Optimus IBC Portfolio Management

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2 Managing the People Tony Wray

3 The 4 commandments of Strategic Patent Portfolio Management: 1. Thou shalt know what you have 2. Thou shalt identify what you need 3. Thou shalt acquire what you need 4. Thou shalt divest what you don't need (to provide resources to support commandments 1,2,3) Reproduced with permission of Steven Parmelee, SGParm@Fitcheven.com

4 Who are the people? How are decisions made? How to communicate Portfolio Strategy? How to decide on In-house vs. Outsourcing? How to encourage innovation? How to manage inventors (and others)?

5 The People? Introduce the concept of: An Integrated Portfolio Management Team

6 Integrated Portfolio Management Team (9) Patent Attorney(s) (8) Technologists (2) Senior Management (1) Portfolio Manager (3) Product Engineering (4) Patent Licensing PM Database (7) Finance (6) Business Strategy (5) Marketing

7 People Skill Set Cross-section of personalities Optimists vs. Pessimists Free-thinkers vs. Logical thinkers Patent Experienced vs. Patent Novices Range of technology backgrounds Visionaries

8 Role of the Integrated PM Team Formulating PM strategy Communicating PM Strategy Instigating PM projects/sub-groups

9 Communication of PM Strategy (9a) IP Management (9) Patent Attorney(s) (2a) Board of Directors (2) Senior Management (3) Product Engineering (3a) Engineering Director/groups (8) Technologists (1) Portfolio Manager (4) Patent Licensing Team (8a) Technical Experts (7) Finance (6) Business Strategy (5) Marketing

10 Sub-groups of the Integrated PM Team Ad hoc Subgroups Patent Filing Decisions Foreign Filing Portfolio Review Annuity Reviews Patent Prosecution

11 Dynamic Membership of Sub-groups Ad hoc Subgroups Patent Filing Decisions (1), (3) to (6), (8), (9) Portfolio Review (1), (4), (8), (9) at least Annuity Reviews (1), (3) to (5), (7) to (9) Foreign Filing (1), (2), (4) to (9) Patent Prosecution (1), (3) to (6), (8), (9)

12 Ad-hoc Sub-groups Innovation Encouragement Competitor Profiling Decision Criteria/ Priorities In-house vs. Outsourcing decisions

13 Innovation Encouragement (1) Portfolio/Product-driven invention generation: Brainstorming Advanced Inventing Product Reviews

14 Invention Generation Patent Filing Decisions Foreign Filing Portfolio Review Annuity Reviews Patent Prosecution

15 Innovation Encouragement (2) Inventor Incentives: Financial Incentives Peer Recognition Organisation Award schemes

16 Innovation Encouragement (3) Establish Best Practices: Educate & Communicate Attorney sign-off Inventor Notebooks Simplify systems Open decisions with feedback

17 Ad hoc Sub-groups Invention Encouragement Competitor Profiling Decision Criteria/ Priorities Outsourcing Policy

18 Outsourcing Policy Possible outsourced functions: Invention identification Invention generation Patent Drafting Patent Prosecution Patent Administration/docketing Portfolio Management

19 In-House? Pro s Easier to integrate Better Control of costs, work, priorities, etc. Flexibility Access to business Access to technology Con s Need the skill set Internal Bureaucracy, real-time interrupts Inflexibility! Tunnel Vision Infrastructure support

20 Outsourcing? Pro s Act on instruction Ability to switch Quality of work should be paramount concern Access to specialists Easier budget control Con s Reactive not Proactive Can they add value? Lack of understanding of client s business Not technology savvy Cost

21 In-house vs. Outsourcing In an ideal world skilled people (Attorneys, admin, etc.), no cost constraints, infrastructure support, In-house!

22 In-house vs. Outsourcing? In the real world for most businesses combination of In-house & Outsourcing

23 Successful Portfolio Management requires Portfolio Management Strategy Business Strategy INTEGRATION Technology roadmaps