IP VALUATION IN THE ELECTRONICS INDUSTRY

Transcription

1 IP VALUATION IN THE ELECTRONICS INDUSTRY KATRIEN MEUWIS KATHLEEN DE BELDER IP BUSINESS & INTELLIGENCE PUBLIC

2 World-leading nanoelectronics research FULL ECO SYSTEM UNIVERSITIES EUROPE IMEC GOVERNMENT INDUSTRY

3 HOW IS VALUATION DONE? Fundamen tal Applied research research Basic projects research Programs Research Joint on developmdemand Developm ent ent on projects demand LVM and services IP licensing Spin-offs Tech Transfer Patent sale Funded Projects University/acade mia involved Bilateral R&D Industry involved IP monetization Ideas Innovation Know-how Involvement and creation of IPR: trade secrets, know-how, patents, copyright 3

4 HOW IS VALUATION DONE? Early lifecycle Cost-based methods Historic cost cost as of valuation date Late lifecycle Market based valuation Comparable sales - 25% ( or adapted)rule Intermediate TRL levels Technology is licensed as a package Know-How is important resident! Patents dynamic license for exploitation of the results of the programs Non -exclusive 4

5 HOW IS VALUATION DONE? EXAMPLES PROGRAM IN-LICENSING In licensing a patent portfolio from a program partner: 11 patents Way of working Subject matter of patents : circuit, device, methods Status: Granted or not? Published? Not filed yet? Check countries, applicants (sole, joint), claim scope patent valuation tool for imec patents compare! Type of license (exclusive, non-exclusive, field of use,...) Current value future value Conclusion: very low value! Due to non- filed patents -> Know-How Payment in kind 5

6 HOW IS VALUATION DONE? EXAMPLES TECHNOLOGY TRANSFER OF A TECHNOLOGY DEVELOPED AT IMEC Patent portfolio related to MEMS technology Broad portfolio Know-how Patents Technology related Device Developed over > 10 years (early TRL later TRL applications) 3 methods Cost based method: huge work! Value attribution to a patent \ ratio know-how vs patent Market value Conclusion : same range! 6

7 MONETIZATION EXAMPLES

8 MONETIZATION SALE OF `OLD PATENTS Considerations Securing eco-system value versus risks/liabilities// parties to consider which intermediaries to select /cost versus risks/liabilities Business practice policy avoiding submarine type approach Pre-offering to partners? 8

9 MONETIZATION EXAMPLES Way of working Selecting IP stacks Regularly review of patent portfolio: check relevance, usage, age... Review of encumbrances Valuation of patent portfolio (via valuation tool) Approach potential buyers directly or via broker / US patent 9

10 MONETIZATION EXAMPLES: TOOL 10

11 MONETIZATION EXAMPLES: VALUATION Infringement evidenced Industry standard Broad claims with tight prosecution and best way to do it Foreign counterparts Citations, and who is citing (companies - markets) 11

12 MONETIZATION EXAMPLES: BUYERS Offering Preparation: Prepare offering according to business/sales model Select monetization model Negotiations: price details (cash or shares, upfront or royalty s), agreement on sale/(exclusive or not) license/back-license/encumbrances Buyer Due Diligence: Respond to buyer due diligence requests Closing: Execute Patent Purchase Agreement and assignment, Transfer any physical documents to buyer as required 12

13 MONETIZATION EXAMPLES: THE EATING PART 1 Claim A method of encoding at least a part of a video frame with respect to a reference video frame comprising the steps of : dividing said part of said video frame into blocks; performing motion estimation of a block with respect to said reference video frame; thereafter performing motion compensation of said block; thereafter coding of said block; and said steps are performed in said order on another block of said part of said video frame. 13

14 MONETIZATION EXAMPLES: THE EATING PART 2 Wireless portfolio, families related to: EP : High speed wireless OFDM transceiver modem EP : A method and apparatus for multi user transmission EP : Method for multi-user MIMO transmission and apparatus suited therefore EP : CDMA transceiver techniques for multiple input multiple output wireless communications 14

15 MONETIZATION EXAMPLES Lessons learnt: + selling of patents: 6 families - more not sold Reasons: not granted, conceptual, hard to detect infringement, researchers gone Lots of work! do your homework 15

16 PUBLIC