Developing IP Portfolio

Arun K Narasani
A Division of Brain League IP Services

INTELLECTURE

Did you know that Indian businesses pay royalties of more than USD 3 billion and receive royalties of less than 400 million?

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
IP Policy Framework

IP Analysis Tools

Innovation

Identification And Protection

Portfolio Management

IP Strategy

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IP Strategy for Business

Technology Roadmap
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Market needs and competition Organizational competencies Investment

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IP Strategy for Business

Role of IP
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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
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Aggressive and focused R&D Out-licensing

Defensive – freedom to operate
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Protection of business interests Internal R&D or in-licensing Stopping others from acquiring IP
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IP Policy

IP acquisition
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Internal vs external Collaboration/ joint development

Exploitation
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Commercialization Licensing Sale JV ...
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IP Policy

IP monitoring

Avoiding risks

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Ownership Role of stakeholders including employees Employee incentives ..

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Need for IP analysis

Where do we start in developing IP portfolio?
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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
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Infringement analysis Technology landscaping
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Technology trends and patterns Identify opportunities and threats Reverse engineering Patent updates

Competitor monitoring
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Infringement Analysis

Conduct patent search

Classification/ assignee/ key words

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Identify relevant patent(s) Claim by claim and element by element analysis
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Literal infringement Infringement by Doctrine of equivalence

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Technology Landscaping
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Analyzing technology segments Preparing detailed taxonomy Patent search

Classification / assignee / key words

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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
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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 May not happen at all

Innovation through genius

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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..
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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!
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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
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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 Use of available resources Identifying contradictions Repeating patterns of problems-solutions
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Resource use

Contradiction

Repeating patterns

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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

General Problem

General Solution

Specific Problem

Specific Solution

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Framework
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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

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“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
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Technology audit Process audit

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Review outcome of innovation exercises Identify potential IP based on business goals Perform risk analysis Ensure confidentiality of information

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Protection
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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
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Identifying IP Builiding a portfolio of IP towards business goals Working on improvements Licensing strategies (In and Out) Competitor monitoring Maintenance of existing portfolio

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Issued and in-process
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Portfolio Management

Patent process: 3-4 year process

Filing

Provisional and complete Early publication Multiple iterations of examination reports and responses

18M publication

Examination

Recordal Corrections Issue Clarifications from patent office
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Patent History maintains a record of all communication s with the patent/tradem ark 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

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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 Narasani CEO, Brain League IP Services arun@brainleague.com

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