Ever wondered how to best leverage your innovation – technology, patents and IP – to create additional value for your venture? You can increase your business valuation, create a revenue stream or generate a small windfall for your business by monetizing technology and patents along the way. IP and technology M&A can help create value whether you are early stage, mid stage or later stage.
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Juldee IP and tech monetization v4 by ex-Hewlett-Packard Director of IP Fas Mosleh
1. How do I create
additional value from my
innovation ?
…technology, patents and IP
1
2. Monetizing Innovation:
Patents and Technology
3/18/2020Fas Mosleh
Juldee
Innovate - GTM - Scale
Innovation and Scaling at the speed of thought
Innovation Ventures
7. Monetizing Innovation –
How to use IP and Technology to deliver
added value beyond your core business
7
IP and technology M&A can help create value whether
you are early stage, mid stage or later stage.
8. When can IP/Tech monetization help?
8
Startup
Mid stage – growth
Later stage – acquisition or IPO
10. Fas Mosleh
10
Silicon
Valley
Message queuing and Virtual OS VM
Venture Fund
IP Licensing and sales
Cyber security business
Super slow motion camera for iPhone 4MP
First front facing cameras for smartphones
3D printing
Image recognition
HPE Green Lake
IBM Power off /Hybrid Cloud
11. What we do at Juldee…
11
Strategy
• Monetization
strategy
• Patent strategy
• Licensing plan
• Valuation
Execution
• License in/out
• GTM/Scale
• Increase value
M&A
• Increase valuation,
demand
• M&A technology
• Exit
• Sell/buy IP
14. The Value of IP in a non-tech Company
14
Products & Technology Management Processes
& Operations
Customers and Channels Team & Brand
IP & Patents
15. The Value of IP in a Tech Company
15
Products & Technology
Management
Processes &
Operations
Customers and
Channels
Team & Brand
IP & Patents
16. Global Patent Ranking
16
•Microsoft, Apple, and IBM lead the world
in hardware & software patent innovation
according PatentSight.
•Samsung, Johnson & Johnson, LG
Electronics. Alphabet, Qualcomm, Ford,
Intel, Microsoft, Sony, and VW are the ten
most innovative companies in the world,
Source: PatentSight’s patent analytics research.
19. 19
Most Important Innovations… my list
1. Fire
2. Wheel
3. Money
4. Maths
5. Remote Control
6. TV
7. Hot bath
8. Cameras
9. Autos
10. iPhone
11. Internet
12. Air and space craft
Source: Fas@Venturecafe
Hahaha
22. Why Do Companies Patent?
22
Source: HIGH TECHNOLOGY ENTREPRENEURS AND THE PATENT SYSTEM: RESULTS OF THE 2008 BERKELEY PATENT SURVEY
Make and buy
A real
option
23. Examples of technologies buyers want
– Collaboration
– Messaging
– Secure access and endpoint management
– Payments and point of sale systems
– NFC/RFID
– Secure cards
– Cryptocurrency, blockchain
– Digital wallets
– ERP - Inventory tracking, shipping, logistics
– Cloud infrastructure
– Enterprise IT software
– SAN, NAS, Data Storage
– Mobile handsets
– Data warehousing
– AR/VR
– Video encoding
23
24. –Observability/method of detection
–Industry demand
–Industry actions/trends – who is suing whom
–Technology area
–Quality of patent; strength of claims
–Health of patents and apps (due diligence health check)
–Who is a licensee? What cross licensing if any?
–Expiration
–Work arounds
–Applicability (today and future)
What affects the value of patents?
25. How the patent owner decides to sell patents
Determine IP
Strategy
Determine
Monetization
Approach
Execute
Monetization
•Understand business needs
•What IP strategy meets the needs
•Acquire IP for defense/offense?
•Licensing?
•Sales?
•GTM plan
•Patents identified
•Sales plan created
•Channel engaged
Offensive need Defensive need
Strategic need
Non-strategic
SELLKEEP
Source: Juldee, 2011
26. Assess
& Plan
GTM Negotiate
Due
Diligence
Close
26
In-depth technical review
Review & extract results
Obtain soft or hard R/E
Review of file histories
Prior Art Review
Create Evidence of Use
Create claim charts
Market impact & players
Sales strategy
Prepare sales package
Transmit Sales Package
Schedule meetings
Demonstrate value
Follow up with client
Respond to questions
Negotiate Ts &Cs
Draft PPA agreement
Discuss issues
Obtain approvals
Determine Offer
Select patents to sell
Categorize
Prioritize
Engage SMEs
4-6 weeks 6-8 Weeks 6-8 weeks 4-6 weeks 2-4 weeks
Acquirer due diligence
-Legal
-Technical
Internal approvals
PPA fine tuning
PPA Execution
Punch List Coordination
Facilitate Funding
Ribbon Copies delivered
Negotiations through Post Closing
Transaction Support
Initiate Bid Process
Manage Bidding
Execute Round 1,2
Select bidder and backups
Example Patent Sales Process Timeline (6-12 months)
Source: Kanzatec, 2014
27. Traditional Use of Patents - Key Products to Defend
Time
Revenues/Impact
Product business trajectory
Current product business
Business #1
e.g. Cameras
Business #2
e.g. Enterprise Printers
Business #3
e.g. Digital Frames
Types of defense:
Aggressive
Proactive
Reactive
Source: Juldee, 2011
28. Don’t patent unless there
is a strategy
Business strategy>IP strategy>Patent prosecution
30. – Situation
– Need another round of funding
– Challenges
– Business doing poorly
– New funding is hard to get at reasonable valuation
– Action
– Divest patents with a license grant back
– Juldee allied with founders and strategy consultant
– Results
– $2M for 18 months of runway to profits
30
Example 1 – IP Funding
31. – Situation
– Ready to shut shop
– Challenges
– Bankruptcy could be brutal
– Action
– Decide to divest IP
– Juldee allied with investors and VCs
– Results
– ~$500K from patents alone
31
Example 2 – IP Exit
32. – Situation
– Reset strategy/priorities
– Challenges
– Complicated patent portfolio
– Action
– Reset portfolio to support new strategy
– Results
– Sell 10% of portfolio
– Buy necessary patents to defend in new markets
– Led to a dynamic IP strategy pacing the business strategy
32
Example 3 – IP Reset
Reset:
Align
Acquire
Divest
Repeat
33. – Situation
– $1B+ revenues semi company
– Challenges
– Unnecessary IP found every year
– Action
– Create a regular revenue stream
– Results
– Sell $1M+ of patents every quarter garnering 75% margins
– Healthy, dynamic IP strategy
33
Example 4 – IP Income
34. – Situation
– Entering new market
– Challenges
– Very contentious space
– Action
– Proactively protect by buying patents
– Results
– Bought $5M worth patents to protect
34
Example 5 – IP Protect
IP
Protect:
Aggressively
Proactively
Reactively
35. – Situation
– Seeking Funding/IPO/M&A
– Challenges
– Must maximize $$s
– Action
– Explore high return IP acquisition to boost valuation
– Results
– Bought ~$150K of patents = valuation boost of additional $1-2M
35
Example 6 – IP Boost Valuation
Equalizer
37. What can you do next?
37
– IP strategy: Consider your IP and patents as a strategic asset
– Don’t make up IP unless you know its potential for your business
– Funding: Consider the power of IP to increase valuation and credibility
– Revenues: Consider licensing and M&A of IP and technology to drive +$s
– M&A: Consider the power of IP to increase your M&A valuation
– Typical ‘customers’ you can impress with your technology and IP…
– Boards
– Investors
– Executive teams
40. Example of Juldee Value Add
– Strategy development to enhance funding, sharpen product value proposition, increase reach, increase value
– Results = more revenues, faster time to market, higher profits, larger deals, smaller sales cycle, brand
recognition, pervasive market penetration, successful exit
40
Strategy Results
Strategy Licensing deal Product spinout
Alliance partners
IP valuation
Higher valuation
More revenues, faster