SKGF_Presentation_Left Turns Only - Making Sense of Nanotech IP Strategy_2004

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SterneKessler

Technology

“Innovative companies have been thrust
into an intellectual property arms race.”
- from Ideas to Assets

1 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 1

No. . . Just a Horse Race . . .

With Winners, Losers and Some No Shows.

2 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 2

Business strategy drives IP strategy,
not the other way around.

Nanotechnology is no different.

3 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 3

Technology Enabler
l
primarily provides nanotechnology to others (e.g.,
l
Nanosys, Quantum Dot, Nanotek)

Application Provider
l
primarily produces a product or service based on
l
nanotechnology (e.g., Nanoink)

Technology Adopter
l
primarily adopts nanotechnology from others to
l
enhance products (e.g., Levi’s)

4 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 4

Intellectual (and Revenue) Capital Builder (e.g.,
l
MIT, Northwestern, Harvard)
primarily develops fundamental nanotechnology for
l
intellectual and revenue stimulation

The Government
l

5 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 5

Intellectual Asset Management Strategy

IP Value Generation Foundation
l

IP Value Generation Process
l

6 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 6

Leverage

Protect
IP Value Generation
Process
Value

Identify
Preparation Education
IP Value Generation
Foundation

7 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 7

Engage experienced IP advisors
l
Shortage of experienced IP advisors in Nano
–

Maintain an IP Strategy and Plan
l
Recognized importance in Nano
–

Maintain an Employee IP Incentive System
l
Not much in early stage nano, still driven by emerging
–
nature of technology
Know what you own, own what you know
l

8 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 8

Communicate your IP Strategy & Plan
l
Internal
–
– External – Give notice that you are a player
(when you are a player)

Educate Team Members and
l
Stakeholders on IP Basics
Patent barring events
–
Timetables for patents to issue
–
Don’t pretend to be patent attorneys
–

9 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 9

Internal
l
Invention Disclosure Forms
– Really Good Stuff
Engineering Brainstorming
–
Marketing Brainstorming
–

Engineering
External Marketing
l
VC Bumblebees
–
External IP Identification Tools
–

10 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 10

Assess value to your business strategy
l

Assess value to others (if not within your
l
business strategy)
Cross Licensing Potential
–
Revenue Potential
–
Defensive Value
–

11 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 11

What is the right form of IP Protection?
l

Pursue IP Protection
l

License In – Level of Exclusivity, Future
l
Development, Term, Field of Use

12 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 12

Enhance the value of your product
l
License out
l
Cross License
l
Basis for Funding
l
Company Credibility
l

13 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 13

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SKGF_Presentation_Left Turns Only - Making Sense of Nanotech IP Strategy_2004

1. Making Sense of Nanotech IP Strategy Donald J. Featherstone Director Sterne, Kessler, Goldstein & Fox donf@skgf.com Michael D. Specht Attorney Sterne, Kessler, Goldstein & Fox mspecht@skgf.com Presented at: International Engineering Consortium NanoEngineering World Forum June 23, 2003 - Marlborough, MA © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C.

5. Technology Enabler l primarily provides nanotechnology to others (e.g., l Nanosys, Quantum Dot, Nanotek) Application Provider l primarily produces a product or service based on l nanotechnology (e.g., Nanoink) Technology Adopter l primarily adopts nanotechnology from others to l enhance products (e.g., Levi’s) 4 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 4

6. Intellectual (and Revenue) Capital Builder (e.g., l MIT, Northwestern, Harvard) primarily develops fundamental nanotechnology for l intellectual and revenue stimulation The Government l 5 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 5

9. Engage experienced IP advisors l Shortage of experienced IP advisors in Nano – Maintain an IP Strategy and Plan l Recognized importance in Nano – Maintain an Employee IP Incentive System l Not much in early stage nano, still driven by emerging – nature of technology Know what you own, own what you know l 8 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 8

10. Communicate your IP Strategy & Plan l Internal – – External – Give notice that you are a player (when you are a player) Educate Team Members and l Stakeholders on IP Basics Patent barring events – Timetables for patents to issue – Don’t pretend to be patent attorneys – 9 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 9

11. Internal l Invention Disclosure Forms – Really Good Stuff Engineering Brainstorming – Marketing Brainstorming – Engineering External Marketing l VC Bumblebees – External IP Identification Tools – 10 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 10

12. Assess value to your business strategy l Assess value to others (if not within your l business strategy) Cross Licensing Potential – Revenue Potential – Defensive Value – 11 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 11

13. What is the right form of IP Protection? l Pursue IP Protection l License In – Level of Exclusivity, Future l Development, Term, Field of Use 12 © 2003, Sterne, Kessler, Goldstein & Fox P.L.L.C. 12

SKGF_Presentation_Left Turns Only - Making Sense of Nanotech IP Strategy_2004

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