internet of things (iot) patent strategy/r&d/monetization consulting services
TRANSCRIPT
Internet of Things (IoT) Patent Strategy/R&D/Monetization Consulting Services
O V E R V I E W
Goldman Sachs defines the IoT (Internet of Things) as the third wave of internet revolution: by connecting to the internet
billions of devices, the IoT opens up a host of new business opportunities and challenges. According to McKinsey, the IoT has
the potential to create up to $6 trillion economic value annually by 2025. TechIPm provides the expert consulting services for
the IoT patent strategy/R&D/monetization.
A C C O M P L I S H M E N T S
Consulted patent strategy to diverse industry players (Fortune 500 companies, Patent monetization firms, Law firms,
Investment firms, Research institutions) in the field of electronics, computer, IT and telecommunications
Can coordinate across multiple job functions including patent experts, engineers, and business professionals
Can provide integrated IoT strategy for patent portfolio development and exploitations for new products/services
development and monetization
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R E F E R E N C E S
Internet of Things Business &Technology & Patent Integrated Strategy
Link: http://www.slideshare.net/alexglee/internet-of-things-iot-intellectual-property-patent-information-center-3q-2015
Strategic Patent Monetization 4Q 2015
Link: http://www.slideshare.net/alexglee/strategic-patent-monetization-4q-2015
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C O N S U L T I N G S E R V I C E S
Strategic Patent Value Creation & Portfolio Development
Well tailored value creation methodology combined with patent preparation & prosecution strategy can develop new patent
portfolios for maximum ROI from existing patents. Many patent applications and newly issued patents can be further developed
for creating new values by amending and creating claims and generating family patents to encompass emerging technology and
products/services trends, market demands, and strategic exploitation goals (e.g., cross-licensing, monetization etc.).
Patents regarding client’s specific interests (e.g., machine learning including deep learning, big data & predictive analytics,
connected cars, M2M connectivity, connected health, IoT platform connectivity, smart home, smart city, IoT Security, 5G, and
FinTech including mobile payment) are reviewed for identifying new IoT patent R&D areas (“white space”) that can lead to
new products/services development through the patent landscape analysis. Specific patent R&D subject matters that can cover
the new IoT products/services further can be found from scenarios analysis. The scenarios analysis can show potential
interactions between the potential users and the new IoT products/services via the specific usage of the products/services and
behavior of the user under environments provided by the products functionality/services offerings. Thus, the scenarios analysis
can provide the specific patent R&D subject matters that cover the new IoT products/services concepts (e.g., specific benefits to
the user, products/services design, and the technology for the products/services).
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Client’s patents are reviewed for selecting patents covering the new IoT patent R&D areas. The selected IoT related patents are
categorized as application specific and standard relevant patents. The categorized IoT patents are evaluated to select good
candidates for further development.
For the application specific IoT patents, the selected patents are further analyzed to find candidates for commercial essential
patents (essential for commercial product/service implementation), patents for market platforms (dominant designs), and patents
for disruptive technologies (for future market generation potential). Existing claims are amended and additional claims are
constructed to capture the unclaimed embodiments in the candidates’ detail descriptions to reinforce the protectability (against
invalidation), enforceability (against potential infringement), and marketability (for monetization, new products/services
development etc.).
For the standard relevant IoT patents (e.g., IoT platform connectivity), the selected patents are further analyzed to find
candidates for the IoT standard essential patents (SEPs) and development as the IoT SEPs with respect to the specific standards.
For the IoT SEPs candidates, the claim-standard specification mapping is performed to generate EoU claim charts. For the
development candidates as SEPs, the model claims are constructed which can make a candidate as a IoT SEP with respect to a
specific standard. Additional claims are constructed to capture the unclaimed embodiments in the candidates’ detail
descriptions.
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Strategic Patent Monetization
Even if the Internet of Things (IoT) gets a huge attention recently, the concept of interconnected devices and connecting billions
of devices to the internet in the IoT is not new and has been researched for over 10 years. Thus, there may be a large number of
patents (that were not intended for specific IoT application at the time of invention) that can be exploited for developing new
IoT business by forming the strategically packaged patent portfolio for providing the new IoT value propositions. The
strategically packaged patent portfolio is the collection of the existing patents that can be exploited for developing new
products/services (and thus, new business) by integrating the value propositions of each patent of the portfolio. The strategically
packaged patent portfolio can be used for monetization through patent sale, patent licensing, commercialization, spin-off, patent
banking, and financing.
Client’s patents are reviewed for selecting patents for the strategically packaged patent portfolio regarding client’s specific
interests. TechIPm also provides the expert advice for strategic IoT patent acquisition for diverse clients including business
corporations, research institutes, investment organizations, and patent management firms. TechIPm can align diverse clients’
business purpose (e.g. competitive intelligence, offensive, defensive, and monetization) with strategic IoT patent acquisition
process for the strategically packaged patent portfolio regarding client’s specific interests. With the specific business goal in
mind, TechIPm can classify the field of acquisition target by the IoT market/product/service/technology. TechIPm also can
evaluate the value of acquisition target. TechIPm can decide the best sourcing method among potential options: patent search
and mining, close/open patent market place, internal auditing and patent development process. TechIPm also can coordinate the
deal/transaction process collaborating with brokers.
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TechIPm also provides consulting service for developing monetization program exploiting the IoT strategically packaged patent
portfolio. TechIPm closely works with client for developing patent monetization program until the closing of monetization
deals. TechIPm provides strategic planning in alignment with client's business goal, due diligence, strategic patent prosecution
for monetization value creation, analysis for target market, potential buyers/licensees, revenue generating potential, and
licensing enforcement (including litigation) strategy.
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Patent Evaluation for Investment
Understanding the true value of patents becomes very important step in investment decision making processes as the patents
became an important investment asset class. Investment professionals are frequently involved in patent valuation during M&A
activity, buying and selling patents for bankruptcy cases, patent secured debt financing deals, sale & license-back transactions,
securitizations using patent as the underlying asset, (long or short) stock investment for IP based business entities etc. To
understand the true value of patents, however, accurate evaluation of patents under investment consideration is need. Therefore,
accurate evaluation of patents became the essential part for investment professionals to figure out feasibility of investment
involving patents.
To evaluate of patents accurately, and thus, to get an accurate read on any investment opportunities, legal expertise in additional
to technical and business expertise are required due to legal rights nature of patents. Therefore, involvement of expert with the
technical, business, and legal expertise is crucial to evaluate patents accurately, and thus, to understand the true value of patents.
TechIPm LLC provides the expert patent evaluation services for investment professionals exploiting the technical, business, and
legal expertise and many years of experience in evaluating more than ten thousand patents relating to over hundred million
dollars of investments in patent investments.
A client’s IoT patents are reviewed to provide overall qualities and investment values in alignment with client’s investment
goal. Upon client’s request, selected patents or patent portfolio(s) are analyzed utilizing well known valuation methods (e.g.
income, market, cost method) in detail to provide ROI based on the high level evaluation.
