After 14 years hosting in Vermont, ipCapital Group took its 15th annual Thought Leadership Conference on-the-road to Chicago, hosting with one of our preferred IP law firms, Marshall Gerstein. Their office on the 63rd floor of the Willis Tower provided a great space for executives, R&D and innovation leaders, IP experts, and legal professionals to collaborate on opportunities and challenges facing the IP industry and their prospective companies. Through the ¾-day conference, we had 6 speakers who presented real-life case studies and led discussions that allowed for participants to ask questions, debate, and build their networks.
Below is our summary of the presentations and discussions at the conference, followed by the conference agenda.
Led by Adam Bulakowski, Partner at ipCapital Group, and Randy Rueth, Partner at Marshall Gerstein.
Our conference started with brief welcoming remarks from the hosting firms’ partners, Adam Bulakowski from ipCapital Group and Randy Rueth from Marshall Gerstein. They facilitated an often-humorous round of introductions from each attendee, which allowed for unlikely connections to be made between participants.
Led by Saumil Mehta, the VP and AGC at Gogo LLC, with support from Mike Kraus, Director and Senior Advisor at ipCapital Group.
Saumil facilitated a discussion on how 80% of an enterprise’s value consists of intangible assets and how building a comprehensive IP program can add to that value. To start the IP program, an organization needs to answer: “how much do we value IP?” and “what are the goals of the IP program?” These goals may include:
The participants identified the objectives their IP programs are trying to achieve from the above list and briefly discussed how their respective programs do so. Saumil and Mike reviewed mechanisms used when building an IP portfolio and how to derive value from it, e.g. in joint ventures or technology transfer. They talked through the factors considered for valuing an IP portfolio and how those can be applicable to the P&L. While many in the industry are familiar with licensing and sale of assets, a deep dive was taken on the value a technology transfer deal can bring to an organization.
Led by Aditya Gottumukkala, Intellectual Asset Manager & Strategist at PPG Industries.
Aditya spoke on how a company can calculate the product premium derived from a patent portfolio. He walked us through several examples from PPG’s IP journey. He first discussed how PPG determines ROI for its patent portfolio. After reviewing the IP metrics considered, he presented the detailed mapping methodology and process used to calculate ROI and how that process is implemented across departments. His findings compared patent-protected products’ profits to non-patent-protected products. The group discussed other considerations that may be used in evaluating ROI and patent-protected sales, as well as how these steps can be implemented at their respective organizations. Aditya also illustrated how he communicates this ROI and product premiums with the executive teams which opened a conversation about how various organizations are accomplishing that feat.
Aditya then transitioned to an M&A case study reviewing how his IAM team evaluated a patent portfolio during a recent business purchase. He described ~20 metrics his team used to evaluate the portfolio’s value including but not limited to those pertaining to the portfolio itself, the technology, inflection points, and the inventor demographics. This led to a discussion about other considerations the attendees use when calculating the value of patent portfolios in a transaction.
Led by Megan Dortenzo, General IP Counsel at State Farm, with support from Randy Rueth, Partner at Marshall Gerstein.
Megan focused on about how patent analytics can align the IP portfolio with the business and technology goals. She started by discussing the why’s and how’s of patent analytics. This involved reviewing the numerous studies that can be conducted and how to best select IP software and analytics tools for use across the organization. This opened a larger conversation about the importance of various factors when identifying the strength of a patent and how important those factors were to each of attendees.
Randy elaborated on how patent attorneys are using analytics tools for claim construction, predicting which USPTO art unit would process the application, and the likeliness of a grant or successful appeal. The group asked questions about how attorneys are creatively using claim data to guide the prosecution strategy, improve claim scope and positively influence the grant rate, and how this information can be connected back to the business going forward (e.g., improving budget projections).
Led by Steve MacKenzie, Senior IP Counsel at Koch Industries.
Steve observed that IP management is one of the slowest information segments to adopt new technology - it’s one of the last domains still based primarily on paper. This slow transition has done little to address the long-standing issues around IP management and data verification including problems with the authenticity of documents, in the ownership recordal system, and efficient management of IP. Steve provided examples of how blockchain technology can be used increase data accuracy, improve IP security, and improve the problems noted above
Case studies for how organizations are using blockchain were reviewed in the following areas:
Led by Chris Yellick, VP at RPX.
Chris addressed the licensing aspect of IP monetization with a specific focus on Standard Essential Patents (SEPs). He started by reviewing how a rational licensor looks at maximizing profits and then talked about how licensees and licensors largely have the same interests. Next, he walked the group through how SEPs get created using the telecommunications industry as a case study. Chris demonstrated how SEPs are adopted through consensus building within the Standards Development Organization (SDO) which leads to IP ownership fragmentation. This fragmentation makes it more difficult for those looking to license SEPs. In response to ownership fragmentation, patent pools arose to consolidate IP rights into a one-stop license.
Led by Rudy Leschke, former Senior VP of R&D at Smucker & Ainsworth.
Rudy led a discussion around driving revenue growth with new product development, backed by the implementation of a trade secret program to protect market differentiation. He walked us through his “learning the hard way” experiences at Ainsworth that led to the emergence of an IP program. As with many other manufacturing companies, Ainsworth was using the stage gate process for its product development. Rudy walked the group through how the IP Review Committee was formed and subsequently developed questions at each step of the stage gate process to identify and manage the relevant IP. Upon identifying the IP, Ainsworth found that most of the IP would be best protected as a trade secret, necessitating development of a formal trade secret program.
Rudy described how Ainsworth developed their trade secret program. He outlined the program’s objectives (and how its objectives may apply to other companies), and the steps he took to overcome issues while creating the program. The group asked questions about the large undertaking required to maintain a trade secret program and attendees shared their solutions. The group also discussed how they manage trade secrets in their respective technology spaces.
Below is the conference agenda. Please share your thoughts on these topics at firstname.lastname@example.org.