strategies for protecting and leveraging your ip
TRANSCRIPT
© 2013 EverEdge IP. Confidential.
Advisory Services2013
Who are we?
New Zealand’s largest technology and intellectual property commercialisation firm.
Advisory: Advise how to commercialise technology. Client range: innovators to investors to Fortune 100 companies.
Transactions: Broker the sale and purchase of intellectual property assets. Deal range: 000,000 to 00,000,000.
Technology: Invest in and commercialise IP-rich technology. Technology range: all technologies - packaging to medical devices to software.
We help our clients make money from ideas.
OUR TEAM.
Prof. Henry Bolanos (CT, USA)
Yale University, NPD & InnovationInvented key hole surgery, 110+ patents, ex VP R&D US Surgical Corp, Johnson & Johnson
Paul Adams (Auckland)
CEO & FounderFounded 1 of Top 10 incubators in world. IP Manager, BNT [NYSE: BC]. IAM300 Strategist.
Paul Davies (Auckland)
Director - IPPatent attorney; ex-Head of Patents for Deacons - largest law firm in Hong Kong.
Steve Steger (IL, USA)
Managing Partner, GIPLGUS patent attorney, brokered sale of Nortel’s patents for US$4.5 billion. IAM300.
Garry Reynolds (Auckland)
Director - Commercialisation30 years technology company experience incl. CEO, Motorola NZ.
Principals / Senior
Associates
Minimum two degrees; highly experienced in law, technology & business.
Dr. Chris Donegan (London)
Director - TransactionsAccenture, UBS, Euram Bank (AG) . PhD neuro-biology. 3x IAM 300 Strategist.
Francis Rushford (CA, USA)
Director - LicensingExecutive VP, ICAP Capital Markets, Partner Christie Parker & Hale, Lucent, 6 x IAM300
Shirley Schaefer (Beijing)
Director - BrandBrand Master, Represents over 40 luxury brands in China. Professor, Beijing University.
1. Commercialising IP
Defining: “IP Commercialisation”
What is IP Commercialisation?
Turning IP into economic or strategic value The most common form is making or selling
product that includes some form of IP in the Product or Brand
Outright Sale
License
Manufacture & Distribution
Commercialisation OptionsRe
war
d ($
val
ue)
Risk + Resource + Time
Total vertical integration
Outsource most processes
Strong vs Weak IP
Strong IP
Weak IP
No one copies you.
Everyone copies you.
Sustainable margins.
Product failure Product success
No one copies you.
Defining: “IP Commercialisation”
Identification Assessment
Development Protection
Exploitation
IPC =
In terms of relative effort required and value contributed:
2. What IP do I have?
You can only value and use what you identify
How do I convert Intangible Assets into IP?
An intangible asset becomes a piece of “intellectual property” when it is converted into one of the recognised classes of intellectual property:
patent registered trademark registered design plant variety domain name unregistered trademark
confidential information trade secret know how copyright integrated circuit layouts embedded secrecy
IP Classes in terms of volume & value
Trade Secret / Confidential Info
Copyright Unregistered trademarks Registered TMs Patents Design Rights Domain names Plant Variety Rights ICLs
IP Protection =
Not free
Free
IP Asset Value
“It is estimated that by 2007, as much as 90% of the value of the world’s top 2000 enterprises will consist of intellectual property”
Building and Enforcing Intellectual Property Value,An International Guide for the Boardroom 2003PriceWaterhouseCoopers
Over the last ten years business growth from intellectual property investment has been bigger than that of business investment in their fixed capital
'The Role of Intellectual Property Rights in the UK Market Sector‘ 2011
If I identify it, do I own it?
WARNING IP Ownership on creation can vary with each
type of IP Agreements likely to dominate all
Read all contracts for supply, especially of services! Do not assume your collaborator will recognise your
input! When in doubt ASK!
3. The importance of assessment
Do your Research
Most IP never commercialised
2004 study by Siemens estimated 90+% of all EPO patents never commercialised.
2002 P&G identified that 92% of its patents had “no business value of any kind to P&G”.
Not all IP is of equal value
I have identified I have some IP, but what is it worth? Does the IP relate to a competitive advantage in
your business/product/service? Does it adequately protect that advantage? What is that advantage worth to my business?
It all starts with assessment!
What do you learn from Assessment?
Freedom to Operate – identifies the restrictions on your ability to enter markets
Protection Scope – determine the scope of your IP by comparison with other IP, publications or marketed products
What will my competitors do?
Workarounds – Given the scope, what can competitors legitimately do to compete? Does this still leave you with a competitive advantage?
Consider not only what is the same in form but also in result
I have some valuable IP!
Congratulations. Your reward is a lot more hard work.
BUT With identification and good assessment, you
can then protect with confidence. Despite the hard work of exploitation, your
chances of success have increased immeasurably.
4. Case Studies
There is always hope
Case Study: 500M units in 3 years.>> Innovator
Innovator approached EEIP with idea: cup can eat from without a spoon.
EEIP assessed idea > funded 18 months R&D: development technology to reduce plastic content by 35%.
Developed commercialisation strategy then executed plan: ‘07 licensed to industry leader in NZ, ‘09 to largest dairy player in world. Additional licenses added every six months.
RESULT: shipped 500M+ units. Royalty on every unit, revenue in 000,000’s.
Client:
Industry:PackagingMarkets:USA CanadaArgentina ChinaMexico IsraelRussia Spain
CASE STUDY >> SMALL ENTERPRISE Vineyard owner approached EE with innovative
viticulture technology. Assessed IP position, redirected R&D to
improve IP then built strong Commercialisation Strategy.
NZ trials major success, identified & negotiated with 5 largest agricultural machinery players in world.
RESULT: licensed to major EU agri-machine manufacturer at > 10% royalty per machine. Won two major EU agri prizes. Retained NZ & AU manufacturing rights, moving into non-wine applications.
Client:
Industry:Agri-technology
Markets:NZ AustraliaEurope Americas
Case Study: Failure to success>> Stalled Start Up
Early 2000s NZ software developed game changing technology, filed a patent.
Attempted to commercialise technology for three years from NZ but failed.
Approached EE in early 2011 with patent. EE evaluated patent and determined highly valuable. Worked to broker the sale of the patent.
Sold patent to Fortune 200 Silicon Valley company for US$14,000,000. Highest price ever paid for US patent in history.
Returned $45 for every $1 invested to shareholders.
Client:NZ start up
Industry:Software
Markets:USA
