opentto - diligent phase 1 - competitive patent analysis

©2004 [email protected]

Slide 1

OpenTTO.org - DILIGENT Phase 1 - Competitive Patent

AnalysisCPA Objective

CPA SIPOC ProcessFind and Transferring Knowledge

Rapid Screen-Down Technology Roadmapping

IP MappingTechnology Champion

Confidence Index


Slide 2

CPAObjective

To screen inventions and to prioritise opportunities:

• Which IP to drop from commercialization at this time?• Which to patent or to explore further for patenting?• Which to commercialise without patenting?

The process comprises two key sub-phases:• Technology screening – rapid sifting & risk reduction• Followed by patent analysis.

Templates

P CS OI

Transform

The core output is a priority list for action


Slide 3

CPA SIPOC

A repeatable 6-sigma process:

• Using organisational tools if required• Can be mapped onto any formats and templates• Not idea generation (idea generation precedes this step)• May follow pre-screening

CustomerOutputProcessInputSupplier

S I P O C

Templates

P CS O

I

Transform


Slide 4

Competitive Patent Analysis

SUPPLIERS: INPUTS: OUTPUTS: CUSTOMERS:

•Leaders•Researcher

s• IP Library

•Alliances

•Partners

• IP Librarian•Project

Management

•Business Leads•Partners•Funding

•Researchers•Funding•Partners•Government

•Researchers•Patent advisors•Funding•Business Leads

•Governance Group•Business Leads•Researchers

•Government

•Executive

•Business Lead

•Technology Lead

START

Collect Inventory

FINISH

MAP & Prioritized List

PROCESS

Discover, Screen, WorkshopPrioritize, Resource, Map

Ideas Researc

h Patents

Markets

Opportunity

Database

Business Priorities

Research Priorities

IP Priorities

IP Map

Programs

Priorities

Templates

P CS OI

Transform


Slide 5

Competitive Patent Analysis

1.1 Discover & Codify Inventions

1.2 Rapid Screen-Down

1.3 Workshop Remaining IP

1.4 Create IP Maps

1.5 Prioritise and Resource

Business and Technology Leaders

Researchers

IP Library

Alliances & Partners

Government

Ideas & Invention Disclosures

Research & Patents

Markets and Programmes

Priorities

1.1 Collect formal and informal documentation

and codification of IP – Invention Disclosures

1.2 Brainstorm around existing IP, then rapidly

screen out disclosures of lower potential

1.3 Workshop the remainder for quality and common

understanding of intent and first pass value

1.4 Create the IP MAP & Technology Roadmaps

and SWOT the combined information

1.5 Prioritise IP for further action, and set agenda

for further funding and effort

1.6 Complete Confidence Review and Index

Patent Priorities

Opportunity Database

Research Priorities

Business Priorities

IP Maps

Researchers & Business Leads

Governance Group

Funding and Government

IP Advisors and IP Librarian

The available and potential IP is collected, rapidly screened, assessed and then mapped to form a basis for setting priorities and selection.

ProcessSuppliers

Inputs

Outputs

Customers

Overview

1.0 CPA 2.0 MVP 3.0 IDA 4.0 ADC

Methodology Methodology


Slide 6

CPASuppliers and Inputs

Typical questions for suppliers and inputs:

• How do you recognise commercially exploitable research?• What knowledge do you own?• Where is it – and in what form?• Has it and can it be codified?• Are the rules of ownership clear and understood?• Are there multiple inventors and/or collaborators?• Were ownership agreements in place prior to “discovery”?• What public disclosures have been made?• Are their any disputes between any stakeholders?• Does any party have pre-emptive exploitation rights?

Templates

P CS OI

Transform


Slide 7

CPAFinding Knowledge is Difficult

Researchers and “inventors”:

• May not understand commercial potential• May not WANT to understand commercial potential• Lack motivation or regard it as a distraction• Perceive no reward for “commercialization” efforts • Are poor record-keepers• Don’t see the connection with other IP or disciplines• Might disclose prematurely – wish to talk• Perceive restrictions in freedom of information flow


Slide 8

CPAQuestions about the Concept

What is it really, in terms of a potential activity:

• A research project?• A licensing opportunity?• A collaboration opportunity? • A company spin-off deal?• A potential VC activity?

Be realistic as early as possible about the maturity and potential.


Slide 9

CPATransferring Knowledge is More

DifficultResearchers and “inventors”:

• May be more focused on pure basic research• Distain pragmatic knowledge with “commercial” value • May not want to get involved in “development”• Think of technology transfer as “dollars”• May have culture gap with technology transfer office • Cultural barrier with firms, and especially small firms • Have large cultural gaps with industry & investors • Don’t understand industry and industry dynamics • Want to avoid complex collaboration problems • Don’t understand the nonlinear technology cycle

Cultural differences can be one of the biggest problems


Slide 10

CPAPasteur’s Quadrant

Contribution of technology to economic growth >50%. BUT this is primarily from PASTEUR QUADRANT technology.

Incre

asin

gly

Fundam

enta

l N

atu

re (B

asic R

ese

arch

)

Increasing Consideration of Usefulness (Applied R&D)

Source: Stokes#, Pasteur’s Quadrant

Systematic Exploration

of Particulars (Audubon)

Use-inspired

Basic Research

(Pasteur, Langmuir)

Pure Applied

Research(Edison)

Pure Basic Research

(Bohr)

#Donald Stokes, Princeton University, Pasteur's Quadrant: Basic Science and Technological Innovation, Brookings Institution 1997

Research Scientist’s IDEAL

A problem or barrier in the world of practice, and attacking such problems by developing new fundamental understanding as a means of solving the problem.


Slide 11

CPAProcess and Transformation

The analysis and transformation phase asks:

• Do we have enough technical knowledge to “screen down fast”?

• Do we have enough industry knowledge to make “links”?• Does the invention complement or “improve” current works?• Does it link or form related families?• Is it core technology or application and market-focused?• What business and market opportunities does it create? • How much further work is required and by whom?• Does it block others from markets?• Who are the most prospective strategic partners?• Why would they be interested?• What is the “time-to-market”?• How can the created value best be captured for

stakeholders?

Templates

P CS OI

Transform


Slide 12

CPARapid Screen-down 1

Test the concept of how the idea would be developed:

Idea Development Plan

1. Idea

2. Process to Achieve?

3. How to Defend?

4. Strengths?

5. Opportunities?

6. Slipstream?

7. Luck?

8. Contacts?

9. Evidence/trends?


Slide 13

CPARapid Screen-down 2

Further evaluation criteria:

Criteria Checklist

1. Is the idea simple to explain?

2. Is the idea simple to understand?

3. Is it the type of idea that makes people say, “I wish that I had thought of that!”

4. Why is it valuable?

5. Is the timing right?

6. Have individuals or companies offered to work for equity?

7. Has the market come to you?

8. Do you see trends in the marketplace that could help the idea come to life?

9. How can the idea be monetarised?


Slide 14

CPARealisation Analysis

Draft realisation strategies:

*SMS messages currently generate $70m per month in revenue for Telstra• Sell the whole patent/system to one Directory “Yellow Pages”• Sell the patent to different Directories in different geographies eg Australia, Singapore, USA, UK.• License the patent as above – to one global licensee or many e.g. Vodaphone.• A combination of the above plus assignment of partial rights to a third party to undertake similar (non-conflicting endeavours e.g. the right to sell or license the system in Japan).

Business Directory Annotation Mobile Phone Reminder

Entity Role Benefits Costs Volume

End User Prime Beneficiary

ConvenienceTimely

Per Message Received

High Volume

Directory Content Provider

License and Implement Core System

Increase usage of Directory

License Fees plus Network Operator fees

One License

Network Operator

Location Determination Services

Network Usage and Messaging Fees*

Infrastructure and operating

High Load Volume


Slide 15

CPATechnology Roadmap

Tool to help make informed investment decisions:

• Forward mapping – technology push– Build technology layers– Seek new technology gaps– Evaluate potential of a technology to satisfy future needs

• Backward mapping – customer pull– How to reach a target set by the marketplace– Fulfillment-based technology evaluation

• Linked to Industry Roadmap (IDA next Phase)• Both Expert and Workshop-based approaches


Slide 16

CPATechnology Roadmap 2

A draft roadmap should:

• Analyse and synthesise technological trends, markets and challenges

• Determine how markets will evolve over the medium to long term and the research needed to address a particular technology issue

• Identify the key technologies and skill competencies in which local industry has a competitive advantage

• Identify key opportunities for further technological innovation

• Identify barriers relating to technology and technology uptake in the industry – i.e. absorption and commercialization potential


Slide 17


A roadmapping process should:

• Discuss the critical success factors (ie. if not met, will cause the roadmap to fail)

• Provide specific, quantifiable performance targets to inform the commercialization plan

• Define the actions required to develop and commercialise the subject technology and other technology families identified

• Map out a logical, prioritised sequence of technology research, acquisition and/or commercialization and diffusion. This requires an assessment of the ability of firms to adopt and adapt these technologies; and

• Identify appropriate roles for public and private partners in the process.


Slide 18


A roadmapping exercise is not:

• Forecasting or scenario planning – predicting inventions and infusion

• Technology foresight – identifying radical new areas of research

A roadmapping exercise is about:

• Working collaboratively with partners and stakeholders• Developing a shared vision of the future and exploring the

opportunities and pathways to achieve it. Unlike methods where the end-point is forecast, the

roadmap process starts with the end-point or vision clearly in mind and then traces the alternative technology paths to

achieve it.


Slide 19

CPATechnology Portfolio Map

Builds on competency, improves position

Builds new competency & extends business

Builds new competency & new business

NPV

Time to Launch

High

Zero

Low

Probabilit

y of

Success

Long


Slide 20

CPAIP Mapping Discipline

Mapping assists to clarify the commercial potential:

• Relationships to other IP families• Position in value-chain e.g. core, process, application,

market• Potential licensees and partners• Potential opposers and competitors• Route to market value• Potential of blocking, fencing and being blocked• Future technology/patent map is valuable.

The more specific the mapping the better.


Slide 21

CPAIP Mapping Benefits

Mapping assists to clarify the commercial potential:

• An overview of the patent landscape in broad terms• Identifies patent market space for rapid screening down• Helps to identify gaps for more R&D and redirected R&D• Helps find potential investors and collaborators• Identifies key inventors and companies in the field of interest• Assist in defining patenting strategy• Prevents false starts in further R&D investment

Links technology with market view for later stages.


Slide 22

CPAMapping Indicates SWOT

Sample Information Technology IP Map

Architecture

System Software

Networks

Security

WWW & Internet

eBusiness

Enterprise Business

Mobile & Wireless

Networking & Systems

Management

Horizontal Web

Horizontal Corporate

Consumer

Airlines

Advertising & Media

InfrastructureInfrastructure Processes Processes Applications Applications Markets Markets

Web Services

Peer to Peer

Messaging

Database & Objects

Other

001, 002

001, 002

001, 002, 004, 011, 013, 014, 016, 017, 019

003, 008 005

006

009,

010, 013, 017, 020 012,

014,

014, 015

Security

Media

wwwwww Issued Patent xxxxxx PCT Stage

yyyyyy Filed Provisional zzzzzz Idea to be Filed


Slide 23

CPAOutputs and Customers

The Output phase finalises the process:

• What should go forward without patenting? • What further work is needed to codify?• What public disclosures need to be stopped or managed?• Who else needs to be involved?• How can and will collaborators be managed?• How does it change research priorities?• How does it change business priorities?• How does it change IP protection priorities – patent actions?• How must funding, grants or resources now be re-directed?• What urgency and impact does it have – portfolio priorities?• Is more work needed on the IP Maps?• Who should participate in the next stage – MVP?

Templates

P CS OI

Transform


Slide 24

CPABe Alert – Patents Waste Resources

EFFECTIVE screening is vital:

• Too high a ratio of patents wastes money#

• The natural self-interests of patent attorneys calls for patenting

BUT RESIST!• Each patent filing potentially commits $250,000 of costs• No more than 40% of invention disclosures as a target• The majority of licensing does not require patents

# Ray Wood, CEO of high-tech start-up XRT and veteran technology commercialiser, states that filing a patent is a commitment to spending $250,000 to follow-through with PCT and local filings over the next 2-3 years.

HINT: choose patents attorneys for their individual skills in the specific application and firms for their skills in the

jurisdiction.


Slide 25

CPAPrototype or Working Model

There is no substitute for proof that “it”works:

• A working model, engineering prototype or software prototype reinforces the value

• Software simulations may be OK and sometimes the only way

• Whatever is not available in terms of demonstration adds to the challenge of attracting strategic partners and investors

• Indicate how prototype warrants and validates the value proposition

Whatever licensees or investors have to do to prove the invention will be deducted, and in multiples, from the value

captured by the invention owners.


Slide 26

CPATemplates

IP Map and Technology Event Map:• IP Map

– Lay out patent position of invention– Understand strength of point position and family– Plot competitors– Review surrounding, blocking and potential blocking

patents

• Technology Event Map– What discontinuities can be foreseen?– What related technologies have to be assembled?– Which are enablers?– Which are leveragers (add value)?– What problems can be built from the solutions?

Templates

P CS OI

Transform


Slide 27

CPATemplates

The Phase Summary Report:

• Part of an evolving Business Case• Contains at least:

– Objective– Conclusion– Summary– Actions– Notes and carry-forward handover matters

• Actions for further work may precede or run in parallel with the next Phase - MVP

Templates

P CS OI

Transform


Slide 28

CPA Confidence Index

How confident are you that:1. The best ideas relevant to this commercialization

investment have been discovered?2. The ideas have been understood technically?3. The nature of the problems solved by the technology are

adequately understood?4. The commercial value of the ideas has been understood?5. The key ideas have been kept confidential?6. These ideas will generate significant value for the

organisation in the future?7. Further expenditure, e.g. patenting, is worthwhile?8. Resources are and will be available to progress the

evaluation?9. A technology champion is available and willing to back

the commercialization effort?10.The impact and urgency of this opportunity is

understood?


Slide 29

CPA Confidence Check

Discuss the results of the confidence index:

• Check scores on 1-5 scale• Check and compare differences for each respondent for

each question• Discuss differences of more than two or more points on a

particular question• Resolve or accept differences and note any actions• Adjust votes if now necessary• Sum group result• Multiply by CPA weighting to get Confidence Index result• Weighting 20:20:15:10:15:15:5


Slide 30

CPANeed For Technology Champion

Katherine KU, Director OTT Stanford U#:

• “From our perspective the technology champion is the most important factor - so if we have someone in the company who is interested in the technology that is the most likely way that the technology will be transferred.”

• “When you are talking about an exclusive license we

need a champion inside the university - an inventor or entrepreneur who really believes in the technology”

#Workshop on ACADEMIC IP: Effects of University Patenting and Licensing on Commercialization and Research. April 17, 2001, Washington DC. The National Academies Board on Science, Technology and Economic Policy, Committee on Intellectual Property Rights in the Knowledge-based Economy.

opentto - diligent phase 1 - competitive patent analysis

Documents