2. www.legaliqonline.com 2
Executive Summary p. 2
IP and Patent Professionals
Survey Analysis p. 4-8
Evaluating Patent Strategy
with IBM and Dako:
i. Introduction p. 9-10
ii. Meet the Panel p. 10
iii. Panel Interview p. 11-20
About Legal IQ p. 21
References p. 22
Contents
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“Think about fire. It can be used to defend yourself against wild animals,
and also to burn down your enemy’s village. But as we move out of the dark
ages, we learn that it can be used to heat up two different metals and make
an even stronger alloy…it can be used to help things grow.” – Tom Briscoe,
Senior Principal Strategist of Technology and IP, Dako
Drawing inspiration from Tom Briscoe and his intriguing analogy for the
development of patent strategy, Legal IQ conducted an investigation into
how organisations leverage IP to achieve business growth. The report helps
set the scene for the 7th Annual Global Patent Congress, taking place in
Copenhagen, 24th - 26th of September (www.patentcongress.com).
Legal IQ – a community and resources portal for legal professionals -
has drawn on the results of three recent surveys of 675 IP and patent
professionals globally: Portfolio Management 2013, Global IP Exchange 2013
and Global Patent Congress 2013. This report begins by dissecting these
findings.
In order to explore and ratify our findings, Legal IQ sought the expertise of
distinguished IP professionals from tech giant IBM and cancer diagnostics
technology company Dako. IBM, representing the global corporations, opts
for a more assertive approach, looking to leverage IP as an asset through
licensing. This was contrasted with the approach of more niche operator
Dako, to facilitate a well-rounded insight.
I hope you find the material in this report useful.
Thank you,
Karen Magnusson
Conference Director
Legal IQ
www.legaliqonline.com
Executive Summary
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IP & Patent Professionals Survey
Analysis
The following graphs have been derived from three Legal IQ surveys,
which attracted the feedback of 675 IP and patent professionals. Analysis
is courtesy of Tom Briscoe, senior principal strategist of IP at cancer
diagnostics technology company Dako.
The fact that 54% of IP professionals responding named IP & business
strategy alignment as the most critical aspect of patent portfolio
management is a positive signal for IP, for business and for society.
For decades, the financial community has measured the success of
companies and their management on their ability to execute their plans for
growth.
Successful leaders going forward will be those that realize that business
growth is also the key metric for intellectual asset management. As the ‘IP
for business growth’ ethos expands, value creation and productivity will
expand as well.
What do you
consider to be
the most critical
aspects of
Patent Portfolio
Management?
“ As the ‘IP for
business growth’
ethos expands,
value creation and
productivity will
expand as well.”
54%Alignment of patent
assets with business
strategy
Patent monetisation
and licensing
Quality audit and
review of patents
Patent cost
management
and reduction
16%
17%
16%
11%
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Which of the
following is a
priority in IP?
“No company is
likely to successfully
leverage IP for
business growth
without strong
internal IP leadership
to complement
specialized external
resources.”
Balancinginternal&extrernalresources
Costcontrolandresucingspend
IPoptimization/monetization
Licensingstrategiesandtactics
PatentFilingstrategies
Leadershipandpeopledevelopment
Trademarkprotection
UnitaryEUpatent
Delelopinganonlinebrandprotection
LitigationstragiesinChina
Inventorcompensationlaws
RestructuringtheIPdepartment
Automatingprocesses
Findingnewmarketsforlicensing
NPEs-activityandimpact
100%0%
The priorities topping the list (66.7% mentioning balancing internal &
external resources, 63.3% cost control and reducing spend) are not
surprising. Many aspects of intellectual asset management can benefit from
outside counsel and advisement but no company is likely to successfully
leverage IP for business growth without strong internal IP leadership to
complement specialized external resources.
The more a company’s CEO and entire leadership team understand the
value of IP for business growth, the better they can optimize use of internal
and external resources. As a company’s IP Leadership Level improves,
strategic use of IP can materially improve margins, deals and relationships.
When internal IP champions throughout a company ensure that the
dollars spent on IP externally are actually positioning the company to
grow revenue, cost control and reducing spend on IP become matters for
optimization rather than sources of worry.
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Which of the
following
industries do
you feel will
face the biggest
challenges
over the next 18
months?
It’s no shock to see 25% of professionals referencing pharma. In 2011, patent
expirations meant that the drug industry lost control of medicines whose
combined annual sales totalled $50 billion.
Pfizer, for instance, lost $10 billion per annum in revenue when the patent
on its cholesterol drug Lipitor expired, as companies providing cheaper
generics took advantage.
But it’s not all doom and gloom. When I was a technology product line
manager and IP representative at LSI Logic, we had an outstanding design
engineer that was first named inventor on dozens of patents. He told me
whenever there was challenging problem, he saw it as an opportunity to
create a valuable invention. Whether there are general business challenges
for an industry such as we have seen in banking, automotive, and
construction in recent years, or IP related challenges as we've seen in the
pharmaceutical and telecommunications industries, excellent leaders can
outpace competitors by strengthening IP portfolios via internal and external
IP investment during economic downturns.
Pharmaceutical
Telecom
Automotive
Energy
Other
Software
Robotics
“Excellent leaders can
outpace competitors
by strengthening
IP portfolios via
internal and external
IP investment during
economic downturns”
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15% 20%22%
Improve
reputation of
company and
product image
Prevent patent
infringement
from yourself
Improve your
position when
negotiating
with other
companies in
cross licensing
agreements
25%
Prevent others
from copying
your products /
services
17%
Increase
licensing
revenues
Why does your
organisation
look to file
patents?
While many companies and individuals think about protection against
copying as a key reason for filing patents (25%), there are many ways to
leverage patents for business growth that go beyond protection and even
negotiating cross licenses. Patents can facilitate collaboration between
competitors, attract buyers and sellers, and enable companies to influence
official and de facto standards. Patents provide quantifiable evidence
of technology and innovation leadership that can influence customers,
suppliers, investors, and employees to see your company as the most
preferred partner for business.
Only 15% of professionals cited improvements to company reputation and
product image as the reason for filing patents. Flip it the other way though,
and branding goes a significant way to monetising patents. Intel Inside
was part of an aggressive advertising campaign started by Intel in 1991 to
trigger demand for its patented Pentium processor. Whether there was a
discernible difference between it and competitor devices was unclear. But
intense branding in 130 countries through a five note, tone-based jingle
gave the Pentium margins three times higher than its rivals.
“Patents provide
quantifiable evidence
of technology and
innovation leadership
that can influence
customers, suppliers,
investors, and
employees to see your
company as the most
preferred partner for
business.”
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Lackofin-housemanpower
LackofacomprehensiveIP
cultureintheorganistation
Lackofpatentportfolio
managementstrategy
Lackofrelevantpatent
managementsystem
Lackofseniormanagement
commitment
Lackofin-houseknowhow
Limitedresourcesfor
patentsearch
Limitedlinguisticskillsfor
internationalpatentsearch
Any company from a one-person start-up to a multinational corporation can
improve its IP Leadership Level over time but it takes investments of time,
money and effort. So it’s no surprise to see professionals alluding to a lack of
in-house manpower (42.1%).
Moreover, IP is a dynamic combination of business, legal, and technical
concerns where a company’s ability to successfully leverage IP for business
growth is continually impacted not only by its internal competencies
and execution but also by external macro factors such technological
advances, economic conditions, case law, and legislation. No matter what
an organization sees as its key obstacles to optimizing patent portfolio
management, one of the first steps is to help senior management develop
a vision and passion for using IP for growth by providing relevant credible
examples of the material impact of IP on business success.
In the beginning, some of the examples come from others, but as a
company gets guidance from competent IP leaders and begins to
think about IP as an integrated part of their business processes, internal
successes will build momentum and a culture of IP (mentioned by 38.9% of
professionals) for business growth will begin to flourish.
What do you
see as your
organisation’s
key obstacles to
optimising your
Patent Portfolio
Management?
42.1% of professionals
said lack of
in-house manpower
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Evaluating Patent Strategy with IBM and
Dako
Legal IQ provides a short overview of patent strategy before launching into a
panel interview with representatives from tech giant IBM and cancer diagnostics
technology company Dako.
Introduction
Such is the multi-faceted nature of new products and services in the
information age, they require technologies from previously segregated
markets. The modern smartphone is a prime example, embedding an array
of capabilities and technologies such as connectivity, imaging and audio.
Companies are now utilising technologies from the “common market,”
intensifying competition and escalating patent infringement cases.
Companies use patents to deter competitors from encroaching upon their
developed technology, and preserve market position. The patent is a means
of generating revenue, realising tax incentives and justifying higher share
prices, and a bargaining chip in strategic alliances and original manufacturer
agreements. The dangers of an incomprehensive patent strategy are well
documented in the media; in April 2013, Korean tech behemoth LG accused
arch rival Samsung of corporate espionage in the use of White OLED (digital
display) technologies, which violated seven of its OLED patents. This is
the latest in a slew of cases; in August 2012 a jury sided with Apple to the
tune of $1 billion in a patent lawsuit against Samsung. In July of the same
year Facebook and Yahoo settled on a cross-licensing agreement based
on content distribution as a resolution to a dispute over the authenticity of
social networking tools and website interface.
And then there’s the ignoble threat of patent trolls, who merely bolster
patent portfolios, chase companies they believe are infringing, convince
others to license the patents and use the proceeds to fund more purchases
and litigation. Their entire enterprise is predicated on suing people, or at
least threatening to, causing exasperation for larger firms.
It is up to the company to implement a patent or “appropriability” strategy
that is aligned with their chosen business model. Broadly speaking, patent
strategies can be classified as defensive, or offensive. The defensive
strategy is a way of incentivizing R&D efforts. It is designed to protect a
portfolio, seeking the exclusive right of utilization and exploitation of the
patented technology and to ensure the freedom to operate, i.e. to avoid
legal conflicts and claims of infringement.
Smaller companies tend to build barriers to block competitors from gaining
access to their proprietary technologies.
Offensive patent strategies may involve encircling the competition and
slowing the proliferation of new technologies. Companies may look to
manage the patent portfolio proactively so as to leverage IP assets.
“Companies are now
utilising technologies
from the “common
market,” intensifying
competition and
escalating patent
infringement cases.”
Is your patent
strategy offensive or
defensive?
“Threat of patent
trolls”
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This approach is fuelled by the need to extract and generate maximum
value from intellectual properties by commercializing patented
technologies, licensing out patents, partnering with companies to access
other markets or technologies, or selling unutilized patents.
Somaya, Teece and Wakerman explain how a company’s business model
impacts on the licensing approach in the Ivey Business Journal:
“Innovators pursuing integrated business models to commercialize
multi-invention products may employ lateral patent-leveraging strategies
somewhat differently from those pursuing non-integrated models. For
example, the former may be better positioned to directly profit from
licensing royalties due to their large and relatively less proprietary patent
portfolios. By contrast, non-integrated firms may value more highly the
ability to influence component or licensing decisions by potential partners,
or even the direction of technology standards.”
Global corporations such as IBM have generated significant licensing
revenues by leveraging their patent rights into royalties and business deals.
The exploitation of patents requires considerable expenses and time for
the licensor, who must perform due diligence on the licensee, supply him
with details of the license and the underlying technology during the entire
period of agreement, and negotiate the licensing deal. Yet the benefits
are significant; Texas Instruments decision to license its Kilby patent for
integrated circuits to Japanese companies at a 3% royalty fee generated
727 million dollars per year.
Meet the Panel
Bruno Leduc
Director of
Licensing
Intellectual
Property IBM
Europe
Tom Briscoe
Senior Principal
Strategist of
Technology and IP
Dako
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Panel Interview
Legal IQ: Gentleman, welcome to this Legal IQ
Panel. Bruno, IBM is heavily involved in licensing.
This explicit “monetization” of patents sees it
generate approximately $1 billion per year. How
would you describe your approach to licensing, and
the way licensing is structured internally?
Legal IQ: Tom, how do companies like Dako, who
operate in more niche market spaces yet still look to
leverage cutting-edge technologies, work internally
to decide the value of patents and IP?
BL: We are a small team that generates all of our
organisation’s technology and intellectual property, reporting
into our research organisation. We have a team of licensing
reps and patent engineers working together with the
support of our legal organisation, our IP Law Department.
The community of people working on licensing amounts to about 200
people worldwide.
The first patent licensing activity is centralised, which involves a few people
from IBM Corp Research. Then we’re licensing technologies coming from
the Values Division. And then we have a third component, a very important
one, which is a joint development. Our Micro Electronics Division and
our Research Division are doing joint development agreements with all
kinds of companies around the world. For example, microelectronics, a
development of the next generation of chips, is on this joint development
with, in fact, our competitors. We put money together to reduce the cost
for each party to access this new technology. And we are developing a
company totally outside the microelectronics / IT world. We are developing
new kinds of technology to help their product development, and in return
our research people develop their skills in various domains…in software
and in software analytics. Big Data is currently the biggest driver behind
developments in the software industry.
TB: Very simple, one word, growth. There are lots of seminars
and services on IP valuation, and all those can be very useful
comparables, previous scales, and all those things like that.
But, in the end, if you look at it from the Board of Directors
level and CEO level, the foundational way of thinking about
IP, which a lot of people don’t do, is to think about IP for growth.
How can this innovation, this creation, this investment we’ve made and
documented, and for which we have obtained or are seeking official
recognition, how can that IP really help our business grow? Or how can this
IP that others have made and that we’re considering licensing or purchasing
be combined with IP we’ve developed and help our business grow?
“Big Data is currently
the biggest driver
behind developments
in the software
industry.”
“The foundational way
of thinking about IP…
is to think about IP for
growth.”
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It’s those strategic questions that need to be addressed, not in isolation
and not statically, but as a part of a visionary, dynamic business strategy
process. That’s how you decide the value of IP. Once you know how you
intend to have the IP grow, or even ways that the IP can help your business
grow, then you can decide, for each of the stakeholders to which you might
offer that IP, what it might be worth to them and what it might be worth to
you. You’ve got to put it in the context of how does this help us grow, how
does this help them grow?
Legal IQ: Broadly speaking there are two patent
strategies: a defensive approach which looks to
incentivize R&D and protect the freedom to design
and innovate, and then a more offensive or assertive
approach, which may look to encircle competitors
and manage the patent portfolio proactively so as to
leverage IP assets. How would you summarize the
strategic approach of your respective companies?
BL: We are not really an aggressive company. We’re using the patents we
are creating for our own business and realising that they may be of benefit
to other companies. I would describe the IP world as a pretty honest world.
When we contact a company offering them to look at our portfolio, very
often it translates into a deal. We also have many companies contacting us
directly asking for a licence under some of our patents because they know
in the course of their developments, we have to check whether or not they
are infringing on others.
I would say we adopt a friendly approach and then from time to time we
contact companies in a more assertive way, developing value presentations
and proof packages demonstrating that our patent still reads on products
from the other companies. We are rarely going to litigation. Our goal is to
close a deal with the company showing some evidence of necessity and
trying to convince them that it’s better to spend maybe a few million taking a
licence from IBM to their patent portfolio, rather than spending more money
with their lawyers, with external counsel, and going to a court.
And I think that’s the right strategy. You have to clearly explain to people
that you have invested billions in research and development, you have
created thousands of patents, and these patents have a value for your
company, but can run for other companies as well, and it’s better that
everybody respects IP from the other party. IBM is also taking licences from
other parties, so we think that fairness is key in the IP world
TB: A lot of recent rhetoric has focused on patent wars, and you hear a
lot about offensive and defensive uses. Of course patents can be used
offensively and defensively, but if thinking about the way the world has been
globalizing and the tremendous financial value of being able to work with
others and getting your product out to as broad a market as possible, then
you can realize that there are other uses.
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If you look at the literature in the last decade, you’re seeing something that
actually was prophetically described in the US constitution in the patent
and copyright clause. They basically said that congress has the power to
promote the progress of the useful arts and sciences by securing to the
authors and discoverers thereof, for a limited time, exclusive rights. If you
think about what they mean by secure, most people, when you talk about
secure, they’re thinking about secure in the sense of protection. 99% of the
time, when I talk with people about IP, they talk about protection, but you
don’t grow a business by protecting it. Protection is sometimes necessary,
but you grow a business by projecting the value of your creation. A good
example of this is that when you take, for example, Google. The real value
in Google is that as many people as possible are using it, and Google has
programmes where they allow other people who are developing tools to
have apps or webpages that tap into some of the technology they created.
There are books that you can read now about how Microsoft has, sort of,
seen the light. There’s a book called, Burning the Ships, and how that they’re
really looking for compatibility, interoperability, and cooperation and using
IP to help establish that. So the way we see it at Dako is, I certainly would
not classify us as litigious or offensive. As far as defensive, we certainly have
the capability, and we’ve done it on occasions that when someone comes
to us with a technology, where the technology itself has nothing to offer
and they’re really trying to shake us down for a payment for no technical
contribution, we can defend those type of actions. But what we’re really
interested in is growing our business and growing the business of our
customers, our suppliers, and the stakeholders that we work with.
Legal IQ: Bruno, how do you begin to determine
the financial value of a licence and how do you
weigh this up against maybe alternatives such as
acquisition and strategic alliances?
BL: We’re generating $1 billion, $1.2 billion. It has been around this amount
for a couple of years from licensing the patents, the patents technology
and the IP we licence as a joint development. It is pure profit for our
company and it represents a great recovery of the $6 billion we spend
in R&D each year. Since Louis Gerstner became CEO in 1993, we have
developed models on how to generate value from a patent license
or a technology license. We take into consideration cross licensing
arrangements where each party opens his portfolio to the other company.
It’s based on a balancing payment which is calculated as a relative value of
the patent portfolio for each party with respect to the licensed product…
so where the other party’s products are licensed, and where they are
manufacturing and selling their products.
When you look at an individual patent licence or when we licence to a
company in a field without cross licence, it’s also based on how much
revenue the company is going to generate in the coming years using this
patent.
“99% of the time,
when I talk with people
about IP, they talk
about protection,
but you don’t grow a
business by protecting
it.”
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We basically have the rule of one patent equals 1% of the revenue
generated, but we have to take into account the countries where the sales
occur, because we don’t have patents in force everywhere.
We have to consider also what the value is of the product that the other
company is selling. Is it in a litigious space? Would it cost us a fortune to get
this contract signed? And at the end, of course, we do not force a company
to sign an agreement. We’re selling freedom of action, so we try to be as fair
as possible in the valuation. The most difficult part of the negotiation is to
convince the other companies that it’s better for them to take a licence and
then, of course, the range of the agreement – difficult when you’re dealing
with small to mid-size companies.
We are doing strategic alliances in microelectronics where we are involved
in joint development with our competitors, such as Samsung. Acquisition
is also something important. We have a strategy... well, IBM is no longer
a hardware company like we were in the 60s or 70s, where sales in that
were the fulcrum of our revenue. Today the sales of systems and servers,
storage servers, and so on, represent 15%, software and services 85%. So
this is a different world and IBM in software is licensing, acquiring patents
and acquiring companies to fill the gap in our portfolio offering and to offer
more IP to our partners.
“We have to consider
also what the value
is of the product that
the other company
is selling. Is it in a
litigious space? Would
it cost us a fortune
to get this contract
signed?”
Legal IQ: And what do IBM look for in the terms of
the license agreement – long term or short term,
exclusive versus non-exclusive?
BL: Exclusivity is a word we don’t really like. Exclusivity reduces the freedom
to licence to other parties and it’s difficult to value exclusivity. So we do it
from time to time, but on a very narrow field or when it is outside our core
business. A good example is what we did 10 or 12 years ago where we
exclusively licensed to one company patents relating to robotic surgery.
This was clearly outside IBM core business, so it was not a problem and
the company in front of us was ready to pay a premium to get a five year
exclusivity on these patents.
Regarding the term of a licence, we are open to discuss a term, but it’s of
course based on how much we could forecast what’s going to happen with
the business, so we have solutions where we say, okay, let’s go for a five
year time, maximum seven year term, because we don’t know where the
business you are in will be in five years.
But we are also - and this is true mainly when we are doing a cross licensing
arrangement with large companies - doing life of patent licence. It’s easier
to manage, reduces the length of the negotiation and how many times you
have to sit down together with the other company to renew the licence. So
our strategy is a 5-year licence for a field with small companies, and life of
patent for a cross licence with larger companies.
“Exclusivity is a word
we don’t really like.
Exclusivity reduces
the freedom
to licence to other
parties and it’s difficult
to value exclusivity.”
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TB: As a programme manager, I used to tell my team, most companies find
when they think they’re 90% complete with a project, it’s the second 90%
of the project that’s always the hardest. The same thing can be said for
icebergs and IP. It’s really the part that you don’t see that’s most likely to sink
you. So maintaining secrecy definitely has its place, as does being first to
market, but sometimes the things that you don’t think of, that are involved
in good IP strategy, can be more important to the ultimate success of a
product.
A quick example is there’s a technology in medical research called
polymerase chain reaction. It was developed by Kary Mullis who got the
Nobel Prize for that, later. At the start, being first to market wasn’t enough
and even having the patent applications wasn’t enough. It was only when
those patent applications were licensed, and Roche ended up with a patent
strategy that allowed researchers to freely use this technology, and in
turn promote the use of technology. They didn’t try to say “we’re going to
develop every use of the technology” - they got it out there into the world.
They got it out there being used, and over the course of those patents, they
and their partners earned well over $2 billion in licensing royalties as well
as all the technologies that came out of that. So secrecy and first to market
is a good part of it, but it’s not the only part. It’s that second 90%, that part
that most people don’t think about, that’s a reason why you need to have a
forward thinking IP organization.
Legal IQ: Tom and Bruno, you seem to be involved
in “open book” patent policies. What credence do
you give to maintaining secrecy and being first to
market?
Legal IQ: Tom, your responsibilities aren’t confined
to licensing. Talk me through the process of
patenting a company’s flagship products or
technologies, with reference to the strategic
decision making and pressure points etc.
TB: So the patenting process is really an iterative part of the innovation
process. Most people, when they think about innovation, or, for that matter,
even when they think about patents, think about ideas. Ideas are part of
that process, but again, they’re not the whole process. After you come
up with an idea, you have to express that in some way so that you can
communicate it with others, and that’s part of the prototyping process.
The issue that we run into in patenting is that, very often, the ideas and
the prototypes and the concepts come up at a time when the market is
not quite ready for it. So you have to think about what direction the market
headed in general.
“Maintaining secrecy
definitely has its place,
as does being first to
market, but sometimes
the things that you
don’t think of, that
are involved in good
IP strategy, can be
more important to the
ultimate success of a
product.”
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I’ll give you an example. In Dako, we had a patent application, an invention
disclosure, come in that had to do with a very clever way of helping our
customers understand how our instruments and our software would help
them improve efficiency of their lab. At that time, it was really more of
a sales tool, but it was a very interesting concept, and so the marketing
people came to us and said, this is really unique, is there something we can
patent? So by taking their concept and their ideas and thinking about the
direction the market headed, along with the kinds of trends we see in the
industry, we were able to combine some characteristics and features from
the original concept they presented with other things that were going on.
We come up with a couple of patents that were issued that were prophetic
in terms of things that we weren’t. Back at the time we filed, we didn’t have
that product, but now, we and our competitors are offering those type of
products. So we have patents that we can leverage. I guess the key part
about the process is that it has to be iterative, it has to be proactive. The
antiquated way of thinking is: I don’t want to know what prior art is out there
because if I do, I’ll have to disclose it and therefore if I don’t disclose it, I
could be in trouble with triple damages and so forth.
It’s really better to know up front what your real contribution is. So for
important technologies, we do a patent search before we patent it, so we
know what we really have that’s new and what other people have been
working on.
Legal IQ: And how can one use trademark and
copyright to complement patent strategy?
TB: That’s an excellent question and it’s one that’s often overlooked.
There are a couple of books and articles that I would refer to. One is by
Dr Lindsay Moore, called Intellectual Capital in Enterprise Success. In it,
she’s got a pyramid where she talks about the knowledge, the people, all
of the intellectual assets that a company might have access to, including
intellectual property rights like patents and so forth. Then at the very top
of the pyramid, as you’re building this value, you have the goodwill and the
brand of the company, and that’s the goal, that’s the end of all those other
things.
The second article that I refer to with regard to trademarks and copyrights
is, there’s an article by James Conley. This was written back in 2006 and
the title is, Trademarks not Patents: the Real Competitive Advantage of
the Apple iPod. He talks about how the technology of the iPod is not
necessarily what gives Apple a market premium. It’s because they had
good technology, they also had good design, and then, by use of both
trademarks and design patents, both graphic trademarks and textual
trademarks, they’ve been able to transfer the value of the experience of
iPod and iTunes at the time, and now that carries over to iPhone and iPad,
into trademarks.
“The key part about
the process is that it
has to be iterative, it
has to be proactive.”
17. www.legaliqonline.com 17
He gives an example of a very simplified, stylised drawing that says, made
for iPad, or made or iPod, and how people now will pay a premium. And that
carries over to the Apple brand because they followed a very well thought
out strategy of transferring the value, not so much into the technology, but
moving that up into the brand. That’s where trademarks play an important
role. One aspect of trademarks is that patents have a 20-year lifetime,
trademarks can be renewed for as long as you’re using them.
In fact, there are companies that are hundreds of years old - Oxford
University Press - and if you’ve been to a concert, you’ve probably seen
Zildjian cymbals, Zildjian was founded in 1623. So these companies are still
using their house trademark, they’re still recognized for the quality that they
have hundreds of years after their founding.
BL: The biggest challenge is to renew our customer base because the
technology is changing around the world and the markets are shifting. So
our goal remains to generate more than 1 billion out of our IP each year.
Of course we have to renew the existing licence, but we have to find and
to exploit the best way all the technologies that our labs are developing
around the world and convince new customers, new partners, to work with
us.
When we started this IP licensing business, our customers were in the
service field and the traditional IT field…but the situation has changed.
IBM as a company has changed; we have to work with companies that are
outside the IT world, and this is what we have been doing for the last three
or four years. We’ve been convincing utilities companies, in energy and
water for example, that IBM can help with innovation and compliance with
demands from cities and local governments.
We work also in the security field, which is a measure of concern to most
Western governments. It’s a good story because working with new partners
outside our traditional business helps us develop new knowledge and
knowhow that we can reuse in our software and services. It’s a win/win
situation where we develop something with a partner and we reuse it in our
own products. IBM is not looking to use its thousands of researchers as a
body for services. When we enter into an agreement with another company
for jointly developing IP, it has clear mutual benefits. Our partner can use it
in the development of new products and new services, whilst IBM acquires
new knowledge and knowhow in a specific field.
Legal IQ: Bruno what would you say are the biggest
challenges to licensing, and how do you look to
overcome these?
“Our goal remains to
generate more than
1 billion out of our IP
each year.”
18. www.legaliqonline.com 18
Legal IQ: Tom, how does the unique nature of Dako’s
products and technologies – the fact that they have
such immense public value in that they save lives –
impact on your IP strategy? How do you balance the
need to protect your IP and get these products to as
wide of a market as possible?
Legal IQ: And finally, for a global corporation such as
IBM, does strategy differ depending on region?
TB: To start with, we take great pride in the fact that Dako’s diagnostic
products can help get the right treatment to the right patient at the right
time. I did a masters thesis during my MBA where we talked about how
many people were impacted by cancer, and that’s where Dako focuses.
95% of the people that I interviewed had someone in their own family
directly impacted by cancer. So we recognize that this is a very important
technology.
In Dako, we recognize that there are times when you need to protect from
people that outright want to steal your technology, but we’re more focused
on projecting and getting our technology in the market to be used as widely
as possible to help in the fight against cancer. So we are open to licensing
agreements, we are open to partnerships, we don’t feel like we’re the only
ones in the world that can provide the cancer diagnostics needed. In fact,
we have licensing agreements and partnerships where Dako and on of our
competitors will partner together to provide a diagnostic for the parent
company of one of our biggest competitors. It’s that type of cooperation, I
think, that’s needed to provide these technologies to people.
We don’t think of IP as just a weapon, we think about IP as setting the tone.
Just because you have a patent it doesn’t mean you have to use that patent
as a weapon. You could use the patent and you could say, anyone who
subscribes to a particular standard set up by the FDA or set up by some
other trade group or regulatory group has a free license to use that patent
to perform medical services. Having the patent allows you to set the terms
that you want to do. Those terms do not have to be coercive, they do not
have to be mercenary, and the protection only come into play when you
get a bad player who comes along who wants to take the opportunity away
from patients to get that type of diagnostic.
BL: Unfortunately for us, patent software doesn’t really exist, so we have a
different approach with some companies. My colleague responsible for
Asia Pacific has, let’s say, the world of the semi-conductor in front of him, he
has many consumer electronics companies over there, and big companies,
so strategy is different, but they have less software companies in Asia
Pacific.
“Having the patent
allows you to set the
terms that you want to
do.”
19. www.legaliqonline.com 19
It doesn’t mean that in Europe I’m not talking to some semi-conductor
companies. We have many. In fact when you look at Germany, when you
look at Austria, Switzerland, there are a bunch of small and mid-sized semi-
conductor companies doing well because they are not trying to compete
against the Chinese. They are in the analogue devices and doing pretty well
and we have many agreements with them.
We have also a lot of software companies in Europe. At the top is SAP who
is by far the largest software company, but there are also other software
companies which are global companies, not only selling in Europe, so this
gives us the opportunity to licence them because they are doing business,
software business, in the US or elsewhere where software patents are
harder to obtain. And, of course, regarding the technology it’s the same
strategy all around the world. Companies approach us or we approach
companies to jointly develop some new products to exploit the ideas
generated in our research labs. We have a big lab in Zurich working on
hardware, we have a big lab in Haifa in Israel working on software, but
they are servicing companies all around the world. We have labs with
idiosyncratic functions, but they serve the same universal purpose.
20. www.legaliqonline.com 20
Legal IQ is an online community dedicated to providing 42,000 legal
professionals with news, information resources, networking and most
significantly, industry events.
Legal IQ is a division of international, B2B conference and e-learning
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Generally, the topics we cover on Legal IQ correspond with our legal events.
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To access our more advanced content, you’ll need to sign-up. But don’t
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21. www.legaliqonline.com 21
References
i. “Business Models and Patent Strategies in
Multi-Invention Contexts,” Deepak Somaya, David Teeece and Simon
Wakeman
ii. “Leveraging Patents Financially, A Company Perspective,” Dominic Vries
iii. “The Strategic Use of Business Method Patents,” Martin Kretschmer and
Ruth Soetendorp
iv. Business Models and Patent Strategies in Multi-Invention Contexts,”
Deepak Somaya, David Teeece and Simon Wakeman
v. http://www.wipo.int/export/sites/www/freepublications/en/
intproperty/834/wipo_pub_834_ch4.pdf
22. Optimise Your Global Patent Strategy through Portfolio Management,
Innovation and Best of Breed Strategies for Emerging Markets
Explore the latest patent monetisation and
protection news at the 7th Annual edition of
the Global Patent Congress:
Impact of the European Unitary Patent and
Court and the AIA on your patent strategy
Generating revenue through monetising your
patents and licensing
Patent protection, opportunities and
challenges in emerging markets including
China, India and Latin America
Production of strategic patent portfolios to
maximise value to your business
Development of successful, practical
tools for portfolio management
Innovative patent protection and litigation
strategies
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anti-counterfeiting policies
PLUS interactive sessions including
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Bruno Leduc
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Development, IPR
Thomas Steffen
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Dr. Dietmar Pressner
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Intellectual Property
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Licensing & Business
Development International
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IP Counsel
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Corporate Patent Attorney
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European Patent Attorney
If you have any questions then please dont hesitate to contact us on
+44 (0)20 7036 1300 or via email enquire@iqpc.co.uk
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