TTO PRACTICES

RECENT DEVELOPMENTS IN THE IMEC IP BUSINESS

Dr. ir. Vincent Ryckaert, European Patent Attorney

IMEC IP Business and Intelligence Director

IMEC 2014 3

2012 IN NUMBERS

Total revenue (P&L) of 320M€, a growth of 7%

1,064 peer-reviewed articles

161 patents awarded &133 patents submitted

Collaboration with > 600 companies & > 200 universities

600 residents, visiting & PhD researchers

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IMEC 2014 5

HEADCOUNT

0

500

1000

1500

2000

2500

84 85 86 87 88 89 90 91 92 93 94 95 96 97 98 99 00 01 02 03 04 05 06 07 08 09 10 11 12

PAYROLL

N ON -PAYROLL 2,050 people

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STATE-OF-THE-ART RESEARCH FACILITIES

300mm

pilot line

450mm

ready

200mm

pilot line

N ano

biolabs

N ERF

lab

Organic

solar cell

line

Silicon

solar cell

line

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RESEARCH PROGRAMS

FOR FULL INDUSTRY ECO SYSTEM

Fablite & Fabless & OSAT Logic & Memory IDM & Foundries

LamRESEARCH

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8

Different “Environmental” Actors on IP:

▸ Governments (context)

- Stimulating IP creation (incentives, KPI, ..)

- Creating new instruments (Unitary Patent, Unitary Patent Court,

laws of enforcement)

- Public Policy driven

▸ Patent Agencies (EPO, USPTO) (protection)

- Focus on quality and more workload driven

- Introducing procedural restrictions (earlier decision taking)

- Rather disconnected with IP use

▸ Courts (enforcement, contract disputes)

- Getting more specialized

- Creating case law

- Much more context driven

BE “AWARE” OF NOT ALWAYS ALIGNED

EVOLUTIONS

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IMEC POSITION ON UP/UPC

1. If Policy is Fair IP use – UP/UPC is way

to go

2. Effects 1. Great market – EP IP value grows (like US)

2. Big quality (on top of EPO quality) specialized

3. Implementation 1. Depends on the costs

2. Depends also on the licensees/co-owners

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Sole ownerships

Temp. exclusivity

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KEY FEATURES OF UPDATED IMEC IP POLICY

1. Avoiding IP blocking for our Partners • Unless not longer needed [PREDICTABILITY]

2. Securing IP Rights for our Partners and IMEC

• For Partners whenever it becomes possible (1. and 3.)

• For IMEC where necessary to ensure value extraction

3. Fail safe • Compute loss of opportunity in case of Policy Deviation

• Implement safe guarding measures

• Focus on Value creation instead of non-discussions

CAN YOU DECIDE? DECIDE WHERE YOU CAN!

IMEC PATENT SELECTION CRITERIA

DESIGNED FOR EFFICIENCY

WITHIN IMEC CONTEXT

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1

4

PATENT SELECTION CRITERIA (1)

Step 0: IMEC Value

(by IP board)

▸ Idea must fall within the general IMEC experience domain (to ensure that the

technological and market intelligence is available to exploit the patent)

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1

5

PATENT SELECTION CRITERIA (2)

Step 1a: Patentability – Legal Value

(by IP team) (linked with 1b)

▸ Novelty:

based on external/internal prior art search

▸ Inventive step:

minimum a defendable position vis-à-vis patent office required

▸ Enablement:

amount of information available in view of claimed idea

as available at least within the priority year

dependent on the predictability degree of the subject matter

might heavily impact scope of protection

=> If NOVEL and INVENTIVE and sufficiently ENABLED: FILING (see 1b)

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1

6

PATENT SELECTION CRITERIA (3)

Step 1b: Assessment of the intrinsic idea as such – intrinsic value (by IP Board) (linked with 1a)

▸ Q1: is the idea a large or minor improvement to the state of the art in terms

of performance is the idea essential or non-essential for the IMEC solution (internal look)

▸ Q2: Is the idea broad or narrow e.g. do there exist many alternatives in the world, is it easy to design around is it applicable for many applications/fields or not) This answer influences the sustainability of the idea under strategic and/or market changes. (external look)

=> if LARGE improvement and BROAD idea: FILING (see 1a)

= >if SMALL improvement and NARROW idea: NO FILING (unless special circumstances – see further)

=> if LARGE improvement but NARROW idea, or if SMALL improvement but BROAD idea : NEXT STEP (Step 2)

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1

7

PATENT SELECTION CRITERIA (4)

Step 2: Business Aspects – business Value (by IP board)

▸ SHORT TERM ASPECT

- Is there any short term exploitation path (transfer, license, spin-off) or at least foreseen in our business plan?

Note: if exploitation path not realized, then stop directly

- Does it create reasonable value (ROI) for one of the existing partners within R&D cooperation (co-ownership, cost-sharing, licensed partners)

=> FILING

▸ LONG TERM ASPECT

- For large improvement but narrow idea

- Is this filing essential for the long term strategy, i.e. would a similar 3rd party patent blocks IMEC long term strategy Note: if strategic research direction changes, then stop directly

e.g. first result of a new IMEC strategic research direction

=> FILING

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2

2

CONCLUSION

Have an IMEC (R&D institute) specific context ▸ Please do not use a simplistic naïve view in IP decisions neglecting such context for overruling the

specifically designed patent selection criteria

Quality (in terms of creating value) requires very close collaboration between IP team, inventors and their management ▸ In terms of supplied material, time spend (enablement, written description)

▸ In terms of decision making, linked with insight in ST, LT valorisation strategy

Collective decision making versus each a few patents ▸ Role of the different fora (patent review board, program review boards, department patent

management board, interaction with group leaders, senior scientists, fellows)

Exploit maximally the IMEC advantage that we should be 3-10 year ahead of other patent investing parties ▸ Should enable broad patents (given that we use appropriate publication procedure – also with

respect to white papers)

▸ We should focus on the LT (MT) time window for exploitation, given that a patent is a LT(MT) tool (e.g. look at time to grant).

IS THERE A DEMAND FOR

MORE OPEN IP?

RISKS FOR OPEN INNOVATION?

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INDUSTRIAL PARTNERS – SHIFT TO LATER LIFE CYCLE

▸Governmental Funded

- Fundamental Research: no industry

- Basic Research Funded projects: no industry

- Applied Research Projects: industry involvement and no industry

financing

- Applied Research Projects: industry involvement and co-funding

▸ Bilateral

- Programs (open consortia)

- Bilateral R&D

- Development on Demand

- Low Volume Manufacturing and Services

- Technology Transfer and/or Spin-off Creation

- IP Licensing & Monetization

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▸Governmental Funded

- Fundamental Research: no industry

- Basic Research Funded projects: no industry

- Applied Research Projects: industry involvement and no industry

financing

- Applied Research Projects: industry involvement and co-funding

- Own R&D Alliances (academia (complementary) and industry

(infrastructure)

▸ Bilateral

- Programs (open consortia)

- Closed consortia (charity, industry/government – strange eco-systems)

- Bilateral R&D

- Development on Demand

- Low Volume Manufacturing and Services

- Technology Transfer and/or Spin-off Creation and/or IP/KH block

licensing

- IP Licensing & Monetization

TRENDS

H2020 TRL

IP MONETIZATION - EVALUATION IMEC EXTRA IP OFFERING MODEL

•`EXTRA` MEANS `COMPLIANT WITH EXISTING (SHARPENED) BUSINESS MODEL

• `IP` MEANS `PATENT AND (PUBLISHED) PATENT APPLICATIONS ONLY

• `MODEL` MEANS `SUBSET OF MUTUAL NECESSARY SUB-MODELS`

No value

Needed

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LEARNINGS

1. Place in the life cycle (close to spin-offs)

2. Limited subset of portfolio suitable (content, ownership, status)

3. Balance reputation (fairness versus strong IP – e.g. support a

pure licensing policy)

4. Some successes (but 2. and internal effort for non-core

limited)

5. Sustainability (see 2. plus no file to IP monetize policy per se –

see 3.))

6. Learn also in-licensing or pooling with Academia – difficult

IMEC 2014 34

OPEN INNOVATION AND OPEN IP IN IMEC’S R&D

LIFE CYCLE

• IMEC exploring competitive field via IP Monetization

• IMEC experimenting new models IP value extraction

• Internationalization hampered by different KPI’s and approaches

• Light shift to less joint IP

• More difficult bilateral R&D negotiations shows weakening of

Innovation

• Industry seems to focus more on trade-secrets and hence C.I.

• Industry, academia, government do not seem to demand/request

Open IP business/strategy not fostering Open Innovation

The trend of Open Innovation and the tendency towards less Open IP

seems contradictory or irreconcilable

More Open Innovation and (non existing demand for) More Open IP

act as Paradox

IMEC 2014 35

TREND OPEN INNOVATION AND DEMAND

LESS OPEN IP = PARADOX

Open Innovation Late R&D Life Cycle | Early R&D Life Cycle

Impossible | Possible

more --- |

|

|

|

|Tendency of government: more IP;

detrimental | academia: more exclusivities

less --- |

| | | Open IP

exclusive non-exclusive no IP

TII CONFERENCE UTRECHT

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OPEN INNOVATION MEETS OPEN IP IMEC TOOLS, INSIGHTS AND ACCELERATORS

Attempt to solve this paradox: meet all changes in

R&D environment + demands in IP access rights

regimes + reconsile with tendency to O.I. ▸ Internally:

- adapted + refined IP Business Policy

- Exploring use of patent pools for IPR sharing with 3rd parties (incl.

academia in related R&D fields)

▸ promoting non-blocking approaches for IP market

policy-wise

▸ Open the debate regarding the need for a good

R&D Life Cycle

TII CONFERENCE UTRECHT

IMEC 2014 37

GLOBAL R&D PLATFORMS :…TO THIS:

Providing focus for universities and basic insight and solutions for industrial partners

Universities Longer

term

, m

any

options

Sho

rte

r

term

,

applic

ations

Tim

e f

ram

e

Lower Higher R&D cost

Industry

Shared

R&D Platforms

Shared

R&D Platforms

Shared

R&D Platforms

IMEC 2014 42

CONCLUSIONS

1. IMEC IP model – more dynamic than ever before 1. Explain internal

2. Explain to Partners and Governments (wrong place in the life cycle does not

work)

2. IMEC adapts to the IP evolution 1. more open is NOT the way to go (starting from our perspective)

2. Less open is NOT necessarily bad if rightly positioned in life cycle

3. But KEEP our open model AS BASELINE

4. Even more explicit working out all IP aspects of the collaboration (less

implied)

3. IMEC believes it is more than time to discuss the need for a sound

balanced R&D life cycle with Governments, Academia and Industry in

EU to create true EU collaboration

4. IMEC willing to bring its experience on the table to achieve concrete

solutions