Asset management Patent Management November 2011

Basic perspective Patent as a business asset Patent should contribute to business competitiveness directly or indirectly. Patent management as asset management

A. How to utilize patent as a business asset? B. How to make patent as a business asset? Asset management

Patent utilization (OECD, Valuation and exploitation of IP, 2006)

 Product market Competitive tool as a countermeasure against competitors Competitive tool as a countermeasure against competitors  Case of Seoul semiconductor Preemption mechanism for future business model Preemption mechanism for future business model  IPRs and the choice of attractive markets are inseparable (Reitzig, 2007) Tools to access to other patents – bargaining chip in negotiation, cross-licensing, participating in patent pool Tools to access to other patents – bargaining chip in negotiation, cross-licensing, participating in patent pool Patent utilization

 Technology market Tool for generating revenues through licensing Tool for generating revenues through licensing Strategic tool for enhancing long-term competiveness Strategic tool for enhancing long-term competiveness Gaining access to knowledge Gaining access to knowledge Guaranteeing technology leadership (reputation, networks) Guaranteeing technology leadership (reputation, networks) Competitive tools to support the position in product market Competitive tools to support the position in product market Implementing foreign market entry Implementing foreign market entry Selling additional products Selling additional products Setting industry standards Setting industry standards Patent utilization

 The relationship between patent and technology market  The operation of market mechanism – cf) opportunism  Underlying innovative division of labor  Transaction cost  The relationship between open innovation and technology market Patent utilization

Licensing  The type of licensing  Pure licensing  Licensing packages 8

Licensing The literature tries to analyze the economic incentive for individual firm to participate in licensing activities in terms of its impact on its profit. The literature tries to analyze the economic incentive for individual firm to participate in licensing activities in terms of its impact on its profit. Mainly two factors are identified Mainly two factors are identified a.The revenue effect, which is related to licensing fee from the technology market. b.The rent dissipation effect, which involves the negative effect on the position in the product market. Underlying factors are internal resources such as negotiation power, complementary assets and external resources such as market structure (the degree of product differentiation) Underlying factors are internal resources such as negotiation power, complementary assets and external resources such as market structure (the degree of product differentiation) 9

Building patents  How to make patent as a business asset?  Strategic patent design  Strategic building patent portfolio whether in-house or external acquisition 10

Building patents  How to make patent as a business asset?  Patent building should depend on the purpose of utilization A. Make and enforce patent which has importance to competitor in product market B. Make patent which is attractive to potential buyer in technology market 11

Usual patent strategy  Patent (IP) thicket – creating a thicket hard for competitors to penetrate - - Trademark of COCA-COLA & COKE, wasp-waist Coca-cola bottle, red-ball graphic, domain names (coca-cola.com, org, net, biz, info, ca) - - When a pharmaceutical company discovers a promising new drug, it would generally seek patent protection on a wide range of chemical variants and analogs, methods of synthesizing the drug, chemical intermediaries in the synthesis, different crystal forms, different finished dosage forms and various methods of use.  IP forest - Nike obtained around - Nike obtained around 1,500 patents and about 350 trademark in the past decade, which is ten times larger than Reebok. 12

Usual patent strategy  Strategy of a single patent with broad claims vs. maze approach with a series of narrow patents  Blanket strategy or flood strategy - - A medical device manufacturer discovering a particular polymer coating tries to blanket the technology by describing all conceivable polymer combinations and all conceivable such devices, instead of patenting just one particular combination. - - Blanketing can be also used by a second comer - toll gate  Wall (hurdle) strategy – steady investment in research and periodic inventions preventing competitor from preparing  Patent trap strategy – licensing only previous generation technology (Toyota)  Anti-invent around strategy 13