IP Portfolio Management, Patent Rights and Innovation

Transcription

1 IP Portfolio Management and Exploitation: IBM's Program Peter K. Wang Counsel, IP Law, IBM Canada Ltd. Sault Ste. Marie Innovation Centre IP Secrets to Success December 11, 2007, Sault

2 IP Portfolio Management: IBM's New Program A brief history of how intellectual property has been used... and how IBM has used the intellectual property in its portfolio... and how IBM has managed that portfolio... and what we may do next. 2

3 IP Portfolio Management: IBM's New Program Who What Where Why When 3

4 A Brief, Anglo-Centric History Of Intellectual Property England's letters patent grant commercial monopolies 1449 England's letters patent limited to inventions by Statute of Monopolies 1623 England's Statute of Anne grants copyright rights to authors 1710 U.S. Constitution grants patent and copyright rights to inventors and authors Canada enacts its own patent, copyright, and trade-mark Acts starting in the 19 th century 4

5 A Brief, Anglo-Centric History Of Intellectual Property England's letters patent grant commercial monopolies 1449 England's letters patent limited to inventions by Statute of Monopolies 1623 England's Statute of Anne grants copyright rights to authors 1710 U.S. Constitution grants patent and copyright rights to inventors and authors Canada enacts its own patent, copyright and trademark Acts All of these have one purpose and effect: To apply the power of the government to exclude all but the right holder from practising the intellectual property 5

6 A Brief History of Intellectual Property in IBM 6

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10 IP Evolution in IBM Exclude Intellectual property is used to prevent others from competing with patented products. Hollerith tabulating machine 1896 (2) 10

11 IP Evolution in IBM Exclude Intellectual property is used to prevent others from competing with patented products. Automatic horizontal feed sorter 1896 (2) 1900s (33) 11

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14 IP Evolution in IBM Exclude Intellectual property is used to prevent others from competing with patented products. Vertical card sorter 1896 (2) 1900s (33) 1910s (92) 14

15 IP Evolution in IBM Exclude Intellectual property is used to prevent others from competing with patented products. Ticketograph job ticket printer 1896 (2) 1900s (33) 1910s (92) 1920s (266) 15

16 IP Evolution in IBM Exclude Intellectual property is used to prevent others from competing with patented products. IBM 801 check clearing machine 1896 (2) 1900s (33) 1910s (92) 1920s (266) 1930s (1081) 16

17 IP Evolution in IBM Exclude Intellectual property is used to prevent others from competing with patented products. Automatic Sequence Controlled Calculator 1896 (2) 1900s (33) 1910s (92) 1920s (266) 1930s (1081) 1940s (996) 17

18 IP Evolution in IBM Exclude Intellectual property is used to prevent others from competing with patented products Magnetic tape drive (2) 1900s (33) 1910s (92) 1920s (266) 1930s (1081) 1940s (996) 1950s (5K) 18

19 IP Evolution in IBM Exclude, Exchange Intellectual property is cross-licensed to others in exchange for inbound license rights. System 360 mainframe 1896 (2) 1900s (33) 1910s (92) 1920s (266) 1930s (1081) 1940s (996) 1950s (5K) 1960s (24K) 19

20 IP Evolution in IBM Exclude, Exchange Others are using IBM technology and IP. Patent cross-licensing grows into an established practice in the IT industry. IBM 3340 "Winchester" disk drive 1896 (2) 1900s (33) 1910s (92) 1920s (266) 1930s (1081) 1940s (996) 1950s (5K) 1960s (24K) 1970s (29K) 20

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22 IP Evolution in IBM Exclude, Exchange Many others are using IBM intellectual property anyway. Licensing for revenue begins. IBM PC DB2 relational database DB (2) 1900s (33) 1910s (92) 1920s (266) 1930s (1081) 1940s (996) 1950s (5K) 1960s (24K) 1970s (29K) 1980s (32K) 22

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24 IP Evolution in IBM Exclude, Exchange IP licensing is an established business practice in IBM. Patent leadership suggests untapped value in IP. Lotus Development Deep Blue 1896 (2) 1900s (33) 1910s (92) 1920s (266) 1930s (1081) 1940s (996) 1950s (5K) 1960s (24K) 1970s (29K) 1980s (32K) 1990s (47K) 24

25 IP Evolution in IBM Exclude, Exchange, Encourage IBM recovers from its 1990's near-death experience. Services and consulting are added to the value proposition we offer our clients. Open source software emerges as a collaborative development process (2) 1900s (33) 1910s (92) 1920s (266) 1930s (1081) 1940s (996) 1950s (5K) 1960s (24K) 1970s (29K) 1980s (32K) 1990s (47K) 2000s (50Ks) 25

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27 IP Evolution in IBM Exclude, Exchange, Encourage Innovative uses of IP are pursued. Trademark licenses Linux 1896 (2) 1900s (33) 1910s (92) 1920s (266) 1930s (1081) 1940s (996) 1950s (5K) 1960s (24K) 1970s (29K) 1980s (32K) 1990s (47K) 2000s (50Ks)

28 IBM s Pledges Its Patents to Encourage Collaborative Software Development 28

29 ... and Others Follow Suit Nokia announces patent support to the Linux Kernel May 25, 2005 Espoo, Finland - Nokia Corporation announced today that it allows all its patents to be used in the further development of the Linux Kernel. Nokia believes that open source software communities, like open standards, foster innovation and make an important contribution to the creation and rapid adaptation of technologies. Unlike other open standards, however, many open source software projects rely only on copyright licenses that often do not clarify patent issues. Nokia believes that the investment made by so many individuals and companies in creating and developing the Linux Kernel and other open source software deserve a framework of certainty. While Nokia welcomes the recent announcements in the industry where companies have stated express non-assertions with regard to some of their patents, it also believes that the situation would substantially improve, if more supporters of the Linux Kernel and other open source software would take a clear public position on this issue. 29

30 ... and Others Computer Associates International, Inc.'s Statement of Non-Assertion of Named Patents Against OSS Sep.7 Computer Associates is committed to promoting innovation for the benefit of our customers and for the overall growth and advancement of the information technology field. Computer Associates takes many actions to promote innovation. Today, we are announcing a new innovation initiative. We are pledging the free use of 14 of our U.S. patents, as well as all counterparts of these patents issued in other countries, in the development, distribution, and use of open source software. We believe that the open source community has been at the forefront of innovation and we are taking this action to encourage additional innovation for open platforms. The following is the text of our pledge. It is our intent that this pledge be legally binding and enforceable by any open source software developer, distributor, or user who uses one or more of the 14 listed U.S. patents and/or the counterparts of these patents issued in other countries. 30

31 IP Evolution in IBM Exclude, Exchange, Encourage, Enhance More innovative uses of IP are pursued. Action toward patent reform begins. IP Marketplace IBM Patent Policy 1896 (2) 1900s (33) 1910s (92) 1920s (266) 1930s (1081) 1940s (996) 1950s (5K) 1960s (24K) 1970s (29K) 1980s (32K) 1990s (47K) 2000s (50Ks)

32 Building a New IP Marketplace First of a kind wiki discussion forum produces de facto manifesto for worldwide IP marketplace that reflects best thinking of 50 business, academic and government leaders. Attorneys & legal experts Economists Innovation leaders Academics Government officials Conclusions and recommendations published 32

33 IBM Corporate Patent Policy Patent applicants are responsible for the quality and clarity of their patent applications. Patent applications should be available for public examination and comment. Patent ownership should be transparent and easily discernible. Pure business methods without technical merit should not be patentable. Armonk, NY, September 26,

34 IBM Patent Reform Proposals KSR Amicus Brief "IBM proposes a different test for nonobviousness that is consistent with the Patent Act and existing precedents, is clear and workable, and strikes a balance between all of the various approaches heretofore suggested to the Court: retain the basic teaching-suggestionmotivation test, but apply a rebuttable presumption that elements found in multiple prior art references would be combined by the skilled artisan, when all of the elements are found in references within the 'analogous art.'" "[T]he applicant and public will be better positioned to understand the patent s scope without resort to litigation, which will advance the intent of the patent system to promote innovation." August,

35 IP Evolution in IBM Exclude, Exchange, Encourage, Enhance Advocacy for IP reform continues Peer to Patent project 1896 (2) 1900s (33) 1910s (92) 1920s (266) 1930s (1081) 1940s (996) 1950s (5K) 1960s (24K) 1970s (29K) 1980s (32K) 1990s (47K) 2000s (50Ks)

36 Peer to Patent Collaborative Prior Art Review 36

37 Peer to Patent Collaborative Prior Art Review 37

38 IBM Patent Reform Proposals KSR Result 38

39 IP Evolution in IBM Exchange, Exchange, Encourage, Enhance,... Find new opportunities to deliver value to the client through innovative uses of IP rights and processes (2) 1900s (33) 1910s (92) 1920s (266) 1930s (1081) 1940s (996) 1950s (5K) 1960s (24K) 1970s (29K) 1980s (32K) 1990s (47K) 2000s (50Ks)

40 IP Portfolio Management: IBM's New Program How 40

41 IBM As An IP Leader A patent machine, fed by and feeding a global corporate patent culture "IBM [creates] patents like God waters flowers. It s what they do." (Mark Pilgrim, ex-ibmer)

42 IBM As An IP Leader A patent machine, fed by and feeding a global corporate patent culture "IBM [creates] patents like God waters flowers. It s what they do." (Mark Pilgrim, ex-ibmer). BlueWashing as a starting point

43 Fostering a Climate for Innovation Jai Menon IBM Fellow, VP Technical Strategy Vice-Chair Academy of Technology IBM Corporation

44 What Is Innovation? Significant value created for society or business: -Creates new industries and markets -Spurs productivity and economic growth -Fuels wealth creation and profits -Generates high-value, higher-paying jobs -Raises standard of living Innovation has to be useful as well as unique Requires looking beyond today s problems But why is this so important now? 44

45 The World is Changing Rapidly Globalization and commoditization are unstoppable forces New challengers: AP, Eastern Europe, LA, China, Brazil, Russia, India GDP growth forecast: A/P 4.9%, US 3.6%, EU 1.3%. Services dominate GDP. Outsourcing: threat or opportunity More than a billion Internet users projected by 2007 Innovation is what is going to differentiate businesses and national economies 45

46 The Nature of Innovation Itself is Changing It s occurring more rapidly It s more open, global and requires wider collaboration across multiple disciplines, specialties and borders often involving cultural diversity and language Concepts of intellectual property ownership are giving way to a more enlightened emphasis on intellectual capital, sharing and collaboration. It requires a broader view of the elements a company should look for in a partner 46

47 Innovation That Matters Collaboration Stimulates Innovation IBM shares patents, inventions, processes, and know-how Open Source Communities Open Standards Committees Global Innovation Outlook with Government, University, and Business Leaders Open Patents 47

48 Innovation That Matters More Than Invention More Than Gadgets and Technologies. Products and Technologies Services and Know-how Business Processes Business Models Societal and Policy Innovation Managing an Innovation Culture 48

49 Innovation That Matters IBM Innovation Products and Technologies Services, Processes, Business Models Copper Deep Blue On Demand Business Transformation Power.org Silicon Germanium Pervasive Computing Cell BladeCenter Autonomic Computing Engineering and Technology Services Societal, Policy, and Managing Innovation Life Science Services Science Learning Solutions National Innovation Initiative 49

50 Innovation That Matters How Do You Create an Innovation Culture? The development cycle for Technology Products Services Business processes Business Models begins with ideas! Ideas need to be developed. Value needs to be determined And then moved quickly to market You need a repeatable process for ensuring innovation is incorporated into every aspect of your business. 50

51 Innovation That Matters Attributes of an Innovative Corporation Global research by IBM Business Consulting Services showed that the fundamental characteristics of innovative companies are, in order of importance: 51 An active flow of ideas; Well defined processes for realizing commercial success at any level; High degree of management trust; Explicit idea management processes that people adhere to; People take responsibility for implementing their own ideas; Taking a balanced view of risk taking; Managers have time to explore and test new ideas; Managers involve others in developing ideas into actions; Continuous envisioning of the future based on intimate market knowledge; Do not rely on the board alone for significant new ideas.

52 Innovation That Matters Innovation Management ThinkPlace Single, consistent global management system for ideas Creating a culture in which collaboration and interaction across silos is an essential element of innovation Surfacing innovative solutions to specific business challenges Rewarding innovators and innovative ideas in tangible, visible ways 52

53 Innovation That Matters Innovation Catalysts Influencers who Seek ways to identify opportunities for innovation on behalf of defined communities and groups Review program submissions and advance applicable ideas for management review Assist authors of promising submissions Manage review of ideas that reach automatic thresholds Identify and advance strong ideas that have been overlooked Act as Boundary Spanners Provide feedback to project team 53

54 Innovation That Matters Technical Adoption Program (TAP) brings together innovators & early adopters to evaluate new technologies for IBM INNOVATORS EARLY ADOPTERS TAP Supported to realize value from their efforts Provided with an early adopter community IBM s IT Environment Access to a single place to discover new technology Participate in an early adopter community Products Offerings Demonstrates business value to transition to products, assets & offerings 54

55 Innovation That Matters First of a Kind (FOAK) Program Process A Collaboration Between IBM Research, Sales & Distribution and IBM s Clients IBM sales teams help their clients by joining industry experts and IBM researchers to apply leading edge technology to solve clients unique, complex business problems. Projects move more quickly into the investment stream because they are jointly funded by IBM Research and the Global Industries. IBM brand development teams validate the Research technology in a client s environment and help to clarify clients requirements back to Research. Reusable assets may become products. The program is measured by the assets created and transferred from Research to IBM brand development teams, client reference and business results Research Retail Analytics and CRM Project Reduced marketing costs by 20% while improving response rates by 10% Achieved 80% accuracy rate for predicting eventual customer value Helped improve customer sat rate by 10% Insurance Business Process Integration Project 50%-60% reduction in work effort 55%-65% reduction in project duration Smart Surveillance for Intelligent Oil Fields Breakthrough in discovery of anomalous patterns Accurately demonstrated sand production prediction 23 days in advance during trial FOAK Client S&D 55

56 Innovation That Matters Global Technology & Global Innovation Outlook Tools to predict technology and business trends Global Technology Outlook 56

57 IBM: A History of Innovation 57

58 Global Industry Expertise Innovation That Matters Global Open Collaborative 70,000 business and industry consultants 170,000 technology experts 45,000 Patents 90,000 Business Partners 450 University Partnerships Multi-disciplinary Open Standards Bodies 58

59 IBM As An IP Leader A patent machine, fed by and feeding a corporate, global patent culture "IBM [creates] patents like God waters flowers. It s what they do." (Mark Pilgrim, ex-ibmer). Close coupling between IP Law, research, development, sales, negotiation, and delivery teams 1896 (2) 1900s (33) 1910s (92) 1920s (266) 1930s (1081) 1940s (996) 1950s (5K) 1960s (24K) 1970s (29K) 1980s (32K) 1990s (47K) 2000s (50Ks)

60 IBM As An IP Leader A patent machine, fed by and feeding a corporate, global patent culture "IBM [creates] patents like God waters flowers. It s what they do." (Mark Pilgrim, ex-ibmer). Close coupling between IP Law, research, development, sales, negotiation, and delivery teams Awards and promotions for inventors 1896 (2) 1900s (33) 1910s (92) 1920s (266) 1930s (1081) 1940s (996) 1950s (5K) 1960s (24K) 1970s (29K) 1980s (32K) 1990s (47K) 2000s (50Ks)

61 IBM As An IP Leader A patent machine, fed by and feeding a corporate, global patent culture "IBM [creates] patents like God waters flowers. It s what they do." (Mark Pilgrim, ex-ibmer). Close coupling between IP Law, research, development, sales, negotiation, and delivery teams Awards and promotions for inventors Patent Portfolio Managers to nurture, prune and harvest the portfolio 1896 (2) 1900s (33) 1910s (92) 1920s (266) 1930s (1081) 1940s (996) 1950s (5K) 1960s (24K) 1970s (29K) 1980s (32K) 1990s (47K) 2000s (50Ks)

62 IBM As An IP Leader A patent machine, fed by and feeding a corporate, global patent culture "IBM [creates] patents like God waters flowers. It s what they do." (Mark Pilgrim, ex-ibmer). Close coupling between IP Law, research, development, sales, negotiation, and delivery teams Awards and promotions for inventors Patent Portfolio Managers to nurture, prune and harvest the portfolio A high performing, imaginative IP Law department that will (2) 1900s (33) 1910s (92) 1920s (266) 1930s (1081) 1940s (996) 1950s (5K) 1960s (24K) 1970s (29K) 1980s (32K) 1990s (47K) 2000s (50Ks)

63 IBM As An IP Leader A patent machine, fed by and feeding a corporate, global patent culture "IBM [creates] patents like God waters flowers. It s what they do." (Mark Pilgrim, ex-ibmer). Close coupling between IP Law, research, development, sales, negotiation, and delivery teams Awards and promotions for inventors Patent Portfolio Managers to nurture, prune and harvest the portfolio A high performing, imaginative IP Law department that will... Deliver Results That The Client Values 1896 (2) 1900s (33) 1910s (92) 1920s (266) 1930s (1081) 1940s (996) 1950s (5K) 1960s (24K) 1970s (29K) 1980s (32K) 1990s (47K) 2000s (50Ks)

64 What to expect from your IP law team Master the basics IP protection & enforcement

65 What to expect from your IP law team Master the basics IP protection & enforcement Deliver for you as the client results that make a valued difference

66 What to expect from your IP law team Master the basics IP protection & enforcement Deliver for your client results that make a valued difference Innovate imagine, interpret, implement

67 Thank you. 67

68 Thanks to... "History of IBM" exhibit of the IBM Archives IBM Intellectual Property Law Department 68