Patentability Strategy and

Patent Management

June 2014

©TECNALIA. Todos los derechos reservados. Pág. 2

TECNALIA is a private organization and the first market oriented applied reasearch center in Spain, with circa 1.500 people, turning 110 millones euros in sales and with over 4.000 clientes worldwide.

Tecnalia Research & Innovation

Organized in 7 Business Lines + Tecnalia Ventures

With Global Presence

What we do? “Accelerate the incubation of business

opportunities based on disruptive technologies

to generate a deal-flow of diversification and

growth opportunities to companies”

Unique Tecnalia’s ecosystem

Valley of Death

Proof-of-concept funds

Public funding

Private investment

Problem & needs

Start up business

Shape bright ideas into attractive investments

Disruptive technologies

Entrepreneurs Investors

Figures 2014

Business opportunities in the accelerator incubator program

Funds 2014 available

Patents families in portfolio

46 38% 91

5,5M€ Tecnalia’s 2014 funding for proof of concept

New spin off created in the last 9 months

4 +300

Patent applications and granted patents

Incubation acceleration in Tecnalia

IP

protection

Validation

strategy

Pitch &

Business

Plan

Risk

assessment

Identification

of business

opportunities

Smart

Capital /

team

New tech-

based

business

Market Projects (Div.)

Wake-up (IS div)

Investors Venturing (TV)

IBF (Bus. Dev.)

R&D Projects European &

other projects

Start-ups w/ entrepreneurs

Diversified

businesses w/ SMEs &

corporations

Tech.

licensing w/ SMEs and

corporations

Proof-of-concept Investment fund

Customer: Tecnalia R&I Team: Tecnalia Ventures

Services offered by

Tecnalia Ventures

Accelerating the Incubation

Selection • Pitching sessions • Investment criteria • Fund initiatives with

higher commercialization potential

Maturation Development • Proof-of concept • Prototyping • Industrial validation Other non-R&D • Protection IP

Management • Business model • Market rerearch &

market sizing

Launching Team up • Entrepreneurs • Smart capital • Industrial

partners Constitution • Legal issues • Tech. valuation • Shareholder

agreements

Tecnalia’s internal funds (Omega) Value creation milestone-driven funding

Support from a team of commercialization specialists in diverse economic sectors

Selection criteria

Technology is a key component providing innovation and differentiation. One of the most important issues to ensure differentiation and sustainable competitive advantage in technological assets is the IP protection

Patentability Strategy

EL EQUIPO DE TECNALIA VENTURES COMMERCIALIZATION SPECIALISTS: ASIER RUFINO

Managing Director

Marie Agnes Poutier Industry & Transport

SPIN OFFs:

Marian Gutierrez Industry & Transport

&

Aitziber Aramburu Sustainable Construction

Toni Pijoan Jesus Torrecilla Energy & Environment

Asier Sesma ICT- European Software

Institute

Oihana de la Mata Health

Igor Aristizabal Spinn Off Specialist

Edurne Casado Spin Off Assistant &

Patent Administration

OMEGA FUNDS:

Rakel Garcia Omega Funds Manager

CHIEF FINANCIAL OFFICER:

Leire Garcia Muguerza

Sergio Bandinelli Tecnalia Ventures Outreach

“EXTERNAL”:

Patent Portfolio Management

Administrative Management

Operational and Strategic Management

Patent Portfolio Management

TECNALIA’s Patent Portfolio is managed by Internal IP managers, with

the purpose of protecting the overall interest of TECNALIA.

Paralegal. Patent Portfolio Administration

Commercialization Specialist. Patent Operational

Management.

IP Coordinator: Global IP Coordination.

Always with the support of Patent Attorneys as External services

providers.

Administrative Management Paralegal

The administrative management of TECNALIA’s patent portfolio is carried out by a Paralegal that belongs to Tecnalia Ventures staff. The paralegal main roles are:

Patent Portfolio Update; new applications, validations, abandons, renewals, etc.

Check, control and management of renewal/maintenance taxes payments and IP service providers invoices.

Monitoring of patent files in order to ensure the fulfillment of deadlines.

Tecnalia Ventures has recently acquired an IP management software “Sophia” to centralize and manage all this information.

Patent Portfolio Management

Advantages of a CENTRALIZED Administrative Management

To know the patent portfolio status at all times.

To know the patent portfolio maintenance costs at all times.

To compare the quality of the services provided by different suppliers.

So that, it is possible to optimize patent portfolio maintenance costs by means of:

Better control over IP service providers.

Improvement of the decision making process: abandon, most appropriate filling route, etc.

Patent Portfolio Management

Operational Management Commercialization Specialist.

Commercialization Specialists combine Technical, Business and IP knowledge to provide support to TECNALIA’s Business Divisions from the conception of the business opportunity, to its commercialization. Each Technological Business Division is supported by its own Commercialization Specialist, thus leading to its specialization in the target markets and core technologies of the Divisions:

Energy Sustainable Construction Industry &Transport ICT Health

Patent Portfolio Management

Commercialization Specialists are NOT Patent Attorneys but they have a deep Knowledge in IP Prosecution. Commercialization Specialists act as intermediaries between TECNALIA and its IP Services Providers with the dual purpose of ensuring:

a) the understanding between the inventors and patent attorneys.

b) that the patent application provides to the new business opportunity the required protection against competitors.

Patent Portfolio Management

Operational Management Commercialization Specialist.

Patent Portfolio Management

Thanks to the Commercialization Specialist figure, the patent portfolio management is individualized for each Business Division enabling:

To align IP protection strategy with market strategy.

To manage the patent portfolio in a customized way according to target markets and core technologies.

To optimize the protection strategy for each asset due to the CS overall knowledge on it since its conception.

To avoid patenting without market target.

To optimize patent portfolio costs.

Operational Management Commercialization Specialist.

Definition of Assets’ Protection Strategy. Support in the analysis and

selection of the best form of protection for the assets: patent, trade secret, utility model, copyright, etc.

Supervision and mentoring of Patentability reports in order to assess novelty and inventive step of the invention.

Assessment of the potential infraction of third parties’ rights as a result of the activities carried out by TECNALIA around its IP Assets.

Patent Portfolio Management

Operational Management Commercialization Specialist. Main Duties.

Support along the Patent Granting Procedure.

• Patent application drafting ensuring the best protection of the asset according to market strategy.

• Analysis of the Office Actions and recommendations for elaboration of the amendments and their response.

• Support in the designation of states where the patent has to be validated or extended.

• Support in the decision making process regarding the abandonment or continuation of patent files.

Patent Portfolio Management

Operational Management Commercialization Specialist. Main duties.

IP exploitation agreements.

In close collaboration with TECNALIA´s legal department and business areas drafting of :

• licensing agreements

• joint ownership agreements

• Collaboration agreements

Patent Portfolio Management

Operational Management Commercialization Specialist. Main duties.

Global IP Coordination. IP Coordinator

The IP Coordinator is the person that has a Global vision on Intellectual

Property and its management in TECNALIA.

IP Coordinator ensures that the IP in TECNALIA is properly managed.

IP Coordinator main roles:

External services providers management.

IP training.

Commercialization Specialists advice in IP issues.

TECNALIA´s IP policy definition.

Support TECNALIA Legal Department in terms of IP

Patent Portfolio Management

To Sum Up

Intellectual Property and its protection is part of the overall TECNALIA Ventures strategy for “Turning innovative technology assets into new profitable and sustainable businesses “.

Commercialization Specialist is a key figure that allows IP management

and its protection:

Aligning “Protection strategy” with “Market strategy”.

Customizing IP management by combining required knowledge (market and technology) to define the best strategy for the protection and exploitation.

Centralized Patent administration management key to: optimize maintenance costs, facilitate decision making, know portfolio status at all times.

Patentability Strategy and Patent Portfolio Management