Transcript DILIGENT™ Competitive Patent Analysis

DILIGENT™
Phase 1 - Competitive Patent Analysis
CPA Objective
CPA SIPOC Process
Find and Transferring Knowledge
Rapid Screen-Down
Technology Roadmapping
IP Mapping
Technology Champion
Confidence Index
©2004 OpenTTO.org
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Slide 1
CPA
Objective
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Transform
To screen inventions and to prioritise opportunities:
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Templates
• 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.
The core output is a priority list for action
©2004 OpenTTO.org
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Slide 2
CPA SIPOC
A repeatable 6-sigma process:
SIPOC
I
Customer
Output
Process
Input
Supplier
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Transform
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Templates
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
©2004 OpenTTO.org
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Slide 3
Competitive
Patent Analysis
SUPPLIERS:
• Leaders
• Researchers
• IP Library
• Alliances
• Partners
INPUTS:
Ideas
Research
Patents
Markets
START
Collect Inventory
PROCESS
Discover, Screen, Workshop
Prioritize, Resource, Map
• Government
• Executive
• Business Lead
Programs
Priorities
• Technology
Lead
FINISH
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Transform
OUTPUTS:
Opportunity
Database
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Templates
CUSTOMERS:
• IP Librarian
• Project Management
Research
Priorities
• Researchers
• Funding
• Partners
• Government
Business
Priorities
• Business Leads
• Partners
• Funding
IP Priorities
• Researchers
• Patent advisors
• Funding
• Business Leads
MAP & Prioritized List
IP Map
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P O
• Governance Group
• Business Leads
• Researchers
Slide 4
Competitive Patent Analysis
Methodology
1.0
CPA
1.1
Overview
Disc
over
&
Codif
y
Inve
ntion
s
2.0 MVP
1.2
Rapi
d
Scre
enDow
n
1.3
Wor
ksho
p
Rem
ainin
g IP
3.0 IDA
1.4
Crea
te IP
Map
s
4.0 ADC
1.5
Prior
itise
and
Reso
urce
The available and potential IP is collected, rapidly screened, assessed and then
mapped to form a basis for setting priorities and selection.
Suppliers
Business and Technology Leaders
Process
1.1
Researchers
IP Library
1.2
Alliances & Partners
Government
1.3
Outputs
Collect formal and informal documentation
Patent Priorities
and codification of IP – Invention Disclosures
Opportunity Database
Brainstorm around existing IP, then rapidly
Research Priorities
screen out disclosures of lower potential
Business Priorities
Workshop the remainder for quality and common
IP Maps
understanding of intent and first pass value
Inputs
1.4
Ideas & Invention Disclosures
Research & Patents
1.5
Markets and Programmes
Priorities
©2004 OpenTTO.org
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1.6
Create the IP MAP & Technology Roadmaps
Customers
and SWOT the combined information
Researchers & Business Leads
Prioritise IP for further action, and set agenda
Governance Group
for further funding and effort
Funding and Government
Complete Confidence Review and Index
IP Advisors and IP Librarian
Slide 5
CPA
Suppliers and Inputs
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Transform
Typical questions for suppliers and inputs:
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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?
©2004 OpenTTO.org
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Slide 6
CPA
Finding Knowledge is Difficult
Researchers and “inventors”:
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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
©2004 OpenTTO.org
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Slide 7
CPA
Questions about the Concept
What is it really, in terms of a potential activity:
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A
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A
research project?
licensing opportunity?
collaboration opportunity?
company spin-off deal?
potential VC activity?
Be realistic as early as possible about the maturity and potential.
©2004 OpenTTO.org
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Slide 8
CPA
Transferring Knowledge is More Difficult
Researchers and “inventors”:
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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
©2004 OpenTTO.org
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Slide 9
CPA
Pasteur’s Quadrant
Source: Stokes#, Pasteur’s Quadrant
Increasingly Fundamental
Nature (Basic Research)
Research Scientist’s
IDEAL
Pure Basic
Research
(Bohr)
Systematic
Exploration of
Particulars
(Audubon)
Use-inspired
Basic
Research
(Pasteur,
Langmuir)
Pure Applied
Research
(Edison)
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.
Increasing Consideration of
Usefulness (Applied R&D)
Contribution of technology to economic growth >50%. BUT this is
primarily from PASTEUR QUADRANT technology.
#Donald
Stokes, Princeton University, Pasteur's Quadrant: Basic Science and Technological Innovation, Brookings Institution 1997
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Slide 10
CPA
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Process and Transformation
Transform
The analysis and transformation phase asks:
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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?
©2004 OpenTTO.org
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Slide 11
CPA
Rapid 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?
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Slide 12
CPA
Rapid 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?
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Slide 13
CPA
Realisation Analysis
Draft realisation strategies:
Business Directory Annotation Mobile Phone Reminder
Entity
Role
Benefits
Costs
Volume
End User
Prime
Beneficiary
Convenience
Timely
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
*SMS messages currently generate $70m per month in revenue for Telstra
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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).
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Slide 14
CPA
Technology 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
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Slide 15
CPA
Technology 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
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Slide 16
CPA
Technology Roadmap 3
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.
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Slide 17
CPA
Technology Roadmap 4
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.
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Slide 18
CPA
Technology Portfolio Map
NPV
Long
Time to Launch
Zero
Builds on competency, improves position
Builds new competency & extends business
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Builds new competency & new business
Slide 19
CPA
IP Mapping Discipline
Mapping assists to clarify the commercial potential:
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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.
©2004 OpenTTO.org
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Slide 20
CPA
IP Mapping Benefits
Mapping assists to clarify the commercial potential:
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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.
©2004 OpenTTO.org
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Slide 21
CPA
Mapping Indicates SWOT
Sample Information Technology IP Map
Infrastructure
Processes
001, 002
Database &
Objects
Architecture
System
Software
001, 002
Web Services
009,
Networks
Peer to Peer
003, 008
WWW &
Internet
001, 002, 004, 011,
013, 014, 016, 017,
Networking
019
Other
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&
Systems
Management
014, 015
006
eBusiness
010, 013, 017, 020
Enterprise
Business
014,
Mobile &
Wireless
005
Messaging
Security
Applications
Markets
Horizontal
Web
012,
Horizontal
Corporate
Consumer
Media
Airlines
Security
Advertising &
Media
www Issued Patent
xxx PCT Stage
yyy Filed Provisional
zzz Idea to be Filed
Slide 22
CPA
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Outputs and CustomersTransform
The Output phase finalises the process:
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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?
©2004 OpenTTO.org
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Slide 23
CPA
Be 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
HINT: choose patents attorneys for their individual skills in the
specific application and firms for their skills in the jurisdiction.
# 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.
©2004 OpenTTO.org
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Slide 24
CPA
Prototype 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.
©2004 OpenTTO.org
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Slide 25
CPA
Templates
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IP Map and Technology Event Map:
• IP Map
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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
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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?
©2004 OpenTTO.org
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Slide 26
CPA
Templates
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Transform
The Phase Summary Report:
Templates
• Part of an evolving Business Case
• Contains at least:
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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
©2004 OpenTTO.org
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Slide 27
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?
©2004 OpenTTO.org
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Slide 28
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
©2004 OpenTTO.org
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Slide 29
CPA
Need 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”
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.
#Workshop
©2004 OpenTTO.org
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Slide 30