TTO PRACTICES RECENT DEVELOPMENTS IN THE IMEC IP BUSINESS Dr. ir. Vincent Ryckaert, European Patent Attorney IMEC IP Business and Intelligence Director
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 3
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HEADCOUNT 2500 2000 PAYROLL N ON-PAYROLL 2,050 people 1500 1000 500 0 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 5
STATE-OF-THE-ART RESEARCH FACILITIES 200mm pilot line Silicon solar cell line Organic solar cell line N ERF lab N ano biolabs 300mm pilot line 450mm ready 6
RESEARCH PROGRAMS FOR FULL INDUSTRY ECO SYSTEM Logic & Memory IDM & Foundries Fablite & Fabless & OSAT Lam RESEARCH 7
BE AWARE OF NOT ALWAYS ALIGNED EVOLUTIONS 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 8
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 9
Sole ownerships Temp. exclusivity 10
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! 11
IMEC PATENT SELECTION CRITERIA DESIGNED FOR EFFICIENCY WITHIN IMEC CONTEXT
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) 14
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) 15
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) 16
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 3 rd 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 17
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). 22
IS THERE A DEMAND FOR MORE OPEN IP? RISKS FOR OPEN INNOVATION?
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 26
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 TRENDS - Development on Demand - Low Volume Manufacturing and Services H2020 TRL - Technology Transfer and/or Spin-off Creation and/or IP/KH block 29
IP MONETIZATION - EVALUATION IMEC EXTRA IP OFFERING MODEL Needed `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
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 33
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 Op seems contradictory or irreconcilable More Open Innovation and (non existing demand for) More Open act as Paradox 34
TREND OPEN INNOVATION AND DEMAND LESS OPEN IP = PARADOX Open Innovation Late R&D Life Cycle Early R&D Life Cycle Impossible Possible more --- detrimental Tendency of government: more IP; academia: more exclusivities less --- Open IP exclusive non-exclusive no IP TII CONFERENCE UTRECHT 35
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 3 rd 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 36
Shorter term, applications Time frame Longer term, many options GLOBAL R&D PLATFORMS : TO THIS: Universities Shared R&D Platforms Shared R&D Platforms Shared R&D Platforms Industry Lower Higher R&D cost Providing focus for universities and basic insight and solutions for industrial partners 37
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 42