Collaborating and Making Money from your Data and IP - the Good, the Bad, and the Ugly
November 7, 2017
Panelists and Speakers
Henry Unger
President
Pulsiam, Inc.
Dr. Elvir Causevic
Managing Director & Co-Head of Tech+IP
Advisory Practice
Houlihan Lokey
Toni Y. Hickey
Deputy General Counsel & Chief IP
Counsel
Cummins Inc.
Beni Surpin
PartnerTechnology
Transactions & Outsourcing
Foley & Lardner LLP
Agenda
Ways to generate revenue from IP and Data
Trends towards more open IP strategies
Data monetization strategies
Data monetization regulatory issues
Best practices for generating revenue from IP and data—the good, the bad, and the ugly
Generating Revenue from IP Ordinary play
build IP portfolio surrounding the product, gain market share and prevent copycats
Offensive play
collect royalties from third parties
Defensive play
block competitors and create freedom-to-operate space, reduce IP litigation risks
Alternative play
create different fields of use for the IP, monetize non-core IP and data
Trends Towards More Open IP Strategies
What are the trends in IP and data monetization?
Trends Towards More Open IP Strategies
More collaboration in developing and using IP
Sharing technology and monetizing data
Board’s fiduciary duty to generate revenue from non-core IP
War Stories
What approaches has your company/industry taken to make money from IP or data?
Data Monetization Strategies
How can a company make money from its data?
Data Monetization Strategies
De-identification of data
Using the data to improve products, or other products in other industries
Run data analytics
Shared data pool among those who contributed data
Data Monetization Regulatory Issues
What are the regulatory issues regarding data monetization that you have encountered in your industry?
Data Monetization Regulatory Issues
Cybersecurity
Privacy
HIPPA
Consumer protection laws
Financial and credit card information
Best Practices
The Good, The Bad, And The Ugly…
GOOD
Do a “Strategic Alternatives Analysis”:
Identify Non-Core assets for sale, and Core assets that may be licensed outside core business
field
Examine options: Sell / Exclusive license / Non-exclusive license / Tech Transfer / JV
Get internal approvals to dispose, and be clear about expectations and risks
Create a package with critical mass (>100 patent families), be clear about any existing
licenses/encumbrances
Ask a reasonable price based on a solid financial valuation – with realistic assumptions based on
comparables
Demonstrate how patents are infringed by 3rd parties (Evidence of Use charts) – really helps defensive
buyers
Offer for sale or license to “friends and family” first, then open the bidding to the entire market
Collect and secure ownership/license to data for potential monetization
Conduct data analytics to improve product, create efficiency, enhance profitability, and design new
revenue models
The Good, The Bad, And The Ugly…
BAD
Try to monetize assets that were about to go the garbage bin
Start with an aggressive and assertive non-exclusive licensing campaign through litigation
shops
Ask an excessive price, force deals to happen quickly
Try to monetize data without complying with all the regulatory requirements
Do it yourself
UGLY
Privateering:
Take the assets related to the same underlying technology and split up into five separate
subgroups
Keep one and sell four subgroups to four different patent trolls
Approach targets directly yourself and send the four trolls after them as well
Sell off personal information and other customer data and make a real PR crisis
Questions/Comments
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2017 NATIONAL DIRECTORS INSTITUTE
Collaborating and Making Money from your Data and IP — the Good, the Bad, and the Ugly
November 7, 2017
Agenda:
I. Ways of generating revenue from IP and Data
a. Ordinary play
b. Offensive play
c. Defensive play
d. Alternative play
II. Trends towards more open IP strategies
a. Collaboration
b. Monetization of non-core IP
c. IP and data sharing
III. Data monetization strategies and regulatory issues
a. Data de-identification
b. Data analytics
c. Shared data pool
d. Regulations governing the use and monetization of data
IV. Best practices for generating revenue from the IP and data, the good, the bad,
and the ugly.