recent developments in the imec ip business practices recent developments in the imec ip business...
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TTO PRACTICES
RECENT DEVELOPMENTS IN THE IMEC IP BUSINESS
Dr. ir. Vincent Ryckaert, European Patent Attorney
IMEC IP Business and Intelligence Director
IMEC 2014 3
2012 IN NUMBERS
Total revenue (P&L) of 320M€, a growth of 7%
1,064 peer-reviewed articles
161 patents awarded &133 patents submitted
Collaboration with > 600 companies & > 200 universities
600 residents, visiting & PhD researchers
IMEC 2014 4
IMEC 2014 5
HEADCOUNT
0
500
1000
1500
2000
2500
84 85 86 87 88 89 90 91 92 93 94 95 96 97 98 99 00 01 02 03 04 05 06 07 08 09 10 11 12
PAYROLL
N ON -PAYROLL 2,050 people
IMEC 2014 6
STATE-OF-THE-ART RESEARCH FACILITIES
300mm
pilot line
450mm
ready
200mm
pilot line
N ano
biolabs
N ERF
lab
Organic
solar cell
line
Silicon
solar cell
line
IMEC 2014 7
RESEARCH PROGRAMS
FOR FULL INDUSTRY ECO SYSTEM
Fablite & Fabless & OSAT Logic & Memory IDM & Foundries
LamRESEARCH
IMEC 2014 8
8
Different “Environmental” Actors on IP:
▸ Governments (context)
- Stimulating IP creation (incentives, KPI, ..)
- Creating new instruments (Unitary Patent, Unitary Patent Court,
laws of enforcement)
- Public Policy driven
▸ Patent Agencies (EPO, USPTO) (protection)
- Focus on quality and more workload driven
- Introducing procedural restrictions (earlier decision taking)
- Rather disconnected with IP use
▸ Courts (enforcement, contract disputes)
- Getting more specialized
- Creating case law
- Much more context driven
BE “AWARE” OF NOT ALWAYS ALIGNED
EVOLUTIONS
IMEC 2014 9
IMEC POSITION ON UP/UPC
1. If Policy is Fair IP use – UP/UPC is way
to go
2. Effects 1. Great market – EP IP value grows (like US)
2. Big quality (on top of EPO quality) specialized
3. Implementation 1. Depends on the costs
2. Depends also on the licensees/co-owners
IMEC 2014 10
Sole ownerships
Temp. exclusivity
IMEC 2014 11
KEY FEATURES OF UPDATED IMEC IP POLICY
1. Avoiding IP blocking for our Partners • Unless not longer needed [PREDICTABILITY]
2. Securing IP Rights for our Partners and IMEC
• For Partners whenever it becomes possible (1. and 3.)
• For IMEC where necessary to ensure value extraction
3. Fail safe • Compute loss of opportunity in case of Policy Deviation
• Implement safe guarding measures
• Focus on Value creation instead of non-discussions
CAN YOU DECIDE? DECIDE WHERE YOU CAN!
IMEC PATENT SELECTION CRITERIA
DESIGNED FOR EFFICIENCY
WITHIN IMEC CONTEXT
IMEC 2014 14
1
4
PATENT SELECTION CRITERIA (1)
Step 0: IMEC Value
(by IP board)
▸ Idea must fall within the general IMEC experience domain (to ensure that the
technological and market intelligence is available to exploit the patent)
IMEC 2014 15
1
5
PATENT SELECTION CRITERIA (2)
Step 1a: Patentability – Legal Value
(by IP team) (linked with 1b)
▸ Novelty:
based on external/internal prior art search
▸ Inventive step:
minimum a defendable position vis-à-vis patent office required
▸ Enablement:
amount of information available in view of claimed idea
as available at least within the priority year
dependent on the predictability degree of the subject matter
might heavily impact scope of protection
=> If NOVEL and INVENTIVE and sufficiently ENABLED: FILING (see 1b)
IMEC 2014 16
1
6
PATENT SELECTION CRITERIA (3)
Step 1b: Assessment of the intrinsic idea as such – intrinsic value (by IP Board) (linked with 1a)
▸ Q1: is the idea a large or minor improvement to the state of the art in terms
of performance is the idea essential or non-essential for the IMEC solution (internal look)
▸ Q2: Is the idea broad or narrow e.g. do there exist many alternatives in the world, is it easy to design around is it applicable for many applications/fields or not) This answer influences the sustainability of the idea under strategic and/or market changes. (external look)
=> if LARGE improvement and BROAD idea: FILING (see 1a)
= >if SMALL improvement and NARROW idea: NO FILING (unless special circumstances – see further)
=> if LARGE improvement but NARROW idea, or if SMALL improvement but BROAD idea : NEXT STEP (Step 2)
IMEC 2014 17
1
7
PATENT SELECTION CRITERIA (4)
Step 2: Business Aspects – business Value (by IP board)
▸ SHORT TERM ASPECT
- Is there any short term exploitation path (transfer, license, spin-off) or at least foreseen in our business plan?
Note: if exploitation path not realized, then stop directly
- Does it create reasonable value (ROI) for one of the existing partners within R&D cooperation (co-ownership, cost-sharing, licensed partners)
=> FILING
▸ LONG TERM ASPECT
- For large improvement but narrow idea
- Is this filing essential for the long term strategy, i.e. would a similar 3rd party patent blocks IMEC long term strategy Note: if strategic research direction changes, then stop directly
e.g. first result of a new IMEC strategic research direction
=> FILING
IMEC 2014 22
2
2
CONCLUSION
Have an IMEC (R&D institute) specific context ▸ Please do not use a simplistic naïve view in IP decisions neglecting such context for overruling the
specifically designed patent selection criteria
Quality (in terms of creating value) requires very close collaboration between IP team, inventors and their management ▸ In terms of supplied material, time spend (enablement, written description)
▸ In terms of decision making, linked with insight in ST, LT valorisation strategy
Collective decision making versus each a few patents ▸ Role of the different fora (patent review board, program review boards, department patent
management board, interaction with group leaders, senior scientists, fellows)
Exploit maximally the IMEC advantage that we should be 3-10 year ahead of other patent investing parties ▸ Should enable broad patents (given that we use appropriate publication procedure – also with
respect to white papers)
▸ We should focus on the LT (MT) time window for exploitation, given that a patent is a LT(MT) tool (e.g. look at time to grant).
IS THERE A DEMAND FOR
MORE OPEN IP?
RISKS FOR OPEN INNOVATION?
IMEC 2014 26
INDUSTRIAL PARTNERS – SHIFT TO LATER LIFE CYCLE
▸Governmental Funded
- Fundamental Research: no industry
- Basic Research Funded projects: no industry
- Applied Research Projects: industry involvement and no industry
financing
- Applied Research Projects: industry involvement and co-funding
▸ Bilateral
- Programs (open consortia)
- Bilateral R&D
- Development on Demand
- Low Volume Manufacturing and Services
- Technology Transfer and/or Spin-off Creation
- IP Licensing & Monetization
IMEC 2014 29
▸Governmental Funded
- Fundamental Research: no industry
- Basic Research Funded projects: no industry
- Applied Research Projects: industry involvement and no industry
financing
- Applied Research Projects: industry involvement and co-funding
- Own R&D Alliances (academia (complementary) and industry
(infrastructure)
▸ Bilateral
- Programs (open consortia)
- Closed consortia (charity, industry/government – strange eco-systems)
- Bilateral R&D
- Development on Demand
- Low Volume Manufacturing and Services
- Technology Transfer and/or Spin-off Creation and/or IP/KH block
licensing
- IP Licensing & Monetization
TRENDS
H2020 TRL
IP MONETIZATION - EVALUATION IMEC EXTRA IP OFFERING MODEL
•`EXTRA` MEANS `COMPLIANT WITH EXISTING (SHARPENED) BUSINESS MODEL
• `IP` MEANS `PATENT AND (PUBLISHED) PATENT APPLICATIONS ONLY
• `MODEL` MEANS `SUBSET OF MUTUAL NECESSARY SUB-MODELS`
No value
Needed
IMEC 2014 33
LEARNINGS
1. Place in the life cycle (close to spin-offs)
2. Limited subset of portfolio suitable (content, ownership, status)
3. Balance reputation (fairness versus strong IP – e.g. support a
pure licensing policy)
4. Some successes (but 2. and internal effort for non-core
limited)
5. Sustainability (see 2. plus no file to IP monetize policy per se –
see 3.))
6. Learn also in-licensing or pooling with Academia – difficult
IMEC 2014 34
OPEN INNOVATION AND OPEN IP IN IMEC’S R&D
LIFE CYCLE
• IMEC exploring competitive field via IP Monetization
• IMEC experimenting new models IP value extraction
• Internationalization hampered by different KPI’s and approaches
• Light shift to less joint IP
• More difficult bilateral R&D negotiations shows weakening of
Innovation
• Industry seems to focus more on trade-secrets and hence C.I.
• Industry, academia, government do not seem to demand/request
Open IP business/strategy not fostering Open Innovation
The trend of Open Innovation and the tendency towards less Open IP
seems contradictory or irreconcilable
More Open Innovation and (non existing demand for) More Open IP
act as Paradox
IMEC 2014 35
TREND OPEN INNOVATION AND DEMAND
LESS OPEN IP = PARADOX
Open Innovation Late R&D Life Cycle | Early R&D Life Cycle
Impossible | Possible
more --- |
|
|
|
|Tendency of government: more IP;
detrimental | academia: more exclusivities
less --- |
| | | Open IP
exclusive non-exclusive no IP
TII CONFERENCE UTRECHT
IMEC 2014 36
OPEN INNOVATION MEETS OPEN IP IMEC TOOLS, INSIGHTS AND ACCELERATORS
Attempt to solve this paradox: meet all changes in
R&D environment + demands in IP access rights
regimes + reconsile with tendency to O.I. ▸ Internally:
- adapted + refined IP Business Policy
- Exploring use of patent pools for IPR sharing with 3rd parties (incl.
academia in related R&D fields)
▸ promoting non-blocking approaches for IP market
policy-wise
▸ Open the debate regarding the need for a good
R&D Life Cycle
TII CONFERENCE UTRECHT
IMEC 2014 37
GLOBAL R&D PLATFORMS :…TO THIS:
Providing focus for universities and basic insight and solutions for industrial partners
Universities Longer
term
, m
any
options
Sho
rte
r
term
,
applic
ations
Tim
e f
ram
e
Lower Higher R&D cost
Industry
Shared
R&D Platforms
Shared
R&D Platforms
Shared
R&D Platforms
IMEC 2014 42
CONCLUSIONS
1. IMEC IP model – more dynamic than ever before 1. Explain internal
2. Explain to Partners and Governments (wrong place in the life cycle does not
work)
2. IMEC adapts to the IP evolution 1. more open is NOT the way to go (starting from our perspective)
2. Less open is NOT necessarily bad if rightly positioned in life cycle
3. But KEEP our open model AS BASELINE
4. Even more explicit working out all IP aspects of the collaboration (less
implied)
3. IMEC believes it is more than time to discuss the need for a sound
balanced R&D life cycle with Governments, Academia and Industry in
EU to create true EU collaboration
4. IMEC willing to bring its experience on the table to achieve concrete
solutions
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