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Developing IP Portfolio, By Arun Narasani
- 1. Developing IP Portfolio Arun K Narasani Founder, ipMetrix arun@ipmetrix.com
- 2. Did you know that Indian businesses pay royalties of more than USD 3 billion and receive royalties of less than 400 million?
- 3. Agenda ● Sustainable innovation ● Business Goals and IP Strategy ● IP policy/framework and process ● ● ● Tools for guidance and analysis – infringement analysis, competitor analysis, tech landscaping … Innovation frameworks – TRIZ, an example Identification and Protection ● Protection considerations/strategies ● Portfolio management ● Integration ● Myths ipMetrix 3
- 4. A Framework IP Policy Framework IP Analysis Tools Identification And Protection Innovation Portfolio Management IP Strategy ipMetrix 4
- 5. IP Strategy for Business ● Technology Roadmap ● Market needs and competition ● Organizational competencies ● Investment ipMetrix 5
- 6. IP Strategy for Business ● Role of IP ● Offensive vs Defensive ● Value creation vs Freedom to operate ● Profit center vs Cost center ipMetrix 6
- 7. IP Strategy for Business ● Offensive – sticks and carrots ● ● ● Aggressive and focused R&D Out-licensing Defensive – freedom to operate ● Protection of business interests ● Internal R&D or in-licensing ● Stopping others from acquiring IP ipMetrix 7
- 9. IP Policy ● IP acquisition ● ● ● Internal vs external Collaboration/ joint development Exploitation ● Commercialization ● Licensing ● Sale ● JV ... ipMetrix 9
- 10. IP Policy ● IP monitoring ● Avoiding risks ● Ownership ● Role of stakeholders including employees ● Employee incentives .. ipMetrix 10
- 12. Need for IP analysis ● Where do we start in developing IP portfolio? ● Which competitor IP can potentially block us? ● Which IP is required for freedom to operate? ● Which IP will be useful to block our competitors? ● ● Can we develop new IP that can improve your market presence? Is there IP that we cannot develop internally? If so, can we license such IP? ipMetrix 12
- 13. IP Analysis Tools ● Infringement analysis ● Technology landscaping ● ● ● Technology trends and patterns Identify opportunities and threats Competitor monitoring ● Reverse engineering ● Patent updates ipMetrix 13
- 14. Infringement Analysis ● Conduct patent search ● ● ● Classification/ assignee/ key words Identify relevant patent(s) Claim by claim and element by element analysis ● Literal infringement ● Infringement by Doctrine of equivalence ipMetrix 14
- 15. Technology Landscaping ● Analyzing technology segments ● Preparing detailed taxonomy ● Patent search ● Classification / assignee / key words ● Patent screening and analysis ● Detailed reporting to analyze trends ● Identify opportunities and threats ipMetrix 15
- 17. Reporting and Trend Analysis ipMetrix 17
- 18. Competitor Monitoring ● Regular updates to technology landscape ● Alert services on new competitor IP ● Alert services on related technology IP ● Reverse engineering ipMetrix 18
- 21. Innovation ● Innovation by trial and error ● ● Takes a long time Innovation through genius ● May not happen at all ipMetrix 21
- 22. Innovation is incremental “If Edison had the task to find a needle in a haystack, he would not lose time determining the most probable location of it. He would immediately, with the diligence of a bee, begin picking up straw after straw until he found the object of his search” - Nicola Tesla ipMetrix 22
- 23. Innovation largely is incremental ipMetrix 23
- 24. Illustration of the bulb.. ● Elements so far.. ● Enclosed bulb ● Filament ● Electric supply Source: “Economics of IP and Innovation”, Pavan Mamidi, Mentor at ipMetrix ipMetrix 24
- 25. So what came next? ● ● ● The art of incremental invention… Sequential invention/innovation is the practice of drawing upon historical experience and improving upon it… How? ● Tinkering with the past; ● Distorting the past; ● Bearing the social and economic cost of distorting the past; ● Institutionalizing and respecting the madness that goes into distorting the past! Source: “Economics of IP and Innovation”, Pavan Mamidi, Mentor at ipMetrix ipMetrix 25
- 26. Then came the diode.. ● ● ● ● Someone played around with the past.. His name was John Ambrose Fleming Basically tinkered around with the electric bulb, and introduced a new element – a ‘plate’… This became the basis for the phenomena of rectification in electric theory! Source: “Economics of IP and Innovation”, Pavan Mamidi, Mentor at ipMetrix ipMetrix 26
- 27. Then someone else came along… ● ● ● He tinkered around with the past even further! He introduced another new element – a small wire mesh between the filament and the plate (and could control the flow of electrons between them); This became the triode – which does something dramatically different from either an electric bulb or a diode – amplification! Source: “Economics of IP and Innovation”, Pavan Mamidi, Mentor at ipMetrix ipMetrix 27
- 28. Then someone else came along… ● ● ● They tinkered around with the bulb and all it’s elements….and distorted it even further. They were ‘mad’ too! They incorporated the functionality of a triode into a silicone medium – thus was born the transistor… Source: “Economics of IP and Innovation”, Pavan Mamidi, Mentor at ipMetrix ipMetrix 28
- 29. Once last time for the presentation…. ● ● ● Not satisfied with history, some more mad people engaged in the process of creative destruction of the past… They incorporated hundreds of these transistors onto one common silicon chip – which later gave birth to the digital world and the silicon valley; To which you in particular owe your livelihoods today! Source: “Economics of IP and Innovation”, Pavan Mamidi, Mentor at ipMetrix ipMetrix 29
- 30. TRIZ ipMetrix 30
- 31. TRIZ ● ● Based on the principle that there is a method to madness in engineering innovation TRIZ – Theory of Inventive Problem Solving (Genrich S. Altshuller) ipMetrix 31
- 32. TRIZ ● Systematic, step-by-step procedure ● Broad solution space to direct to ideal solution ● Repeatable and reliable ● Access to body of inventive knowledge ● Add to body of inventive knowledge ● Familiar enough to inventors ipMetrix 32
- 33. Levels of inventiveness Source: http://www.mazur.net/triz ipMetrix 33
- 34. Principles of TRIZ ● Ideality ● ● Resource use ● ● Use of available resources Contradiction ● ● Systems evolve towards increasing degrees of ideality: useful vs harmful effects Identifying contradictions Repeating patterns ● Repeating patterns of problems-solutions ipMetrix 34
- 35. Step-by-step process ● Identify problem ● ● Formulate problem ● ● Resource requirements, harmful effects Restate in terms of contradictions Search for solved problems ipMetrix 35
- 37. Framework ● Research on more than 300,000 patents ● 39 engineering parameters ● 40 inventive principles ipMetrix 37
- 38. Leveraging Ideas ● 90% of raw ideas never go beyond the generator ● 3% of remaining 10% obtain sufficient backing ● Failure to attract a champion “Developing communities of innovation by identifying innovation champions”, Elayne Coakes and Peter Smith. ipMetrix 38
- 39. Caselet – Envelope Improve loss of time vs Deterioration in reliability ipMetrix 39
- 40. Caselet – Shower Head Area of moving object vs Temperature ipMetrix 40
- 43. Identification ● Conduct regular audits ● Technology audit ● Process audit ● Review outcome of innovation exercises ● Identify potential IP based on business goals ● Perform risk analysis ● Ensure confidentiality of information ipMetrix 43
- 44. Protection ● First to file (India) ● Territorial ● Filing strategies ● National vs Foreign vs Convention vs PCT ipMetrix 44
- 47. Portfolio Management ● ● Identifying IP Builiding a portfolio of IP towards business goals ● Working on improvements ● Licensing strategies (In and Out) ● Competitor monitoring ● Maintenance of existing portfolio ● Issued and in-process ipMetrix 47
- 48. Portfolio Management ● Patent process: 3-4 year process ● Filing – ● 18M publication – ● Provisional and complete Early publication Examination – Multiple iterations of examination reports and responses ● Recordal ● Corrections ● Issue ● Clarifications from patent office ipMetrix 48
- 50. Integration and other concerns ipMetrix 50
- 51. R&D and IP Integration ipMetrix 51
- 53. Take aways.. ● IP is first techno-commercial ● The process may be legal ● IP is real and is here to stay ● IP is essential and not a necessary evil ● IP is value and not cost ● ● IBM, TI, Cisco, ARM, Intel, Motorola.. Innovation can be streamlined and IP can be generated through that process ipMetrix 53