OpenTTO - DILIGENT Phase 1 - Competitive Patent Analysis

OpenTTO.org - DILIGENTPhase 1 - Competitive Patent Analysis CPA Objective CPA SIPOC Process Find and Transferring Knowledge Rapid Screen-Down Technology Roadmapping IP Mapping Technology Champion Confidence Index

I O S P C Transform Templates CPAObjective To screen inventions and to prioritise opportunities: • 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

Customer S I P O C Output I Process O S P Input C Supplier Transform Templates CPA SIPOC A repeatable 6-sigma process: • 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

I O S P C Transform Templates START Collect Inventory Ideas Research Patents Opportunity Database Markets Research Priorities PROCESS Discover, Screen, Workshop Prioritize, Resource, Map Programs Business Priorities IP Priorities FINISH MAP & Prioritized List Priorities IP Map Competitive Patent Analysis SUPPLIERS: INPUTS: OUTPUTS: CUSTOMERS: • Leaders • Researchers • IP Library • IP Librarian • Project Management • Researchers • Funding • Partners • Government • Alliances • Partners • Business Leads • Partners • Funding • Government • Researchers • Patent advisors • Funding • Business Leads • Executive • Business Lead • Technology Lead • Governance Group • Business Leads • Researchers

1.0 CPA 2.0 MVP 3.0 IDA 4.0 ADC Competitive Patent Analysis Methodology 1.1 Discover & Codify Inventions 1.2 Rapid Screen-Down 1.3 Workshop Remaining IP 1.4 Create IP Maps 1.5 Prioritise and Resource Overview The available and potential IP is collected, rapidly screened, assessed and then mapped to form a basis for setting priorities and selection. Process Suppliers Outputs Business and Technology Leaders Researchers IP Library Alliances & Partners Government 1.1 Collect formal and informal documentation and codification of IP – Invention Disclosures 1.2 Brainstorm around existing IP, then rapidly screen out disclosures of lower potential 1.3 Workshop the remainder for quality and common understanding of intent and first pass value 1.4 Create the IP MAP & Technology Roadmaps and SWOT the combined information 1.5 Prioritise IP for further action, and set agenda for further funding and effort 1.6 Complete Confidence Review and Index Patent Priorities Opportunity Database Research Priorities Business Priorities IP Maps Inputs Customers Ideas & Invention Disclosures Research & Patents Markets and Programmes Priorities Researchers & Business Leads Governance Group Funding and Government IP Advisors and IP Librarian

I O S P C Transform Templates CPASuppliers and Inputs Typical questions for suppliers and inputs: • 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?

CPAFinding Knowledge is Difficult Researchers and “inventors”: • 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

CPAQuestions about the Concept What is it really, in terms of a potential activity: • A research project? • A licensing opportunity? • A collaboration opportunity? • A company spin-off deal? • A potential VC activity? Be realistic as early as possible about the maturity and potential.

CPATransferring Knowledge is More Difficult Researchers and “inventors”: • 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

Source: Stokes#, Pasteur’s Quadrant Increasingly Fundamental Nature (Basic Research) Pure Basic Research (Bohr) Use-inspired Basic Research (Pasteur, Langmuir) Systematic Exploration of Particulars (Audubon) Pure Applied Research (Edison) Increasing Consideration of Usefulness (Applied R&D) CPAPasteur’s Quadrant 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. Research Scientist’s IDEAL 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

I O S P C Transform Templates CPAProcess and Transformation The analysis and transformation phase asks: • 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?

CPARapid Screen-down 1 Test the concept of how the idea would be developed:

CPARapid Screen-down 2 Further evaluation criteria:

CPARealisation Analysis Draft realisation strategies: *SMS messages currently generate $70m per month in revenue for Telstra • 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).

CPATechnology 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

CPATechnology 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

CPATechnology 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.

CPATechnology 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.

NPV Low Probability of Success High Long Time to Launch Zero CPATechnology Portfolio Map Builds on competency, improves position Builds new competency & extends business Builds new competency & new business

CPAIP Mapping Discipline Mapping assists to clarify the commercial potential: • 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.

CPAIP Mapping Benefits Mapping assists to clarify the commercial potential: • 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.

CPAMapping Indicates SWOT Sample Information Technology IP Map Infrastructure Processes Applications Markets 001, 002 006 Database & Objects eBusiness Horizontal Web Architecture 010,013, 017, 020 001, 002 System Software Enterprise Business Web Services 012, Horizontal Corporate 009, 014, Networks Peer to Peer Mobile & Wireless Consumer 003, 008 005 Messaging Security Media Airlines 001, 002, 004, 011, 013, 014, 016, 017, 019 Networking & Systems Management Advertising & Media WWW & Internet Security wwwIssued PatentxxxPCT Stage yyyFiled ProvisionalzzzIdea to be Filed 014, 015 Other

I O S P C Transform Templates CPAOutputs and Customers The Output phase finalises the process: • 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?

CPABe 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.

CPAPrototype 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.

I O S P C Transform Templates CPATemplates IP Map and Technology Event Map: • IP Map • 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 • 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?

I O S P C Transform Templates CPATemplates The Phase Summary Report: • Part of an evolving Business Case • Contains at least: • 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

CPA Confidence Index How confident are you that: • The best ideas relevant to this commercialization investment have been discovered? • The ideas have been understood technically? • The nature of the problems solved by the technology are adequately understood? • The commercial value of the ideas has been understood? • The key ideas have been kept confidential? • These ideas will generate significant value for the organisation in the future? • Further expenditure, e.g. patenting, is worthwhile? • Resources are and will be available to progress the evaluation? • A technology champion is available and willing to back the commercialization effort? • The impact and urgency of this opportunity is understood?

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

CPANeed 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” #Workshop 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.

OpenTTO - DILIGENT Phase 1 - Competitive Patent Analysis