NEWS FLASH: //Check our latest course offering on Patent-Business-Strategy over at Udemy here: http://www.udemy.com/patent-business-strategy/ with a 50 per cent launch discount // ACTIV 2010 was a technology commercialization workshop held at Venture Center in Pune in September 2010. It was supported by British High Commission, Venture Center, Department of Science and Technology, Government of India. The audience were key scientists involved in commercializing and licensing their research work.

1. Top 10 IP KEYS for value creationHasit seth @ ACTIV 2010 1st October 2010, PUNE – Venture Center

2. Basics Using IP as a strategy tool in value creation Understanding risk-reward pattern underlying IP Rights What Patents give, may be taken away by a bad license Licensing is an endurance race, not a 100m dash (c) Hasit Seth, 2010

3. Key 1: patents RIGHTS ARE NOT ABSOLUTE Patent is assumed to be valid. Patent validity can be challenged at any time during its term Invalidity due to prior-art is a well-known risk, but unenforceability is not as well-known. (c) Hasit Seth, 2010

4. Unenforceability Inequitable Conduct (IC) Formerly,“Fraud on Patent Office” Failure to disclose material information to the patent office; Submitting misleading information (c) Hasit Seth, 2010

5. Materiality and intent Require: (1) Materiality and (2) Intent Check: Was all relevant prior art known to applicant disclosed to patent office? Aggressive inferences from experimental data – don’t be too adventurous or imaginative! More material the information, lesser is the intent required, and vice-versa. (c) Hasit Seth, 2010

6. Lemelson litigation Lemelson filed “machine vision” patents in 1950s; a robotic device + barcodes; collected over $1.5 billion in royalties A prolific inventor with 600+ patents, most of them self-written! (c) Hasit Seth, 2010

7. Lemelson He kept on filing “contiuation” applications delaying prosecution to create “submarine” patents. Courts ultimately held his machine vision patents UNENFORCEABLE due to delaying the process but found no inequitable conduct. Note that he had just used the then existing PTO rules, so he had not done any fraud. (c) Hasit Seth, 2010

8. Key 2: Patent quality Do you measure patent quality? How patent quality can be measured? Is it limited to the quality of claims tested against prior art Correlation of patent quality & commercial impact (c) Hasit Seth, 2010

9. Patent quality Factors Time to market Market Size of Opportunity Patent’s impact on that Market Size Blocker, Enabler, Disruptor, or Pioneer Quantify the impact “Push” to customers, or “Pull” from customers? (c) Hasit Seth, 2010

10. Key 3: LANDSCAPE YOUR IP EFFORTS An underestimated tool Make it a required step in the INVENTING process IP Landscaping is not an invalidating prior-art search Quite rare - landscaping by correlating patent information to marketing information – Hard but it is a GOLD MINE ! (c) Hasit Seth, 2010

11. Landscape before you invent Landscaping generates newer ideas while searching the patent databases Teach landscaping to inventors Subject a landscape to a business opportunity analysis using decision analyses tools (c) Hasit Seth, 2010

12. Key 4: Think portfolio, not “a patent” Do you have an institutional IP portfolio strategy? Few single patents (those in pharmaceuticals) have a market controlling power How will your patent portfolio develop in next few years? Is your patent pipeline running dry? Good portfolios are not about numbers alone. (c) Hasit Seth, 2010

13. Key 5: IP SIEGE Strategy Building a portfolio that can lay a “siege” over a pioneering or a valuable concept Single siege: Patent pools such as MPEG-LA for MPEG standards. Multiple technology sieges are strategies of company like Intellectual Ventures (c) Hasit Seth, 2010

14. Key 6: negotiating wise licenses A licensing “policy” is not enough License negotiation is a dynamic act, not a routine Licensing strategies need to be sharpened: How much to ask for upfront payments? One off or sustaining relationships? How much “relationship sustenance discount” can afford? Is not licensing an invention affordable in a case? (c) Hasit Seth, 2010

15. Key 7: Negotiation and analytics How analytical is your negotiation? Afraid of “Analysis Paralysis”? Do you use any decision analysis tools to negotiate? Decision Trees, Game theoretic modeling, What-if scenarios… All models have limits and flaws, but intuition is not a model ! (c) Hasit Seth, 2010

16. Key 8: Risk sharing Current model is to sell or license technology and get revenues Very little risk participation happens Joint-ventures or special purpose vehicles where a lab/scientist brings technology to table and capital is lent by others (c) Hasit Seth, 2010

17. Risk sharing Companies don’t license more technology because: Can’t see an alignment to their business Can’t afford the risks even if alignment is present Can you share in risk by investing technology? Licensing converted in to co-investing is risk sharing (c) Hasit Seth, 2010

18. Key 9: Timing Patent’s life is limited For a 16-17 year effective patent “life” have stages with different licensing strategies (c) Hasit Seth, 2010

19. Key 10: policy foresight India’s IP policies as in laws, rules, regulations are being crystallized in current times Your voice can shape these policies Policies rooted in “fear” of others taking away our crown jewels will not lead to any good policies. (c) Hasit Seth, 2010

20. Policy example: S.111 of Indian patent Act “…damages or an account of profits shall not be granted …[if the infringer] proves that at the date of infringement he was NOT AWARE and HAD NO REASONABLE GROUNDS FOR BELEVING PATENT EXISTED” How will anyone ever get realistic damages in India? (c) Hasit Seth, 2010

21. Policy If rhetoric can drive home the point: If no damages are available in infringement suits, nobody will file for patents for anything valuable If there are no filings, no question of commercialization using IP as a security cover. (c) Hasit Seth, 2010

22. Thank you Any questions? Hasit Seth http://in.linkedin.com/in/hasit Other presentations at: http://www.slideshare.net/hasits ACTIV Workshop: http://www.venturecenter.co.in/activ/workshop.php (c) Hasit Seth, 2010