Management Edge
Foreign filing Defensive disclosure
support

Administrative Financial Temporal


3b. Publishing Fishbone

Patent /
Trade Secret
Conceptual Venue

Learn from Internal vs. External Defensive
Community Accepted / Invited disclosure
Internal
Referenceable Prestige of Documents
Journal / Conference
Peer validation Proper Patenting should
Category Not alienate community Publishing
Publicity improves Expired value as
Success
reputation Investment
trade secret
Anonymous option in
with IP.com recognition Public disclosure IP Strategy:
after patent
Foster external Free defensive consideration
Establish /
relationships disclosure Review-to-publish maintain
Cycle time technical
Temporal
Quality Financial reputation
& Freedom
to Practice


Step 4: IP Maintenance
• Ongoing Maintenance
• Monitor new (internal, external) developments in patents and publications
• Establish detectable features of infringement
• Monitor infringement
• Monitor (Firm and Competitor) acquisitions w/ IP implications
• Monitor new Firm Licensing arrangements
• Revisit disclosures in “Hold” / Trade Secret status

• IP Annotation / Strategy
• Conception / Definition:
• Problem  Solution
• Context & Strategy for Idea
• IP Interdependencies
• If/When Patent is Granted
• Competitive / Product Line Action Plan
• If/When Patent is NOT Granted
• Implications / Contingency Plan
• Highlight public disclosure / product use concerns
• Document information on inventors, prior art annotations


Managers Role
• Strategic IP direction

• Project Manager
– Patent Procurement
Obtaining and protecting patents
– Avoiding Infringement
– Assuring that solutions can be used without
infringing on the rights of others
– Global implication


Tips for Inventors
• Search : Do not reinvent the wheel!

• Look for Gaps in “Prior Art” which needs to be plugged

• Document the work / Notebook records (US Patent : first to invent)

• Be aware of the type of claims being made (Prod. / Process / Appl.)

• Decide Inventorship

• As complete a PDL as possible / 2-way commun. with attorneys!!

• File or Publish or Park.


IP MANAGEMENT
• Scope of Patents
• Identify gaps in existing patents
• IP Infringements (By others)
– Identify special properties of the product/process
– Identify competitors network
• Acquire companies that have related IP. Buy IP.
• Patent Update (or) New IP Disclosures
• Cross – Licensing
• Don’t maintain IP, if no sufficient ROI


Patents & Litigation Defenses
• Broad patent claims cover more possible implementations of a new
invention (including those never envisioned at the time of the
original invention), thereby maximizing chances of 3rd party
infringement
• However, the broader an asserted patent’s claims, the more
susceptible it becomes to invalidity challenges
• The Specifications of prior art patents (including published
applications) are the most significant for assessing the validity of an
asserted patent claim
• Can indicate whether an invention lacks novelty, or is “anticipated”
• Can indicate (either alone or in combination with other prior art)
whether an invention is “obvious”
• Operative Question: Have key features of invention as claimed
already been taught by prior art patent(s)?


Example
• Enercon vs Enercon India
• US patent US6899523.

The changing
/pitching/twisting of wind
blade from root to tip to
change the afflux angle is
known in the art.

Book published in 1995 that
shows that blades are twisted
from root to tip to avoid stall
and maximise the lift.


The Rise of Smart Phones
• Popular and Growing exponentially

• ~ 96% growth in the last 12 months

• ~ 320 million phone a year

• Changed the way we live

• Future of possibility


Patent war
• Focus on who has
competitive edge?

• Who will win the
war?

• Benefit to the
customers?


Smart phone patent trend
• ~7100 patents
• The patents had
publication dates
starting from
1965, and grew
steadily from 77
patents filed in
1990 to 565
patents filed in
2010

Soruce: Mike Lloyd et.al, The Smartphone Patent Wars, Ambercite, Griffith Hack, March 2011


Patent ownership


Patent Search
• Associative searching


Disputed smartphone technologies – patent landscape
landscape analysis. Visualisation of the most disputed technology
areas

• efsdf


Disputed
smartphone
technologies


Touch screen
landscape
and
Ownership


Touch screen competitive
landscape


Highest ranked patents in the touch
screen technology cluster.
• To stay
competitive,
Apple’s
competitors
(much more
than Apple
itself) are
heavily
dependent
on suppliers
and licensing
agreements
for one or
more
components


Link between Motorola & Apple patents


• who has competitive edge?

• Who will win the war?

• Benefit to the customers?

• Is it Google Android, Apple I phone or ?


A Review of the Major Points
• A patent is an intellectual property right assigned to an
inventor/ assignee.
• A copyright protects the expression of an idea, but not
the idea itself.
• A trade secret which is not kept secret becomes publicly
available.
• The two critical components of IP strategy are related to
technology and business.
• Strategic IP can provide a competitive edge for the firm.
• Competitive landscaping is one of the method used for
strategic IP.


Patent
or
Perish

Tech innovation s10_ip

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