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Ignite your.. ip strategy v1

  1. SetSquared: Ignite Your Crowdfunding & Intellectual Property Ignite Your…IP Portfolio Peter Beynon, Consultancy Services Director at ClearViewIP Ltd © ClearViewIP Ltd 2013. All rights reserved.
  2. ClearViewIP Ltd “ClearViewIP is an Intellectual Property Consultancy providing a range of services to help companies monitor, expand, commercialise, and better understand their IP portfolio and its position within the industry”  Founded 2007: 16 staff including 7 IP consultants  Extensive commercial and IP experience  Provide IP strategy and transaction services  Pragmatic business advice  Not lawyers. Not Patent Attorneys.  Expertise across a wide range of high-tech markets 2 © ClearViewIP Ltd 2013. All rights reserved.
  3. What is a Patent?  A patent protects new ‘inventions’: what they are, what they do and how they work  A granted patent provides the owner with monopoly on the subject of their application  A patent can prevent others from making, selling, distributing the subject without prior consent from the patent owner 3 © ClearViewIP Ltd 2013. All rights reserved.
  4. Company IP Portfolio  An IP portfolio should enable the company to perform its business as effectively and profitably as possible  The IP portfolio underpins the strategy and valuation of the business  IP includes patents, knowhow, brands, designs trademarks, etc …. our emphasis is on patents 4 © ClearViewIP Ltd 2013. All rights reserved.
  5. Key Patent Portfolio Goals  Protect market share o If products are copied, have the patents to challenge infringers  Use to trade if Freedom-to-Use issues develop o Provides defensive ability when other manufacturers litigate  Enable/strengthen strategic initiatives & investments  Trade against NPE (non-practising entities) activities 5 © ClearViewIP Ltd 2013. All rights reserved.
  6. Tools to Help Manage a Portfolio  Patent Landscape  Innovation Capture  IP Health Checks  Patent Commercialisation  Patent Acquisition 6 © ClearViewIP Ltd 2013. All rights reserved.
  7. Patent Landscape Understanding the Market  Understand the competition o Who are the strong/weak innovators? o Who are the new-comers? o Who was there first with the broad/fundamental IP? o Who is partnering with who? o Who are the litigators?  Understand the technology o Get detailed insight into the state of the art o What are the current/past technology focuses? o What will be the features of tomorrow's products? 7 © ClearViewIP Ltd 2013. All rights reserved.
  8. Patent Landscape Understanding the Market Examples taken from Photovoltaics Patent Landscape Patent applications by technology area Geographical distribution of granted patents assigned to the top 10 solar module manufacturers
  9. Patent Landscape Understanding the Market Examples taken from Photovoltaics Patent Landscape Percentage of PV patents by jurisdiction – bubble size represents percentage of that years/PV patent Top 20 assignees with the most PV patent filings applications made in that region
  10. Innovation Capture  Creates Records  Usable proof of inventorship  Stimulates further innovation  Helps to assess and rank invention records  Helps to validate novelty and conduct assessments  Develop an effective strategy  Helps to prepare detailed invention disclosures for patent application 10 © ClearViewIP Ltd 2013. All rights reserved.
  11. IP Health Checks Monitoring Your Portfolio  Innovation o Do new developments match current business?  Is the business still aligned with early patents?  Revisit the landscape with focus on where actual business is now  Are you still in scope of original patents ? o Are any competitors ? o Do you need to buy ? o Any new threats ? o What is surplus to requirements 11 © ClearViewIP Ltd 2013. All rights reserved.
  12. Technology Start Up Company  Base technology – 1 or 2 patents  Market opportunity – Not always quite as expected  Business develops – Are products or services still in scope of patents? – Has there been divergence? – Is anyone waiting to strike? 12 © ClearViewIP Ltd 2013. All rights reserved.
  13. Divergence 3 1 2 Company Company products & products & Patents services Patents Patents services Company growth over time  With growth, patents may become less well aligned  License / sell original core patents?  New filings to protect relevant innovation?  Patent acquisition to realign with new company focus? 13 © ClearViewIP Ltd 2013. All rights reserved.
  14. Patent Commercialisation Monetizing Your Portfolio  Patents no longer relevant to the business o No value - abandon o Value • License • Sell  Core but seek to realise value o Sell and license back o License • To another player active in different geographies / fields • If infringed - assert or use partner / special purpose vehicle 14 © ClearViewIP Ltd 2013. All rights reserved.
  15. Divergence 3 1 2 Company Company products & products & Patents services Patents Patents services Company growth over time  With growth, patents may become less well aligned  License / sell original core patents?  New filings to protect relevant innovation?  Patent acquisition to realign with new company focus? 15 © ClearViewIP Ltd 2013. All rights reserved.
  16. Patent Acquisition Strengthening Your Portfolio  Searching techniques to find relevant patents – Landscape based  Filter patents according to criteria – Litigation ready – Support patents – Room for manoeuvre  Establish probability of availability to purchase – Commercial knowledge – Discreet enquiries 16 © ClearViewIP Ltd 2013. All rights reserved.
  17. Venture Capital Funding Your Business  VC’s will want to understand: o People o Product or Service o Market & Technology o COMPANY IP PORTFOLIO & STRATEGY o IP OWNERSHIP o IP LANDSCAPE & FREEDOM TO USE Do they all stack up? If there is a strategic weakness, can we see how to fix it? 17 © ClearViewIP Ltd 2013. All rights reserved.
  18. Summary Do you know the threats in the market and the risks in commercialising your IP?  Patent Landscape What IP are you developing and what IP can you commercialise?  Innovation Capture Is your patent portfolio relevant to your business as it evolves?  IP Health Checks Do you have unused patents draining resources? Can you monetize your portfolio?  IP Commercialisation How can you strengthen your portfolio and how might you defend your portfolio?  Patent Acquisition 18 © ClearViewIP Ltd 2013. All rights reserved.
  19. Contact Peter Beynon, Consultancy Services Director peter_beynon@clearviewip.com Tel: 0845 680 1953 www.clearviewip.com Twitter: @ClearViewIP 19 © ClearViewIP Ltd 2013. All rights reserved.
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