Courtesy Tracey Thomas & The IP Zone1

IP Licensing Score CardContent & Format Developed by

The National IP TaskforceFor

The IP Zone

IP Functionality, Tasks & Behaviors 1

1- Performance parameters in the business case and supplemented by value measures and metrics where available

Courtesy Tracey Thomas & The IP Zone2

The IP Zone - National IP TaskforceLicensing Proficiency Score Card

This score card is a composite (dash board) of 39 factors used to define IP performance in accordance with the U.S. Department of Labor standards. 2

The analysis was done over a period of years by Taskforce Subject Matter Experts for the IP Zone and its users.

The IP Zone and National IP Taskforce are making this score card available for your assessment of your own proficiencies in conducting licensing transactions.

This is a confidential, free readout and high level indicator of your company’s licensing capabilities. The full assessment is available

2- U.S. DOL Standards compliance is essential to support possible litigation challenges.

Courtesy Tracey Thomas & The IP Zone3

InstructionsLicensing Proficiency Score Card

These benchmarks provide a scale from “needing improvement” to “better than competitive” based on the scaling of 1-7

The purpose is to enable you to control your company’s value creation, protection and competitive advantage.

You control - your data is confidential - feed back is verbal (no cookies or copies.)

REMEMBER – Your capabilities include external as well as internal resources – depending on how you want to manage your operations. Internal and external can be separated.

Decide before you start.

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1. Identify corporate stakeholders in licensing operations

Identify which types of licensing transactions impact which

stakeholders

Define stakeholders’ roles (involvement ranging from information

to decision-making to performance impact)

1 2 3 4 5 6 7

4

3. Link licensing goals to corporate strategy

Define the business, technical and legal resources required to effect licensing

goals

Define the management framework for evaluating costs/ risks/ benefits of

licensing decisions using company’s financial language/criteria

1 2 3 4 5 6 7

Establish licensing operations to align with corporate IP and business plans

2. Define decision-making processes for each stakeholder

Track organization’s structural framework in terms of process – objectives, resource allocation,

evaluation steps, decision points and criteria

Systematize information flows and decision-making processes to enable

access to all stakeholders

1 2 3 4 5 6 7

Assess information flows, functional interdependency and financial impact

of decisions

Patent Licensing Transaction Corporate Capabilities Scorecard

Leader interfaces/communicates directly and regularly with

stakeholders to ensure strategic alignment, report progress, and solicit

inputs/feedback

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4. Link patents to technologies critical to market position

Link patents to products Link patents to products to market share

1 2 3 4 5 6 7

5. Develop processes to estimate patent value

Employ standard accounting practices (cost, income, discounted cash flows

and comparables approaches)

Determine value on 3 levels (to business unit, to IP operations, to non

– cash benefits to the company)

1 2 3 4 5 6 7

Develop internal consent to license core technologies under specific

parameters

Gain executive level confidence and corporate agility in strategies through

continuous licensing results and initiatives

1 2 3 4 5 6 7

5

Develop and employ strategies to license actual and around core

technologies

6. Exploit (gain) value and market strength through licensing

Identify and include cost reductions as well as new business opportunities in

value estimates

Estimate revenues to show impact on sales and earnings

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7. Develop internal practices for defining IP financial impact

Develop IP-Finance protocols to support decision-making

Include business unit and C Level leaders in the employment of IP-

financial methodologies to support decisions

1 2 3 4 5 6 7

8. Identify strengths of company portfolio

Develop defensive and offensive contributors from core and orphan

patents

Integrate plans with estimates of patent and patent family value in

dollars

1 2 3 4 5 6 7

Identify inventors, innovators and joint venture players in industry

Identify industry crossover technologies

1 2 3 4 5 6 7

6

Establish a multi-functional team to develop internal process

improvements, decision analyses, measures and metrics

Integrate with company R&D plans to define needs and leverage strengths

9. Define industry technology trajectories (competitive analysis)

Apply tools to define technology and patent landscapes and positions on

those trajectories

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9. Identify prospects based on prior licensing activity

Classify companies in industry in terms of, prior relationships, financial

strength, technological leadership, market share and geographic

proximity

Engage inventors and thought leaders (internal & external) to develop

insights into trends and outlooks

1 2 3 4 5 6 7

10. Identify assertable patents

Identify individual patents or suites of patents that may be infringed and

confirm patent status

Review file history of each patent to understand how claims have been

amended during prosecution

1 2 3 4 5 6 7

11. Identify infringers/targets

Identify competitors’ specific products that may be encompassed by the

claims

Review each target’s patent portfolio for potential counter-assertion threat

1 2 3 4 5 6 7

7

Create a reputation for sponsored research and collaborative R&D

Identify specific claims that may be infringed and determine the quality of

those claims by their clarity and detectability

Identify what companies may be incorporating the claimed technology

in their products/services

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12. Conduct technical review of accused products

Scout and preview products, promotional materials and technical manuals as displayed at tradeshows,

show rooms, websites, and customer/owner sites to identify

possible infringement

Purchase/acquire products for reverse engineering to determine how they

operate

1 2 3 4 5 6 7

13. Conduct legal review of patents to be asserted

Prepare claim charts to confirm that all elements of asserted claims are found in the

accused product, process or service; document claims interpretations and

applicability to target products; consider alternative interpretations or determine how

to address ambiguities in claim language

Compile both intrinsic and extrinsic evidentiary support needed confirm

positions/arguments

1 2 3 4 5 6 7

8

Determine type of infringement (direct, contributory or inducement)

Document product features/operations as they

correspond to claims, and provide clear and compelling evidentiary support to show that products

incorporate all elements of asserted claims

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SubmitYour Score & Feedback

You will be contacted within 2 working days for your feedback and relative positioning 3

The Taskforce’s full 39 factor assessment is useful not just for the scoring, but the accompanying insights as to the importance and application of each factor – the expertise.

The feedback is supported by some of America’s leading IP strategists and business leaders.

3 – Statictical data and validation is an on-going process and the key elements of the Annual Users’ Conference.

CONTACT: Bob Shearer at bshearer@caei.org or 972/490-9100