IP Value Extraction

IP value extraction and commercialisation
IP value extraction
in cooperation with TUM-Tech GmbH
Dr. Christian Hackl Managing Director of TUM-Tech GmbH 2022

Your speaker – Christian Hackl
 Background www.tumtech.de
- Ph.D. in Chemistry
TUM: Technical University of
Munich
 More than 20 years experience in industry
(management consulting), CEO of TUM-Tech for
more than 15 years
 TUM-Tech GmbH:
- “Tech”: Technology Transfer (demand oriented) Disclaimer
Opinions expressed in this
presentation are those of the speaker
- Consulting on innovation management for and not necessarily those of the
European Patent Office.
companies and researcher
 Assistant Professor at TUM (Technology and
Innovation Management)
 Cofounder of start-up (renewable energy)
European Patent Office 2
Highly successful / best-selling products
?
Highly successful / best-selling products
?
 Any IPR associated with them…

One product - many IP rights
Trade marks Patents and utility models

 iPhone  Data-processing methods
 Product “xxx"  Operating system
 Start-up tone  Operation of user interface
Copyright Designs
 Software  Form of overall phone
 User manuals  Arrangement and shape of buttons
 Ringtones  Position and shape of screen
 Start-up tone
 Images
Trade secrets
 Some technical know-how kept
"in-house" and not published
Picture: Wikipedia

One product - many IP rights
Trade marks Patents and utility models

 iPhone  Data-processing methods
 Product “xxx"  Operating system
 Start-up tone  Operation of user interface
Copyright Designs
 Software  Form of overall phone
 User manuals  Arrangement and shape of buttons
 Ringtones  Position and shape of screen
 Start-up tone
 Images
Trade secrets
 Some technical know-how kept
"in-house" and not published
Picture: Wikipedia

Importance of Patents for your Business
 It is not about being proud of a patent hanging on the

wall …

Importance of Patents for your Business
 It is not about being proud of a patent hanging on the

wall …
 It is about using a patent as a commercial tool
Create value out of patents - how exactly?
?
 Exclusivity / Monopoly
 Price premium, higher margin

(return for your investment)


 Patents (IPR) support exclusivity

Protect an innovation
Picture: Burgerbe.de

Protect an innovation
Picture: Christian Hackl


 Patents (IPR) support

exclusivity

Rights conferred by patents
 Right to prevent others from making, using,

offering for sale, selling or importing
infringing products
− In the country where the patent is valid
− As long as the patent is valid
 Right to assign, sell or license these rights

Additional benefits
 Time to market
 Reserve / Improvement
 Ensure (further) freedom to operate

Be prepared to defend yourself
 Authorization enquiry
 Preliminary injunctions
 Injunctions
 Potentially: income
(damages)

Be prepared to defend yourself
Picture: pexels
 Authorization enquiry
 Preliminary injunctions
 Injunctions
 Potentially: income
(damages)

Value extraction: combining various IPR
$ Granstand, O.: Strategic
Management of Intellectual
Property. CIM Working Paper 1999
Patent 1
Patent granting date

t
Patent expiration date

Value of subsequent
patents
Patent 1
Patent 2

t

Value of subsequent
patents
Patent 1
Patent 2
Patent 3

t

Value of subsequent
patents
Patent 1
Patent 2
Patent 3 Trademark value

t

Value of subsequent
patents Trade secret and
know-how value
Patent 1
Patent 2

t

Total IP-value Management of Intellectual
Value of subsequent
patents Trade secret and
know-how value
Patent 1
Patent 2

t

Value extraction: combining various IPR (“evergreening”)
Conley, Bican, Ernst: Value
Articulation: A framework for the
strategic management of intellectual
property. California management
review, 2013

Granstand, O., Tietze, F.: IP
Strategies and policies for and
against evergreening. Centre for
Technology Management Working
Paper Series, 2015

Litigation history of Losac
Granstand, O., Tietze, F.: IP
Strategies and policies for and
against evergreening. Centre for
Technology Management Working
Paper Series, 2015

?
Various patenting strategies
“Blocking” Adapted from: Granstand, O.:
Strategic Management of Intellectual
Your patent
R&D direction of competitor

“Blocking” Following: Granstand, O.: Strategic
Your patent

“Inventing around” Following: Granstand, O.: Strategic
Your patent

“Inventing around” Picture: NBC News
Your patent

“Inventing around” Following: Granstand, O.: Strategic
Your patent

“Blanketing” (“flooding”) Granstand, O.: Strategic
Your patent

“Blanketing” (“flooding”) Source:
burghausen.de
Your patent

burghausen.de
Your patent

burghausen.de
Your patent

“Surrounding” Granstand, O.: Strategic
Your patent
X Competitor‘s patent

?
Additional income generation
What is a licence?
Permission to use IP
Licensor Payments
IP owner (eg Licensee
university, (eg company)
company,
individual)

Some Reasons for External Commercialisation
You are a German shoe-maker with a new process for dyeing leather
Other
Industry
Own
Germany
Own Other
Region
Other
Industry
Own
Germany Italy, Singapore
Own Other
Region
Other
Germany
Industry
Own
Germany
Own Other
Region
Other

Industry
Own
Own Other
Region
Benefits of licensing
Licensor Licensee
 Create new source of revenues  Gain (fast) access to new

 Access new territories and technologies, products and
markets (applications) processes

 Influence market acceptance for  Reduce R&D costs and risks
technology and products  Provide competitive advantage
 Share investment and IPR protection
 Create partnerships (R&D,  Create partnerships (R&D,
production and supply) production and supply)

 Settle infringement claim  Settle infringement claim
Cross-licensing
?
Cross-licensing
 Ensures FTO (Freedom to Operate)

 Basis for joint R&D-projects (background IP; new
foreground IP, possibly joint development)
 Can be glue for collaboration

Importance of IPR for Start-ups
Berkeley Patent Survey (High
Technology Entrepreneurs and the
Patent System: Results of the 2008
Berkeley Patent Survey), 2009
 BCG Matrix 1,332 US-based early-stage
technology companies founded
1998 - 2008

Importance of Patents for Start-ups
Berkeley Patent Survey (High
Technology Entrepreneurs and the
Patent System: Results of the 2008
Berkeley Patent Survey), 2009
 BCG Matrix 1,332 US-based early-stage
technology companies founded
1998 - 2008

Start-up Financing Phases
wikipedia
 BCG Matrix

Start-up Financing Phases (Biotech)
www.universityaffairs.ca
(adapted from Wikipedia)

Importance of Patents for VCs
Harhoff, D.: the role of patens and
licenses in securing external
Situation of VC Vale add of Patent finance for innovation. EIB Papers,
Vol 14 (2)
 Information asymmetry  Help overcome

between VC and start-up information asymmetries
 Information decision at  Lower uncertainty (to a
high degree of uncertainty certain extent)
− No track record − Signal for novel and inventive
− No revenues technology
− High risk − Seal of quality
 Problem of securing
 Economic benefit
investment
− In case of success
− In case of success
− In case of failure (VC owns
− In case of failure
patent)
European Patent Office

Cumulative probability of success of start-sups
Subsample of 587 VC backed start-
ups (post-investment)
Meniere, Y.: Can patent data predict

 BCG Matrix the success of startups? MINES
ParisTech, 2014

Probability of success of start-sups
Subsample of 587 VC backed start-
ups (post-investment), 2007 till 2012
Meniere, Y.: Can patent data predict

 BCG Matrix the success of startups? MINES
ParisTech, 2014

Importance of patents for funding – case studies
www.epo.org, case studies
Two out of a series of 12 case

studies (produced by the EPO in
2017)


2017)
“Patent protection is critical

when it comes to venture
capital funding for early-stage
technology companies”


2017)
“Patent protection is critical

when it comes to venture
capital funding for early-stage
technology companies”
Also for mature

companies

Reputation
Companies:
 For employees / new recruits
 For customers
 For suppliers
 For collaborators
 For research grants
 For investors
Academia:
 For being recognized as an expert in a certain field

Reputation
For product: promotion / marketing Source: Mary Kay

New IP based business models
 NPE (non practicing entities)

 PAE (patent assertion entities)
 IP brokers
 IP auctions
 IP exchanges
 Effect of Unitary Patent / Unitary Patent Court ?

(26 EU member states)
Summary
IP value extraction
 IP supported exclusivity
 Additional income generation
 Gaining technology access
 Fundraising
 Reputation
 New IP based business models

Thank you for your attention!
Dr. Christian Hackl

TUM-Tech GmbH
www.tumtech.de

IP Value Extraction

Uploaded by

Document Information

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

IP Value Extraction

Uploaded by

Copyright:

Available Formats

IP value extraction and commercialisation

Dr. Christian Hackl Managing Director of TUM-Tech GmbH 2022

European Patent Office 4

Trade marks Patents and utility models

European Patent Office 5

Trade marks Patents and utility models

European Patent Office 6

 It is not about being proud of a patent hanging on the

European Patent Office 7

 It is not about being proud of a patent hanging on the

 Price premium, higher margin

European Patent Office 10

 Price premium, higher margin

 Patents (IPR) support exclusivity

European Patent Office 11

European Patent Office 12

European Patent Office 13

 Price premium, higher margin

 Patents (IPR) support

European Patent Office 14

 Right to prevent others from making, using,

− In the country where the patent is valid

− As long as the patent is valid

 Right to assign, sell or license these rights

European Patent Office 15

 Ensure (further) freedom to operate

European Patent Office 16

European Patent Office 17

European Patent Office 18

Patent granting date

European Patent Office 19

Patent granting date

European Patent Office 20

Patent granting date

European Patent Office 21

Patent 3 Trademark value

Patent granting date

European Patent Office 22

Patent 3 Trademark value

Patent granting date

European Patent Office 23

Patent 3 Trademark value

Patent granting date

European Patent Office 24

European Patent Office 25

European Patent Office 26

European Patent Office 27

R&D direction of competitor

European Patent Office 29

R&D direction of competitor

European Patent Office 30

R&D direction of competitor

European Patent Office 31

R&D direction of competitor

European Patent Office 32

R&D direction of competitor

European Patent Office 33

R&D direction of competitor

European Patent Office 34

R&D direction of competitor

European Patent Office 35

R&D direction of competitor

European Patent Office 36

R&D direction of competitor