developing ip portfolio
DESCRIPTION
Presentation on Developing IP Portfolio by Mr. Arun Narasani, Brain League IP Services.TRANSCRIPT
Developing IP Portfolio
Arun K Narasani
INTELLECTUREA Division of Brain League IP Services
Did you know that Indian businesses pay royalties of more than USD 3 billion and receive royalties of
less than 400 million?
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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
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A Framework
Innovation
IP PolicyFramework
IPStrategy
IP AnalysisTools
IdentificationAnd
Protection
PortfolioManagement
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IP Strategy for Business
● Technology Roadmap● Market needs and competition● Organizational competencies● Investment
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IP Strategy for Business
● Role of IP● Offensive vs Defensive● Value creation vs Freedom to operate● Profit center vs Cost center
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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
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IP Policy
● IP acquisition● Internal vs external● Collaboration/ joint development
● Exploitation● Commercialization● Licensing● Sale● JV ...
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IP Policy
● IP monitoring● Avoiding risks
● Ownership● Role of stakeholders including employees● Employee incentives ..
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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?
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IP Analysis Tools
● Infringement analysis● Technology landscaping
● Technology trends and patterns● Identify opportunities and threats
● Competitor monitoring● Reverse engineering● Patent updates
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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
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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
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Detailed Taxonomy
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Reporting and Trend Analysis
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Competitor Monitoring
● Regular updates to technology landscape● Alert services on new competitor IP● Alert services on related technology IP● Reverse engineering
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Innovation
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Innovation
● Innovation by trial and error● Takes a long time
● Innovation through genius● May not happen at all
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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
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Innovation largely is incremental
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Illustration of the bulb..
● Elements so far..● Enclosed bulb● Filament● Electric supply
Source: “Economics of IP and Innovation”, Pavan Mamidi, Mentor at Brain League IP Services
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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 Brain
League IP Services
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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 Brain
League IP Services
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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 Brain League IP Services
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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 Brain League IP Services
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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 Brain League IP Services
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TRIZ
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TRIZ
● Based on the principle that there is a method to madness in engineering innovation
● TRIZ – Theory of Inventive Problem Solving (Genrich S. Altshuller)
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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
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Levels of inventiveness
Source: http://www.mazur.net/triz
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Principles of TRIZ
● Ideality● Systems evolve towards increasing degrees of
ideality: useful vs harmful effects
● Resource use● Use of available resources
● Contradiction● Identifying contradictions
● Repeating patterns● Repeating patterns of problems-solutions
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Step-by-step process
● Identify problem● Resource requirements, harmful effects
● Formulate problem● Restate in terms of contradictions
● Search for solved problems
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TRIZ Method
SpecificProblem
GeneralProblem
SpecificSolution
GeneralSolution
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Framework
● Research on more than 300,000 patents● 39 engineering parameters● 40 inventive principles
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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.
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Identification and Protection
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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
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Protection
● First to file (India)● Territorial● Filing strategies
● National vs Foreign vs Convention vs PCT
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Portfolio Management
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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
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Portfolio Management
● Patent process: 3-4 year process
● Filing– Provisional and complete
● 18M publication– Early publication
● Examination– Multiple iterations of examination reports and responses
● Recordal● Corrections● Issue● Clarifications from patent office
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Patent History maintains a record of all
communications with the
patent/trademark office
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New alerts may be added or existing alerts may be modified using the
respective tabs .
A query report in
excel can be generated by clicking ‘Run Alert
Query ‘ tab
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New alert may be added by specifying the ‘extent’ and frequency of the alert
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Integration and other concerns
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R&D and IP Integration
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Some 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
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Questions?
Contact: Arun K NarasaniCEO, Brain League IP Services