The document discusses patent management along the technology life cycle. It identifies five stages in the technology life cycle: explore, generate, protect, optimize, and decline. It describes the goals and activities companies should undertake at each stage, such as collecting information and avoiding risks in the explore stage, developing patent clusters in the protect stage, and determining which patents are no longer needed in the decline stage. Effective patent management requires systems for technology scouting, competitor monitoring, and portfolio auditing, as well as a decision-making committee.
2. Authors
2
Institute for Technology Management with
Transfer Center for Technology Management
A spin- off company
BCG Management
Advisory Group
Oliver Gassmann
• Professor
• Director of Transfer Center
Nicole Ziegler
• Doctoral Student
Frauke Ruether
• Associate Researcher
• Visiting Scholar in IP Research
Institute, Australia
Martin A. Bader
• Patent Attorney
• Managing Partner
• E.E. Master degree
3. Purpose of the Essay
3
Essays before…
After the application, and then?
Pushing
Strategic IP
Investor’s
Activities
Screening
Techniques
Checklist
Patent
Prosecution
構想 資金 檢索 文件 實施
4. Purpose of IP Management
4
Value Creation
Risk Control
Revenue Stream
Construct the uniqueness of your
competencies…
Circumvention and avoiding risk of
infringement…
Trough litigation, licensing, and even
by trade…
6. Along Its Life Cycle?
6
Observation
Induction
Technology
Life Cycle
The firm’s patent management is strongly
oriented to the life cycle of technologies
starting with the discovery of ideas until a
product is discarded from the firm’s portfolio
8. Explore
8
蒐集情資,避開風險
• Patentability of this technology?
• Potential Target of cross licensing?
Cross- industry patent research
• Construct search profiles
• Monthly monitoring with databases
• Potentially relevant literature citations
400- 500
• Potentially relevant patent citations
70- 120
A Filter Group of R&D project leaders,
PMs and internal experts:
• Relevant literature
30- 50
• Relevant patent citations
10- 25
10%-20%
info remain
9. Generate
9
延伸能耐,辨別長短
• What’s my core competencies?
• On my own or though cooperation?
Find out company’s advantages
Patent competitive
area/ Publish non-
competitive area
• Development network
• Cross- licensing, in- licensing
• Early stage partnership
• Cost- benefit ratio ensures
appealing patent portfolios
10. Protect
10
專利圈地,步步為營
• What are those patentable items?
• How to create patent fences?
Develop patent clusters Core invention
Back- up compounds
Follow- on
• 3- 30
Polymorphs
Salts
Alternative formula
• 1- 10
• 1- 10
Prepare to block
Substitute
11. Optimize
11
效益取捨,盯緊對手
• What are those items to be renewed?
• What are potential substitutes?
• What are other potential applicable areas?
Cost- benefit principle & Monitor
• Review territorial coverage
• Active competitive intelligence
• File deterrent patents
12. Decline
12
取捨之間,再創利潤
• How to define those not needed?
• What can I do with the useless?
Divestment strategy
IP review
board
• supported by R&D and
managers, evaluate and
decide
buyers?
Litigations?
Out- license?
Or just abandon?
13. Strategy and Resources Matrix
13
Explore
Generate
Protect
Optimize
Decline
3 dimensions of decision
• Freedom to operate
• Differentiation from competitors
• External patent exploitation
Strength of internal resources
StrategicImpact