Developing IP Portfolio

Arun K Narasani

INTELLECTURE
A Division of Brain League IP Services
Did you know that Indian businesses pay royalties
of more than USD 3 billion and receive royalties of
less than 400 million?
 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

IP Policy
Framework

Identification
IP Analysis Portfolio
Innovation And
Tools Management
Protection

IP
Strategy

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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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 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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 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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 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 Brain

League IP Services

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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 Brain
League IP Services

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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 Brain
League IP Services

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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 Brain
League IP Services

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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 Brain
League IP Services

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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 Brain
League IP Services

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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

General General
Problem Solution

Specific Specific
Problem Solution

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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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 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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 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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 Patent History
maintains a
record of all
communication
s with the
patent/tradem
ark office

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 A query
report in
excel can be
generated
New alerts may be added or existing
by clicking
alerts may be modified using the ‘Run Alert
respective tabs . Query ‘ tab

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 New alert may be added by specifying
the ‘extent’ and frequency of the alert

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 Integration and other concerns

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 R&D and IP Integration

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 Some 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 K Narasani

CEO, Brain League IP Services
arun@brainleague.com

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