developing ip portfolio, by arun narasani

Developing IP Portfolio

Arun K NarasaniFounder, ipMetrix

arun@ipmetrix.com

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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IPStrategy

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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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IP PolicyFramework

IPStrategy

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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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IP PolicyFramework

IPStrategy

IP AnalysisTools

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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

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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

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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

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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

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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

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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

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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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Caselet – Envelope

Improve loss of time vs

Deterioration in reliability

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Area of moving object vs

Temperature

Caselet – Shower Head

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Innovation

IP PolicyFramework

IPStrategy

IP AnalysisTools

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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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Innovation

IP PolicyFramework

IPStrategy

IP AnalysisTools

IdentificationAnd

Protection

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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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Innovation

IP PolicyFramework

IPStrategy

IP AnalysisTools

IdentificationAnd

Protection

PortfolioManagement

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Integration and other concerns

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R&D and IP Integration

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Innovation

IP PolicyFramework

IPStrategy

IP AnalysisTools

IdentificationAnd

Protection

PortfolioManagement

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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 Narasani

arun@ipmetrix.com