International Business Environments and Operations 16th Global Edition test b...
Icle group slides2012-1
1. EFFECTIVE COPYRIGHT STRATEGY:
A HOLISTIC APPROACH TO IP
PORTFOLIOS!
Katherine C. Spelman
Sharon L. Oriel
Edward A. Ketterer III
Cobalt, LLP
Talisker & Associates
Ketterer Consulting PLLC
Berkeley, CA
Glen Arbor, MI
Northport, MI
ICLE’s 38th Annual IP Law
Summer Institute
July 19-21, 2012
Ketterer Consulting PLLC
Talisker&Assoc.
2. Use competitive patent data to assess
your strategy and activity level:!
• Versus the industry as a whole, or against a key competitor"
• Differences in product emphasis "
• Activity over a given time period or all unexpired patents
Ketterer Consulting PLLC
Talisker&Assoc.
3. The Technology Stage of inventions
covered by recent patent applications
can be used at a high level to: !
• Assess consistency of IP counsel linkage across the company’s operations"
• Identify basic functional areas where IP support needs to be focused"
• Identify overall portfolio trends and compare with company strategy
Ketterer Consulting PLLC
Talisker&Assoc.
4. The Technology Stage of inventions
covered by recent patent applications
can be used at a high level to: !
• Assess consistency of IP counsel linkage across the company’s operations"
• Identify basic functional areas where IP support needs to be focused"
• Identify overall portfolio trends and compare with company strategy
Ketterer Consulting PLLC
Talisker&Assoc.
5. Technology Phase Analysis Can Be Used
To:!
• Focus product development activity on products that are “stale”"
• Focus patent activity on products where the portfolio is weak"
• Assess a competitor’s portfolio
12
TECHNOLOGY STAGE OF 2011 PATENTS
10
8
6
Number Filed
4
2
0
Early Stage Intermediate Stage Late Stage
Ketterer Consulting PLLC
Talisker&Assoc.
6. Use selected criteria from the lists
below to build a unique patent filing
strategy for your company or client.
These are applicable to both utility and
design patents.!
• General Patent Filing Criteria (basic reasons to file)
– Prevent competitive copying (active offense; enforcement)
– Send a message/create a reputation that discourages copying (passive offense)
– Marketing claims--"patent pending," "patented," "exclusive," etc.
– Establish/enhance company reputation as an innovation leader
– Added patent for an existing portfolio--"fence building"
– Control third parties (designers, development partners, suppliers, etc.)
– Cross licensing (defense; dispute resolution)
– Licensing for value
– Attract investors/venture capital
– Employee (designer, inventor) recognition
Ketterer Consulting PLLC
Talisker&Assoc.
7. Combine basic filing criteria with
invention-specific filing criteria
when making individual filing
decisions.!
• Invention-Specific Filing Criteria
– Anticipated product volume
– Product margin
– Life of product--how long in the line?
– Iconic or breakthrough product?
– Strategic importance of product category (related to volume, but not quite the
same)
– Apparent amount of novelty, originality (scope of protection)
– Likelihood of competitive copying
– Correlation between what can be protected and the primary product appeal to
customer
Ketterer Consulting PLLC
Talisker&Assoc.
8. Example—Strategic
Mapping of Competitive!
5
High
4 Company C
Company A Company B
Patent Quality
3
2
Company D
1 Company E
0 1 2 3 4 5
Low User Benefit High
Talisker&Assoc. Ketterer Consulting PLLC
9. Start with Corporate
Vision & Mission!
• Mission is why the company exists
• Vision is the company of the future
• Strategy is a deliberate plan of actions
• Objectives are usually longer term
• Goals are short term (1 year)
• What is the role of intangibles in meeting the corporate
goals & objectives?
Ketterer Consulting PLLC
Talisker&Assoc.
11. Business Strategy!
• What is your business? You may not need
patents. Consider trade secrets, copyrights,
publications, standards.
• What are the market place rules? What countries
do you play in?
• Where is the business in the supply chain?
Ketterer Consulting PLLC
Talisker&Assoc.
12. Business Strategy!
• Proactive Strategy: create a business with
sustainable competitive advantage based on
intangibles
• Access external technology to speed up market
entry
• Set realistic goals with realistic resources
• Share the credit for the $$$$
Ketterer Consulting PLLC
Talisker&Assoc.
13. “IP” Strategy: Value Creation
Objectives!
“IP” Strategy
Value Extraction
Talisker&Assoc. Ketterer Consulting PLLC
14. Potential Objectives!
• Protection of innovations
• Design Freedom
• Litigation Avoidance
• Basis for alliances and JV’s
• Commercialization
• Enhanced image of firm
Ketterer Consulting PLLC
Talisker&Assoc.
15. Portfolio Analysis &
Alignment!
• What is in your portfolio?
• How are you using your portfolio?
• Who owns the IP?
• Licensing potential: in & out licensing
• Document your portfolio analysis & alignment and keep it up to
date
• Report the $$$$$$: Income & Expense
Ketterer Consulting PLLC
Talisker&Assoc.
16. IP Portfolio
Alignment!
• Aligning IP portfolio with corporate vision,
strategy and objectives provides a business
focus
• New revenue opportunities are visible
• IP with little value is abandoned (cost savings)
Ketterer Consulting PLLC
Talisker&Assoc.
17. Business Impact
Measures!
• Show the VALUE of intangibles
- NPV of value growth and preservation segments
- % of current sales protected by IP
- % of new products protected by IP
- $ Value of IC contributions to M&A
• Manage the COST of intangibles
- Projected costs to obtain & maintain the IP
- % of IC management costs of R&D, sales, etc.
- Ratio of costs versus value of IC for a business
Ketterer Consulting PLLC
Talisker&Assoc.
18. Business related IP metrics:
Few companies measure!
1.
Inventory of all differentiated know-how and trade secrets
2.
Licensing revenue generated from know-how and trade
secrets in the last calendar or fiscal year
3.
List of key inventors in the company
4.
List of key inventors in your technology space
5.
Do you identify, track and investigate white space
opportunities?
6.
Do you calculate the value of your brand(s)?
Ketterer Consulting PLLC
Talisker&Assoc.
19. Strategic Alignment!
• Five Points to Remember:
1. Start with the Corporate Vision & Strategy
2. Align the intangibles portfolio with the business strategy
3. Create systems and organization after strategic alignment
4. Communicate the aligned strategy
5. Show the $$$$$$
Ketterer Consulting PLLC
Talisker&Assoc.
20. Key Roles in IA
Organizational
Models!
Legal Business Marketing R&D Strategy
IA Inventor Communicat Submit Prioritized Provide
identification e trademark research corporate
education
strategy ideas goals
Patent Manage Align app’l Provide Perfect Check
prosecution legal work with strategy comp. info claims alignment
Portfolio Legal Classify use Develop Future IA Reassess
Management expertise brand value alignment
Licensing Agt. drafts Provide Benefits of Tech Policy
business deal transfer
terms
M&A Due Opport. ID Brand Value Synergy Corporate
diligence Value
Ketterer Consulting PLLC
Talisker&Assoc.
