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©TECNALIA. Todos los derechos reservados. Pág. 2
TECNALIA is a private organization and the first market oriented applied reasearch center in Spain, with circa 1.500 people, turning 110 millones euros in sales and with over 4.000 clientes worldwide.
Tecnalia Research & Innovation
What we do? “Accelerate the incubation of business
opportunities based on disruptive technologies
to generate a deal-flow of diversification and
growth opportunities to companies”
Unique Tecnalia’s ecosystem
Valley of Death
Proof-of-concept funds
Public funding
Private investment
Problem & needs
Start up business
Shape bright ideas into attractive investments
Disruptive technologies
Entrepreneurs Investors
Figures 2014
Business opportunities in the accelerator incubator program
Funds 2014 available
Patents families in portfolio
46 38% 91
5,5M€ Tecnalia’s 2014 funding for proof of concept
New spin off created in the last 9 months
4 +300
Patent applications and granted patents
Incubation acceleration in Tecnalia
IP
protection
Validation
strategy
Pitch &
Business
Plan
Risk
assessment
Identification
of business
opportunities
Smart
Capital /
team
New tech-
based
business
Market Projects (Div.)
Wake-up (IS div)
Investors Venturing (TV)
IBF (Bus. Dev.)
R&D Projects European &
other projects
Start-ups w/ entrepreneurs
Diversified
businesses w/ SMEs &
corporations
Tech.
licensing w/ SMEs and
corporations
Proof-of-concept Investment fund
Customer: Tecnalia R&I Team: Tecnalia Ventures
Services offered by
Tecnalia Ventures
Accelerating the Incubation
Selection • Pitching sessions • Investment criteria • Fund initiatives with
higher commercialization potential
Maturation Development • Proof-of concept • Prototyping • Industrial validation Other non-R&D • Protection IP
Management • Business model • Market rerearch &
market sizing
Launching Team up • Entrepreneurs • Smart capital • Industrial
partners Constitution • Legal issues • Tech. valuation • Shareholder
agreements
Tecnalia’s internal funds (Omega) Value creation milestone-driven funding
Support from a team of commercialization specialists in diverse economic sectors
Technology is a key component providing innovation and differentiation. One of the most important issues to ensure differentiation and sustainable competitive advantage in technological assets is the IP protection
Patentability Strategy
EL EQUIPO DE TECNALIA VENTURES COMMERCIALIZATION SPECIALISTS: ASIER RUFINO
Managing Director
Marie Agnes Poutier Industry & Transport
SPIN OFFs:
Marian Gutierrez Industry & Transport
&
Aitziber Aramburu Sustainable Construction
Toni Pijoan Jesus Torrecilla Energy & Environment
Asier Sesma ICT- European Software
Institute
Oihana de la Mata Health
Igor Aristizabal Spinn Off Specialist
Edurne Casado Spin Off Assistant &
Patent Administration
OMEGA FUNDS:
Rakel Garcia Omega Funds Manager
CHIEF FINANCIAL OFFICER:
Leire Garcia Muguerza
Sergio Bandinelli Tecnalia Ventures Outreach
“EXTERNAL”:
Patent Portfolio Management
TECNALIA’s Patent Portfolio is managed by Internal IP managers, with
the purpose of protecting the overall interest of TECNALIA.
Paralegal. Patent Portfolio Administration
Commercialization Specialist. Patent Operational
Management.
IP Coordinator: Global IP Coordination.
Always with the support of Patent Attorneys as External services
providers.
Administrative Management Paralegal
The administrative management of TECNALIA’s patent portfolio is carried out by a Paralegal that belongs to Tecnalia Ventures staff. The paralegal main roles are:
Patent Portfolio Update; new applications, validations, abandons, renewals, etc.
Check, control and management of renewal/maintenance taxes payments and IP service providers invoices.
Monitoring of patent files in order to ensure the fulfillment of deadlines.
Tecnalia Ventures has recently acquired an IP management software “Sophia” to centralize and manage all this information.
Patent Portfolio Management
Advantages of a CENTRALIZED Administrative Management
To know the patent portfolio status at all times.
To know the patent portfolio maintenance costs at all times.
To compare the quality of the services provided by different suppliers.
So that, it is possible to optimize patent portfolio maintenance costs by means of:
Better control over IP service providers.
Improvement of the decision making process: abandon, most appropriate filling route, etc.
Patent Portfolio Management
Operational Management Commercialization Specialist.
Commercialization Specialists combine Technical, Business and IP knowledge to provide support to TECNALIA’s Business Divisions from the conception of the business opportunity, to its commercialization. Each Technological Business Division is supported by its own Commercialization Specialist, thus leading to its specialization in the target markets and core technologies of the Divisions:
Energy Sustainable Construction Industry &Transport ICT Health
Patent Portfolio Management
Commercialization Specialists are NOT Patent Attorneys but they have a deep Knowledge in IP Prosecution. Commercialization Specialists act as intermediaries between TECNALIA and its IP Services Providers with the dual purpose of ensuring:
a) the understanding between the inventors and patent attorneys.
b) that the patent application provides to the new business opportunity the required protection against competitors.
Patent Portfolio Management
Operational Management Commercialization Specialist.
Patent Portfolio Management
Thanks to the Commercialization Specialist figure, the patent portfolio management is individualized for each Business Division enabling:
To align IP protection strategy with market strategy.
To manage the patent portfolio in a customized way according to target markets and core technologies.
To optimize the protection strategy for each asset due to the CS overall knowledge on it since its conception.
To avoid patenting without market target.
To optimize patent portfolio costs.
Operational Management Commercialization Specialist.
Definition of Assets’ Protection Strategy. Support in the analysis and
selection of the best form of protection for the assets: patent, trade secret, utility model, copyright, etc.
Supervision and mentoring of Patentability reports in order to assess novelty and inventive step of the invention.
Assessment of the potential infraction of third parties’ rights as a result of the activities carried out by TECNALIA around its IP Assets.
Patent Portfolio Management
Operational Management Commercialization Specialist. Main Duties.
Support along the Patent Granting Procedure.
• Patent application drafting ensuring the best protection of the asset according to market strategy.
• Analysis of the Office Actions and recommendations for elaboration of the amendments and their response.
• Support in the designation of states where the patent has to be validated or extended.
• Support in the decision making process regarding the abandonment or continuation of patent files.
Patent Portfolio Management
Operational Management Commercialization Specialist. Main duties.
IP exploitation agreements.
In close collaboration with TECNALIA´s legal department and business areas drafting of :
• licensing agreements
• joint ownership agreements
• Collaboration agreements
Patent Portfolio Management
Operational Management Commercialization Specialist. Main duties.
Global IP Coordination. IP Coordinator
The IP Coordinator is the person that has a Global vision on Intellectual
Property and its management in TECNALIA.
IP Coordinator ensures that the IP in TECNALIA is properly managed.
IP Coordinator main roles:
External services providers management.
IP training.
Commercialization Specialists advice in IP issues.
TECNALIA´s IP policy definition.
Support TECNALIA Legal Department in terms of IP
Patent Portfolio Management
To Sum Up
Intellectual Property and its protection is part of the overall TECNALIA Ventures strategy for “Turning innovative technology assets into new profitable and sustainable businesses “.
Commercialization Specialist is a key figure that allows IP management
and its protection:
Aligning “Protection strategy” with “Market strategy”.
Customizing IP management by combining required knowledge (market and technology) to define the best strategy for the protection and exploitation.
Centralized Patent administration management key to: optimize maintenance costs, facilitate decision making, know portfolio status at all times.
Patentability Strategy and Patent Portfolio Management
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