Icle group slides2012-1

EFFECTIVE COPYRIGHT STRATEGY: A HOLISTIC APPROACH TO IP PORTFOLIOS!

ICLE’s 38th Annual IP Law Summer Institute July 19-21, 2012

Katherine C. Spelman Cobalt, LLP Berkeley, CA

Edward A. Ketterer III Ketterer Consulting PLLC Northport, MI

Sharon L. Oriel Talisker & Associates Glen Arbor, MI

Ketterer Consulting PLLC Talisker&Assoc.

• Versus the industry as a whole, or against a key competitor"• Differences in product emphasis "• Activity over a given time period or all unexpired patents

Ketterer Consulting PLLC Talisker&Assoc.

Use competitive patent data to assess your strategy and activity level:!

The Technology Stage of inventions covered by recent patent applications can be used at a high level to: !

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• Assess consistency of IP counsel linkage across the company’s operations"• Identify basic functional areas where IP support needs to be focused"• Identify overall portfolio trends and compare with company strategy

The Technology Stage of inventions covered by recent patent applications can be used at a high level to: !


• Assess consistency of IP counsel linkage across the company’s operations"• Identify basic functional areas where IP support needs to be focused"• Identify overall portfolio trends and compare with company strategy

Technology Phase Analysis Can Be Used To:!


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TECHNOLOGY STAGE OF 2011 PATENTS

Early Stage Intermediate Stage Late Stage

• Focus product development activity on products that are “stale”"• Focus patent activity on products where the portfolio is weak"• Assess a competitor’s portfolio

Use selected criteria from the lists below to build a unique patent filing strategy for your company or client. These are applicable to both utility and design patents.!

•  General Patent Filing Criteria (basic reasons to file)

–  Prevent competitive copying (active offense; enforcement) –  Send a message/create a reputation that discourages copying (passive offense) –  Marketing claims--"patent pending," "patented," "exclusive," etc. –  Establish/enhance company reputation as an innovation leader –  Added patent for an existing portfolio--"fence building" –  Control third parties (designers, development partners, suppliers, etc.) –  Cross licensing (defense; dispute resolution) –  Licensing for value –  Attract investors/venture capital –  Employee (designer, inventor) recognition


Combine basic filing criteria with invention-specific filing criteria when making individual filing decisions.!

•  Invention-Specific Filing Criteria

–  Anticipated product volume –  Product margin –  Life of product--how long in the line? –  Iconic or breakthrough product? –  Strategic importance of product category (related to volume, but not quite the

same) –  Apparent amount of novelty, originality (scope of protection) –  Likelihood of competitive copying –  Correlation between what can be protected and the primary product appeal to

customer


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User Benefit

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Company D

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Example—Strategic Mapping of Competitive!


Start with Corporate Vision & Mission!•  Mission is why the company exists •  Vision is the company of the future •  Strategy is a deliberate plan of actions •  Objectives are usually longer term •  Goals are short term (1 year) •  What is the role of intangibles in meeting the corporate

goals & objectives?


Strategy Alignment!

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Mission Vision Strategy

Bus. Strategy

“IP” Strategy

“IP” Systems “IP” organization

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Business Strategy!

•  What is your business? You may not need patents. Consider trade secrets, copyrights, publications, standards.

•  What are the market place rules? What countries do you play in?

•  Where is the business in the supply chain?


Business Strategy!

•  Proactive Strategy: create a business with sustainable competitive advantage based on intangibles

•  Access external technology to speed up market entry

•  Set realistic goals with realistic resources •  Share the credit for the $$$$


“IP” Strategy: Objectives!

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“IP” Strategy

Value Creation

Value Extraction

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Potential Objectives!

•  Protection of innovations •  Design Freedom •  Litigation Avoidance •  Basis for alliances and JV’s •  Commercialization •  Enhanced image of firm


Portfolio Analysis & Alignment!•  What is in your portfolio? •  How are you using your portfolio? •  Who owns the IP? •  Licensing potential: in & out licensing •  Document your portfolio analysis & alignment and keep it up to

date •  Report the $$$$$$: Income & Expense


IP Portfolio Alignment!•  Aligning IP portfolio with corporate vision,

strategy and objectives provides a business focus

•  New revenue opportunities are visible •  IP with little value is abandoned (cost savings)


Business Impact Measures!•  Show the VALUE of intangibles

- NPV of value growth and preservation segments - % of current sales protected by IP - % of new products protected by IP - $ Value of IC contributions to M&A

•  Manage the COST of intangibles - Projected costs to obtain & maintain the IP - % of IC management costs of R&D, sales, etc. - Ratio of costs versus value of IC for a business


Business related IP metrics: Few companies measure!1. Inventory of all differentiated know-how and trade secrets 2. Licensing revenue generated from know-how and trade

secrets in the last calendar or fiscal year 3. List of key inventors in the company 4. List of key inventors in your technology space 5. Do you identify, track and investigate white space

opportunities? 6. Do you calculate the value of your brand(s)?


Strategic Alignment!

•  Five Points to Remember:

1.  Start with the Corporate Vision & Strategy 2.  Align the intangibles portfolio with the business strategy 3.  Create systems and organization after strategic alignment 4.  Communicate the aligned strategy 5.  Show the $$$$$$


Key Roles in IA Organizational Models!

Legal Business Marketing R&D Strategy

IA identification

Inventor education

Communicate strategy

Submit trademark ideas

Prioritized research

Provide corporate goals

Patent prosecution

Manage legal work

Align app’l with strategy

Provide comp. info

Perfect claims

Check alignment

Portfolio Management

Legal expertise

Classify use Develop brand value

Future IA Reassess alignment

Licensing Agt. drafts Provide business terms

Benefits of deal

Tech transfer

Policy

M&A Due diligence

Opport. ID Brand Value Synergy Corporate Value


QUESTIONS?!

THANK YOU!!

Talisker&Assoc Ketterer Consulting PLLC