Professional Documents
Culture Documents
IP Conference 2010
Monetizing Intellectual
Property
A lifecycle perspective
Soo Earn has more than 18 years of experience in the provision of business and financial advisory services. He has worked
with corporations, private equity investors and lenders providing a range of transaction services on cross border transactions.
He has considerable professional experience in due diligence, valuation, market study, strategic value consulting, corporate
governance advisory, franchising & licensing advisory and intellectual asset management advisory.
He has led in excess of 150 valuation engagements involving the valuation of businesses, intangibles and financial instruments
for the purposes of M&A, financial reporting, dispute settlement and tax structuring. He has also led in excess of 150 due
diligence projects involving the provision of financial, tax, commercial and/or IT due diligence, and SPA review for acquirers
and vendors.
Soo Earn also advises corporations on intellectual properties issues. He was the project director of the SCOPE IP (“Strategies
for Creation, Ownership, Protection and Exploitation of IP) project (www.surfip.gov.sg) commissioned by the Intellectual
Property Office of Singapore (“IPOS”). He acted as one of the two advisors to IPOS for their IP Starter “Punch up your
Business with IP” project (ipstarter.surfip.gov.sg).
He is a frequent speaker on topics related to due diligence, valuation and intellectual property management. He has been
involved in roundtable discussions and conducted seminars organised by many institutions including the World Intellectual
Property Office, Intellectual Property Office of Singapore, IP Academy, the Institute of Certified Public Accountant of Singapore
(“ICPAS”), CFA Singapore, Insead Singapore, Singapore Management University, the National University of Singapore and
Nanyang Technological University.
Soo Earn is a Certified Public Accountant and a Chartered Financial Analyst. He holds a Bachelor of Accountancy and a
Graduate Certificate in Intellectual Property Laws. He is a member of CFA Institute, the Singapore Institute of Directors
(“SID”), ICPAS and CPA Australia. He serves as a Board member of CFA Singapore, a Committee Member of the
Management Accounting Committee of ICPAS, a Committee Member on the Young Entrepreneurs Network of the Singapore
Chinese Chamber of Commerce and Industry, a Committee Member of the Regulatory Requirements Review Committee of
SID and a member on the Board of Advisors of AIESEC in Singapore, an international student organisation.
Monetization
IP OWNER
RIGHTS
CASH
CAPITAL
SOURCE
4 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
IP – “Bundle of Rights”
• RIGHT TO USE IT
1
• RIGHT TO SELL IT
2
• RIGHT TO LEASE IT
3
5 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
Value of Your IP
6 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
Monetization Drivers
Probability
of realizing
the future
income
Pattern of
Quantum of
future
future
income
income
stream
7 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
Price is what you pay.
Value is what you get.
Warren Buffett
8 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
IP – Life Cycle
End of IP Life
Maturity • Assess
discontinuation of
product
• Product has
Commercialization widely gained
• Developing new-
version of IP
market
acceptance
• Mass production
• Leverage on
Preparation • Marketing
Licensing
structures
Activities
9 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
Life Cycle Phase 1 : Conceptualization
Monetization avenues :
• Internal / Self-funding mechanisms
IP Case Example :
Time Period : 0-7 T
Cost Incurred : S$102,620
Income : Nil
10 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
Life Cycle Phase 2 :Preparation
Monetization avenues :
• Internal / Self-funding mechanisms
• Venture Capitalist fundings
• Joint ventures
IP Case Example :
Time Period : 8-18 T
Cost Incurred : S$396,000
Income : Nil
11 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
Life Cycle Phase 2 : Preparation
Using Real Options Method to value IP
12 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
Life Cycle Phase 3 : Commercialization
Monetization avenues :
• Venture Capitalist fundings
• Licensing
IP Case Example :
Time Period : 18-23 T
Transacted value at 18T : S$30mil
13 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
Monetization Opportunities
Collateral
for loan
sale
Internal
Sale &
Leaseback
Licensing
• Territory
• Scope of use
• Time Period
Licensing
External • Territory
• Scope of use
• Time Period
Licensing
• Territory
• Scope of use
• Time Period
14 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
Focus on the Licensees –
They are the source of the
relevant income streams
15 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
Life Cycle Phase 3 : Commercialization
Using Probabilistic DCF to value IP
• Risks associated with future cash flows (e.g. external events such as market
acceptance) are dealt with using a probabilty approach
16 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
Life Cycle Phase 4 : Maturity
Monetization avenues :
• Securitization
• Divestment
IP Case Example :
Time Period : 18-24 T
Transacted value at 24T : S$192mil
17 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
Securitization
IP OWNER
RIGHTS
CASH
CAPITAL Investors
SOURCE
18 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
Life Cycle Phase 4 : Maturity
Using Discounted Cash Flow Method to value IP
No of Periods Periodic
Ahead (T) Cashflow
(CFt)
T
CF τ
VALUE = ∑
τ =1 (1 + rτ ) τ
Discount
Rate
(rt)
19 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
Life Cycle Phase 5 : End of IP Life
Monetization avenues :
• Donation
• Divestment
• Licensing from alternative IP
IP Case Example :
Time Period : >35 T
Transacted value at 35T : Negligible
20 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
Intellectual Property Life Cycle
Summary of Monetization Avenues
End of IP Life
Maturity
Donation
Commercialization
Securitization
Venture Capitalist
Conceptualization Fundings
21 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
New Mexico, 1977 Singapore, 2001
• Sale
• Securitization
24 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2009 Deloitte Touche Tohmatsu
Valuation...an exercise best
conducted in hindsight
Ashley Stevens, Boston University
Intellectual Asset Management
8
1 2 Phase VI
Pre-Project Stakeholders
Project Communications
Planning Kick Off
Phase V
3 Value
Extraction
Phase I 7
Identification
Intellectual Asset
Management
Phase IV
Intellectual Asset Process Policies,
4 Processes &
Management (IAM) Phase II Systems
Process refers to the Analysis &
Measurement
pro-active management
Phase III 6
of intellectual assets to
Strategy
create value and sustain Development
competitive advantage 5
26 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
Intellectual Asset Management
1 2 3
Pre-Project Planning Project Kick Off Identification
Estimated Time
3 weeks 1 week 2 weeks
(Pilot)
Mobilize engagement team and Identify intellectual assets critical
Objectives Secure management buy-in
kick start project to sustain and grow the business
Approach government agencies Kick off meeting between project • Discuss the existing and future
promoting IAM programs to working team and project business model(s), key value
businesses on government grant sponsor(s) to initiate the project propositions, products and
or assistance schemes and brief team members services, business expansion
Secure senior management buy- Identify and agree with client on plan and strategies with the
in on this initiative key client personnel who will be management
Identify a business unit to members of the working • Conduct a high level value chain
undertake the Intellectual Assets committee and steering analysis to obtain an
Management (IAM) Program committee appreciation of client core
Key Activities competencies across its value
based on a set of agreed criteria Agree project scope, approach,
(‘Pilot’) timelines, check points & chain and identify the key
Secure business unit stakeholder communication plan intellectual assets (including
management buy-in on the IAM Discuss deliverables format and intellectual properties) that are
program. timing and will be critical to sustain and
grow the business (please refer
to methodology)
IAM pilot plan for management Shared understanding of project List of intellectual assets
Deliverables approval scope, timeline and deliverables required to sustain and grow the
business
27 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
IAM - Identification (Value Chain Analysis)
Primary Activities:
Inbound Logistics – Activities associated with
receiving, storing and disseminating inputs to the
product
Operations – Activities associated with
transforming inputs into the final product
Outbound Logistics – Activities associated with
collecting, storing and physically distributing the
product to buyers
Marketing & Sales – Activities associated with
providing a means by which buyers can purchase
the product and inducing them to do so
Service – Activities associated with providing
service to enhance or maintain the value of the
product.
Support Activities:
Procurement – Purchasing of inputs used in the organisation’s value chain
Technology Development – Technology component that is embodied in every value activity
Human Resource Management – Activities involved in the recruiting, hiring, training, development and compensation of
personnel
Enterprise Infrastructure – Activities including general management planning, finance, accounting, legal, government affairs
and quality management
28 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
Intellectual Asset Management
4 5 6
Policies, Processes &
Analysis & Measurement Strategy Development
Systems
Estimated Time
2 weeks (6 weeks#) 2 weeks 3 weeks
(Pilot)
Identify gaps and proposed
Objectives Classification of Intangible Assets Develop IP Strategies improvement to the current IAM
systems
Identify IAs of value using broad Perform a high level external Review existing IAM policies,
base estimation. review of the environment to processes and supporting
Segregate IAs of value into core identify threats and systems to identify gaps and
and non-core. opportunities. recommend possible
Identify IAs that support licenses, Analyze IAs against two major improvements to facilitate the
products and strategy. criteria (value and intended use) creation, ownership, protection
to identify potential IP strategies and exploitation of intellectual
Identify current and future use of property rights.
these IAs. (please refer to methodology)
Development of strategic Review and propose possible
Key Activities Perform valuation of IAs, if corporate structures to facilitate
necessary to facilitate internal choices via brainstorming and
application of SWOT analysis. the execution of the IP strategies
transfer#. for management consideration
Rank and selection of strategic
options based on an agreed set and evaluation.
of criteria.
# additional time needed to
perform valuation.
List of IAs appropriately Basis of deriving the list of Gaps & recommendations,
Deliverables classified and valued (if strategic choices and selected suggested corporate structure
required) strategic options
29 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
IAM - Strategy Development
High
Exploit Invest License
Value
Medium
30
Intended Use
MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
Intellectual Asset Management
7 8
Stakeholders
Value Extraction
Communications
Estimated Time
6 weeks 4 weeks
(Pilot)
Develop capabilities and
Develop a holistic communication
Objectives framework to facilitate value
plan to the stakeholders
extraction
31 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
IAM – Stakeholders Communication
MARKET
VALUE
Environmental
Human & Social
Innovation & Intellectual
Sustainable
Brand & Reputation Business Value
Customer Equity
BOOK
VALUE
Traditional
Financial
Financial
Reporting
32 MSC Malaysia R&D & IP Conference 2010: Monetizing Intellectual Property © 2010 Deloitte Touche Tohmatsu
Thank You!