Secure, boost and leverage your Intellectual Property value!

Due Diligence webinar, June 2016 Empower your Intellectual Property Secure, boost and leverage your Intellectual Property value! Speakers Cyril Mavré Sacha Lafaurie

Invention Protection Asset Questel WHAT Software Find Technology Mitigate Risks Sustain Advantage Consulting WHEN elearning Research & development Product development Market development

Part 1 Understand the Value and Importance of Intellectual Property Part 2 Manage Intellectual Property across Technological Silos

Understand the Value and Importance of Intellectual Property 1 Reduce Reduce risks with the freedom to operate 2 Ensure Ensure future market share 3 Reassure Reassure investors and increase value

Reduce risks associated with the freedom to operate. Almost launched product from a start-up 2 4 6 1 US8XXXXX Stratasys (Aggressive Competitor) 5 The double extruder implemented in XXXX 3 1 2 3 A device comprising: a first motor having a first axis extending in a first direction; a second motor having a second axis extending in a second direction opposite the first direction, the second axis parallel to and overlapping with the first axis; a first gear rigidly coupled to the first axis, the first gear having a first concave, toothed portion around a first perimeter thereof; Understand Reduce Ensure Reassure 4 5 6 a second gear rigidly coupled to the second axis at a first position axially offset from the first gear, the second gear having a second concave, toothed portion around a second perimeter thereof; a first bearing rotatably coupled to the first axis at a second position axially aligned with the second gear of the second axis, thereby forming a channel between the first bearing and the second gear to receive and move a first filament by rotation of the second motor; and a second bearing rotatably coupled to the second axis at a third position axially aligned with the first gear of the first axis, thereby forming a second channel between the second bearing and the first gear to receive and move a second filament by rotation of the first motor.

Ensure that a larger company cannot copy your idea. Understand Reduce Ensure Reassure Could Apple be Working on a GoPro Killer? Sources : http://www.cnetfrance.fr/news/brevet-obtenu-apple-provoque-la-panique-dans-le-monde-des-action-cam-gopro-39812865.htm

Reassure investors. Probability of start-up success between 2007 and 2012. Understand Reduce Ensure Reassure Patents are also valuable because they indicate future success.

Reassure investors. X 3,1 X 3,5 X 4,1 X 5,2 Predictive power of different patent indicators (probability of success). Understand Reduce Ensure Reassure The management of IP policy provides powerful strategic leverage for any VC-backed start-up in achieving economic success. Source: Can patent data predict the success of start-ups?, MINES ParisTech & France Brevets, Juin 2014

Manage Intellectual Property across Technological Silos 1 Internal External SWOT 2 Define Implement 3 Follow Watch Adapt

Placing technology fields into technological silos. Material Electrodes Shape Collector Electrolyte Batterybuilding coupling

Analyze your patent portfolio using technological silos. Patents (validity) Electrodes Material Shape Patent 1 Patent 2 Collector No patent, but bought Electrolyte No patent Batterybuilding coupling Strong asset / opportunity Potential asset / opportunity Potential threat Strong threat

Analyze your patent portfolio using technological silos. Patents (validity) Electrodes Material Shape Patent 1 Patent 2 Collector Electrolyte No patent Batterybuilding coupling Strong asset / opportunity Potential asset / opportunity Potential threat Bypassing possibilities Complicated Several possibilities Strong threat Not applicable Infringement detection Impossible Easy

Analyze your patent portfolio using technological silos. Patents (validity) Electrodes Material Shape Patent 1 Patent 2 Collector Electrolyte Battery-building coupling No patent Strong asset / opportunity Potential asset / opportunity Potential threat Bypassing possibilities Complicated Several possibilities Strong threat Not applicable Infringement detection Impossible Easy Realpatents protection Null Low No

Gain knowledge along technological silos. Real patents protection Electrodes Material Shape Null Low Collector Electrolyte No Batterybuilding coupling Strong asset / opportunity Potential asset / opportunity Potential threat Strong threat Know-how Strong know-how but mainly published in the patent description Strong know-how but easily retrievable by reverse engineering Strong know-how No

Other IP assets, Trademarks, software and designs. Real patents protection Electrodes Material Shape Null Low Collector Electrolyte No Batterybuilding coupling Know-how Strong know-how but mainly published in the patent description Strong know-how but easily retrievable by reverse engineering Strong know-how No Software Designs No Basic software Trademarks Company name registered No product trademark

Performing a macro analysis for each technological silo. Number of patent applications Densifying IP landscape Priority year Filing dynamics Future market territories for the start-up are already encumbered First market territories for the start-up are low targets by competitors Extension strategies Majors Assignees Several oppositions exist against the granting of the patent First infringement litigations are emerging Agressiveness Analyze opportunities and threats using a competitive IP landscape.

Performing a micro analysis of relevant patents in each technological silo. Interesting pending application which could reinforce the portfolio 2 granted (US, Europe) patent families potentially blocking for the current technology Example for Electrode material Analyze opportunities and threats using a competitive IP landscape.

Synthesis data for each technological silo. Strong asset / opportunity Potential asset / opportunity Potential threat Freedom -to- Operate Material Potentially 2 blocking patents X from a competitor Electrodes Shape No blocking patent identified Collector Bought element Many different suppliers identified Electrolyte Several potentially blocking patents, still pending Batterybuilding coupling No blocking patent identified Complicated infringement detection Strong threat Opportunities and threats in a competitive IP landscape.

Compose a SWOT analysis. STRENGTHS All technological choices not completed The by-passing of blocked patents is still feasible Important expertiseon electrolytes WEAKNESSES IP assets do not really protect the business model: Weak patents Real expertise on only 1 technological silo No real IP assets are complementarity OPPORTUNITIES THREATS Only 2 competitors own a very strong patent portfolio able to block the start-up Some interesting patents align with the start-up s business model and are owned by research institutes Reinforcement possibilities Risk of third-party patent dominance is lowered for Electrode material and Electrolyte silos, as infringement is difficult to detect A large part of the information is either published or retrievable by simple reverse engineering Several main threats in the environment: Emerging IP aggressiveness Increasingly dense and complex landscape Cumbersome IP landscape 2 potentially blocking patents from a competitor

Define the IP strategy. Real patents protection Know-how Electrodes Material Shape Null Low - Strong know-how - Strong know-how - but mainly published in the patent - but easily retrievable by reverse description engineering Electrolyte Strong know-how No Battery-building coupling No Real patents protection Know-how Electrodes Material Shape Null Low - Strong know-how - Strong know-how - but mainly published in the patent - but easily retrievable by reverse description engineering Electrolyte Strong know-how No Battery-building coupling No Software Designs No Basic software Software Designs No Basic software Trademarks - Company name registered - No product trademark Trademarks - Company name registered - No product trademark Freedom-to-operate Potentially blocking patent X from a competitor No blocking patent identified Several potentially blocking patents, still pending - No blocking patent identified - Complicated infringement detection Freedom-to-operate Potentially blocking patent X from a competitor No blocking patent identified Several potentially blocking patents, still pending - No blocking patent identified - Complicated infringement detection Situation T0 Situation T0 + X years IP roadmap definition Company Development IP Objectives - Technological advances against competitors - European, then US market - 2 year time-to-market - VC financing - Sustain competitive advantages by: - Avoiding copycats - Protecting the technological advance - Help accelerate the product development - Reduce risk regarding FTO and reassure investors - Potentially generate cash flow

Implement an IP Roadmap. Maximize benefits Reduce risks P1 L1 P Patent In-licensing Partnership Licensing-out action O-L L1 Take a license from interesting patent from Battelle Design-around an actor IP protection O-L Licensing-out Patent Watch Abandon patent rights P1 Design around or invalidate Lockheed s patents 2016 Short term Long term Sign a partnership with a leading innovator P B3 B3 File a patent on electrode shape Extend patent rights to relevant market Active patent watch to implement B4 File a patent on Battery-Building coupling B5 Identify white spaces to file a new patent Accelerate development Sustain competitive advantages

Follow the action plan, watch the environment and adapt your IP strategy accordingly. Implement Follow-up Indicators Watch the IP environment regarding: - Freedom-to-Operate - Actualization of the IP competitive landscape all throughout the project Adapt your IP strategy to: - Defeat objectives - Evolve with environmental changes