Collaborating and Making Money from your Data and IP
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- Derrick Shelton
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2 Collaborating and Making Money from your Data and IP - the Good, the Bad, and the Ugly November 7, 2017
3 Panelists and Speakers Toni Y. Hickey Dr. Elvir Causevic Henry Unger Beni Surpin Deputy General Counsel & Chief IP Counsel Cummins Inc. Managing Director & Co-Head of Tech+IP Advisory Practice Houlihan Lokey President Pulsiam, Inc. Partner Technology Transactions & Outsourcing Foley & Lardner LLP
4 Agenda Ways to generate revenue from IP and Data Trends towards more open IP strategies Data monetization strategies Data monetization regulatory issues Best practices for generating revenue from IP and data the good, the bad, and the ugly
5 Generating Revenue from IP Ordinary play build IP portfolio surrounding the product, gain market share and prevent copycats Offensive play collect royalties from third parties Defensive play block competitors and create freedom-to-operate space, reduce IP litigation risks Alternative play create different fields of use for the IP, monetize non-core IP and data
6 Trends Towards More Open IP Strategies What are the trends in IP and data monetization?
7 Trends Towards More Open IP Strategies More collaboration in developing and using IP Sharing technology and monetizing data Board s fiduciary duty to generate revenue from non-core IP
8 War Stories What approaches has your company/industry taken to make money from IP or data?
9 Data Monetization Strategies How can a company make money from its data?
10 Data Monetization Strategies De-identification of data Using the data to improve products, or other products in other industries Run data analytics Shared data pool among those who contributed data
11 Data Monetization Regulatory Issues What are the regulatory issues regarding data monetization that you have encountered in your industry?
12 Data Monetization Regulatory Issues Cybersecurity Privacy HIPPA Consumer protection laws Financial and credit card information
13 Best Practices
14 The Good, The Bad, And The Ugly Do a Strategic Alternatives Analysis : Identify Non-Core assets for sale, and Core assets that may be licensed outside core business field Examine options: Sell / Exclusive license / Non-exclusive license / Tech Transfer / JV G O O D Get internal approvals to dispose, and be clear about expectations and risks Create a package with critical mass (>100 patent families), be clear about any existing licenses/encumbrances Ask a reasonable price based on a solid financial valuation with realistic assumptions based on comparables Demonstrate how patents are infringed by 3 rd parties (Evidence of Use charts) really helps defensive buyers Offer for sale or license to friends and family first, then open the bidding to the entire market Collect and secure ownership/license to data for potential monetization Conduct data analytics to improve product, create efficiency, enhance profitability, and design new revenue models
15 The Good, The Bad, And The Ugly Try to monetize assets that were about to go the garbage bin B A D U G L Y Start with an aggressive and assertive non-exclusive licensing campaign through litigation shops Ask an excessive price, force deals to happen quickly Try to monetize data without complying with all the regulatory requirements Do it yourself Privateering: Take the assets related to the same underlying technology and split up into five separate subgroups Keep one and sell four subgroups to four different patent trolls Approach targets directly yourself and send the four trolls after them as well Sell off personal information and other customer data and make a real PR crisis
16 Questions/Comments
17 ATTORNEY ADVERTISEMENT. The contents of this document, current at the date of publication, are for reference purposes only and do not constitute legal advice. Where previous cases are included, prior results do not guarantee a similar outcome. Images of people may not be Foley personnel Foley & Lardner LLP
18 2017 NATIONAL DIRECTORS INSTITUTE Collaborating and Making Money from your Data and IP the Good, the Bad, and the Ugly November 7, 2017 Agenda: I. Ways of generating revenue from IP and Data a. Ordinary play b. Offensive play c. Defensive play d. Alternative play II. Trends towards more open IP strategies a. Collaboration b. Monetization of non-core IP c. IP and data sharing III. Data monetization strategies and regulatory issues a. Data de-identification b. Data analytics c. Shared data pool d. Regulations governing the use and monetization of data IV. Best practices for generating revenue from the IP and data, the good, the bad, and the ugly
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