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Understand ways to protect the knowledge assets that constitute the basis of competitive advantage
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ATOA Scientific Technologies Engineering Simulation For Innovation
Technology and Innovation Management: S10 Intellectual Property (IP) Strategy and management Raj C Thiagarajan, PhD
To
SIBM SIII MBA Students
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
What is this map?
2
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
IP War
3
Mobile phone patent suits
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
Why
4
Exponential Growth
Worldwide shipment of mobile phones (2008)
Future
PC, 10%
Notebook, 10%
Mobile phone, 80%
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
IP Strategy and management
5
• 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
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
What is “Intellectual Property”?
6
"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.
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
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
7
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
Patent
8
• 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
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
Patent
9
• 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
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
The First mobile patent
10
• 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
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
Anatomy
11
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.
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
Why are Patents important?
12
• 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
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
U.S. PATENT
NO. 7,842,379
Issued
Patentability
13
Novel • 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 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
• Useful
NOVEL
NONOBVIOUS
USEFUL
STATUTORY SUBJECT MATTER
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
What is Patentable?
14
• 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.
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
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.
©
15
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
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.
16
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
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/
Copy
Difficult
No protections to protect secret
status of innovation
Protection mechanisms in Place Protected from inadvertent or
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
17
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
Strategic IP
Market
• Strategy
• Product
• Customer
• Competition
Technology
• Engineering
• Landscape
• Prior art
• Associations
Strategic IP Offensive / Defensive
Publications Patents
Copyright Trade Secrets
18
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
Strategic IP
“Technology Push ”
• Create ideas
• Do experimental demonstration
• Disclosure
• Evaluation for Priority
• Patent application Filing
• Patent portfolio management
• Technology Ideas.
“Market Pull”
• Develop business strategy
• Define target product, market, segment
• IP–assessment
• Identify strategic idea area
• Targeted idea generation
• Marketable Ideas
19
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
IP Strategy
20
Competitive IP Landscape, Strategic Patent Portfolio
Intellectual Property
Offensive Defensive
Strategic
Patent
Filing
Business development
and Collaborations
Patent Infringement
avoidance
Establish prior art, Freedom to
Practice
IP team
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
IP Direction Concepts,
Disclosures Filings,
Publications
IP strategy process
“Patent” search Systems Online Micropatent Delphion …
Idea, Invention management System
Patenting filing prioritization system
External Publications, Systems IP.Com
Business Strategy / Market Assessment
Competitive IP landscape Analysis (Gap analysis)
Competitive Intelligence
Technology and Competitive Intelligence
IP Strategies
21
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
IP Landscape
22
Technology
Patents
Licenses Publications
Competitor Patents
Licensing
Operations Leader
Patents
Cross Licenses
Trade Secret
Competition
©
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
Competitor Y
OI
OI – Outside - IN
Typical IP landscape
Firm Patent Footprint
Growth Space
23
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
Competitive landscaping
24
Operations Leader
Research
Patent Publish
Trade secret
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
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
25
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
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?
26
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
3: Strategic IP Decision Flow
IDEA
Is the idea Can be used as defensive / offensive patent?
Publish
Novel, Nonobvious, useful and IP Value
to the firm?
Commercial Value to the Firm?
Hold
Patent File
Trade Secret
No
Yes
Yes
Yes
No
No
May be
May be
27
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
3a. Patenting Fishbone
28
Patenting Success
Conceptual
Financial
Competitive
Administrative
Procedural
Temporal
Novel
Useful
Non-obvious
Freedom to Operate
Defensive disclosure
Not Trade Secret
Invention date established
Prior art researched
IP strategy documented
Top Management support
Business Management support
FILE submission
Maintenance fees & Foreign filing
Precede prior art
Invention date established
Defensive disclosure
Knowledge Centre budget Patent Attorney time
Competitive Edge
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
3b. Publishing Fishbone
29
Publishing Success
Conceptual
Financial
Venue
Quality
Patent / Trade Secret
Temporal
Proper Category
Prestige of Journal / Conference
Accepted / Invited
Patenting should Not alienate community
Defensive disclosure
Internal Documents
Internal vs. External
Peer validation
Referenceable
Foster external relationships
Publicity improves reputation
Learn from Community
Expired value as trade secret
Public disclosure after patent consideration
Investment in recognition
Free defensive disclosure
Anonymous option with IP.com
Review-to-publish Cycle time
IP Strategy: Establish / maintain technical
reputation & Freedom to Practice
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
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
30
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
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
31
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
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.
32
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
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
33
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
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)?
34
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
Example
35
• 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.
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
The Rise of Smart Phones
36
• Popular and Growing exponentially
• ~ 96% growth in the last 12 months
• ~ 320 million phone a year
• Changed the way we live
• Future of possibility
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
Patent war
37
• Focus on who has competitive edge?
• Who will win the war?
• Benefit to the customers?
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
Smart phone patent trend
38
• ~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
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
Patent ownership
39
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
Patent Search
40
• Associative searching
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
landscape
41
• efsdf
Disputed smartphone technologies – patent landscape analysis. Visualisation of the most disputed technology areas
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
Disputed smartphone technologies
42
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
Touch screen landscape and Ownership
43
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
Touch screen competitive landscape
44
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
Highest ranked patents in the touch screen technology cluster.
45
• To stay competitive, Apple’s competitors (much more than Apple itself) are heavily dependent on suppliers and licensing agreements for one or more components
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
Link between Motorola & Apple patents
46
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management 47
• who has competitive edge?
• Who will win the war?
• Benefit to the customers?
• Is it Google Android, Apple I phone or ?
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management
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.
48
ATOA Scientific Technologies Pvt Ltd | SIBM , III Semester MBA| Technology and Innovation Management 49
Patent
or
Perish