MT5001 IP Management
AY 2016/2017 Semester 1 MT 5001 IP Management Prof. LIU Shang Jyh (劉尚志) Visiting Professor, Division of Engineering & Technology Management, Faculty of Engineering, National University of Singapore email: [email protected]
Professor & Dean, School of Law, National Chiao Tung University (交通大學), Hsinchu, TAIWAN email: [email protected]
As a professor of Law and Technology Management, Professor Liu is active in both academia and industry. He is an international arbitrator and an advisor to many high-tech companies and public agencies. In particular, he is a pioneer and a leader in Intellectual Property education and service: he has successfully established a new paradigm of legal education and empirical research in Taiwan. Ever since 1994, he has trained more than 7000 IP professionals in Taiwan, who in turn are contributing to the competitiveness of Taiwan’s industry. At the National Chiao Tung University (NCTU) Taiwan, he is the Founding Chairperson of the Law School and the Graduate Institute of Technology Law, as well as a former Dean of International Affairs of NCTU. Internationally, he has lectured at the National University of Singapore, Tulane University (Asia Global MBA), Beijing University, Nanyang Technological University, the Hong Kong Polytechnic University, etc. Professor Liu is also an internationally renowned scholar. He published widely in renowned management journals such as in IEEE Transactions on Engineering Management, APEC’s “Strategic Intellectual Asset Management for Emerging Enterprises”, a chapter to WIPO’s “Leveraging Intellectual Property as a Strategic Business Asset: Making IP Assets the Core of Strategic Business Management” and a book “Patent Portfolio Deployment: Bridging the R&D, Patent and Product Markets” (in process). He is also the Chief Editor of Technology Law Review.
MT5001 IP Management
Co-Instructors: Dr. Cheng Yuchao, Jack Jack joined Intellectual Property Academy (IPA), the subsidiary of Intellectual Property Office of Singapore as the Senior Assistant Director and Faculty Member specializing in Competitive Intelligence and IP management. Jack received his Ph.D. from Division of Engineering and Technology Management, NUS. He is also appointed as the Adjunct Assistant Professor at NUS teaching IP management modules. Prior to join IPA, he was the Co-principal investigators for several national projects of patent trends and litigations in information and Optical-electronic industries funded by Taiwan Intellectual Property Office during his term as a Secretary General at Taiwan Technology Law Institute. In addition, he also conducted several consulting projects related to Patent Analysis and Patent Deployment for companies in various industries, e.g., Semiconductor and Financial Leasing industries.
Dr. Fong Hoi Yan, Anna Anna Fong has years of working experience in various multinational companies. Her work spans over the different functions of Test Engineer, Application Engineer, R&D Engineer for product design and patent portfolio monetization. Anna graduated with a Bachelor and Master in Electrical and Computer Engineering from NUS. She also has a PhD from NUS Division of Engineering Technology Management, specializing in Patent Risks Management. She is in the midst of getting her Bachelor in law from University of London. Anna specializes in Microwave Communications Technology areas,
manufacturing and applications. She has published in scientific papers in SAW filter designs and is a named inventor in a patent application in WIPO.
Lan Yuhong, Tony Tony graduated with a First-Class Honors degree in biomedical sciences. He obtained a Graduate Certificate in Intellectual Property Law (GCIP) with Merit from NUS Law School and Singapore IP Academy, and a Master in Intellectual Property Management. He is currently a Ph.D candidate in the Division of Engineering and Technology Management (NUS), specializing in technology intelligence and IP strategy. Tony is a qualified patent agent in China and had worked in a Singapore law firm, specializing in patent prosecution, licensing and contentious issues. He has also worked on various consulting projects in relation to patent analysis and deployment, and presented on IP strategies at international conferences in Singapore, Taiwan,
MT5001 IP Management
Canada and India. Course Outline: This module aims to provide students with comprehensive perspectives and practical applications of the Intellectual Property (IP) Rights, with an emphasis on patents, which are crucial for technology & industry development. The emergence of IP infrastructure depends heavily on the rapid change of legal environment, and the continuing revisions of IP laws have restructured the dynamics of industrial competition and the use of emerging technologies in the global economy. Nowadays, IP is much more than a legal instrument for property right protection; it has become an industry in technology markets. It is aware that effective utilization and strategic management of IP to serve the technological and business goals are as imperative as the emergence IP as legal rights. This module consists of four major themes: 1. Legal Aspect of IP: Patent Practice, Infringement Analysis and Design Around, and IP Litigations are the core subjects. The essence of Copyright, Trademark, Trade Secret, Layout-Design of Integrated Circuits and Fair Competition, International Treaties, such as WTO/TRIPs, PCT, Berne Convention, etc., as well as transnational regulations, especially the IP practice in America and China, will be introduced. 2. Technological Aspect of Patents: Topics include Competitive & Technological Intelligence, Technological Development and Its Life Cycle, Innovation Patterns, Patent Mapping, Patent Portfolios and Technology Strategy. 3. Economic and Financial Aspects of IP: Valuation Methodology, Royalty Rate of IP Licensing and Litigation, and Damage Compensations of IP Disputes, construe the prime considerations. 4. Business and Managerial Aspects of IP: Strategic Management of Intangible Assets and IP Business Models, Non-Practicing Entities and IP Commercialization and Intellectual Capital Management, will be brought to more attentions in the effective use of IP.
MT5001 IP Management
Course Projects: Students taking this module have to conduct individual and group projects. Depending on the size of the class, a number of groups are to be formed. The contents of the projects are elaborated in details below. Grading: 1. Class Attendance and Participation (20%) We expect students to read references/assignments and contribute to class discussions. Volunteered discussions are encouraged. Class participation will help articulate the ideas and enrich the dimensions of course subjects. The instructor will evaluate the students according to the frequency of attendance (10%) and level of participation (10%). 2. Course Projects (80%): Individual Term Paper (30%) & Group Report (50%) Course Projects are divided into two parts: term paper & group report. Each student will be assigned an independent study with a designated subject as his/her term paper (30%). This individual assignment aims to arm students with in-depth knowledge and practical skills that are crucial for IP management. The second part is teamwork and each team must present with PowerPoint in class (i.e., a mid-term presentation and a final presentation) and submit a group report in Microsoft Word marked clearly with each student’s contribution (50%). The term paper, in general, is at least 20 pages and no more than 50 pages long. The group report should be at least 50 pages long. The grading of group report will be based on the integrated work (30%) and individual contribution (20%). You will be graded on the relevant applications of ideas covered in this course, thoughtful analysis and creativity. Students must submit all reports with electronic files. Specifications for all written assignments: A4 size, margins of 1'' on all sides, fonts no smaller than 11-points. Line spacing should be 1.5 or 2 lines to facilitate grading. Please include proper references to any papers / books/ websites/ reports that you cite in your work. Late assignments and plagiarism are NOT allowed and will NOT be graded.
MT5001 IP Management
Term Paper: Each member of a designated group chooses one of the following subjects for his/her independent study, respectively. Duplication of the study subject within a group is NOT encouraged. 1. IP Valuation, Remedies and Damage Awards for Patents and Trademarks. 2. Strategic Management and Business Models for Corporate IP Utilization and Commercialization. 3. Business Models of IP Transactions and IP Commercialization of Non-Practicing Entities (NPEs). 4. Competitive Intelligence and Patent Portfolio Analysis: Functions, Analytical Schemes, Software and Case Examples. 5. Strategies and Tactics in Managing IP Risks, including patent licensing and alliances, such as pooling, standard setting, etc. 6. Other topics (to be announced later during the course). Group Project Topics of AY2015/2016 Semester 1 Case study of IP management with technological, legal, economic and business aspects in the context of either: 1. Cloud Computing/Big Data/Internet-of-Thing; 2. Financial Technology (“Fin-Tech”); & 3. Biopharmaceutical. There are several ways to conduct the case studies: You can select an organization and conduct the competitive analysis of such organization in markets and products, technology strategy and innovation patterns (could be Radical, Incremental or Disruptive), as well as IP portfolios & strategy. The organization studied can be a private enterprise or a public institute (such as a Research Institute), preferably a Singapore local company or a company from emerging economies or a company of particular interest (e.g., with a unique business model). For example, in the context of Cloud Computing, you can consider studying (a) the IP management and strategy of the “platform companies” (e.g., Google and Facebook as platform provider that charges neither the end-users nor the application-developers; Sony and Nintendo as platform provider that focuses on charging the application developers, but offers significant discounts to end-users) and
MT5001 IP Management
(b) how Asian Cloud Computing-related companies could devise their IP strategies to help them leverage on these platforms to further their businesses in Cloud. Alternatively, you can focus on some niche emerging technologies and analyze the IP (patent) landscape in that technical domain and the IP strategies of some organizations therein. For example, in the context of biopharmaceuticals, a few emerging technologies (e.g., stem cell, epigenetics, genomics, ICT in biotechnologies) are believed to hold great promise and might give rise to the “blockbuster” drug/treatments of tomorrow. Thus, you can investigate the IP (patent) landscape of, for example stem cell, identify the leading players in the field, assess their respective positions in terms of IP, and discuss their IP strategies for today and tomorrow. You can further enrich your case study by analyzing the positions of the latecomers in the technical domain (e.g., Asian generic pharmaceutical companies) and proposing the possible IP strategies for them. In particular, please consider addressing the following issues/subjects and have your comments on such regards. 1. Competitive Analysis of Niche Markets and Products, as well as the key success factors of such markets and products. 2. Innovation Patterns of Technology and Product, as well as the Life Cycle Stages of the Technology/Patent, Product and Organization. 3. Assessment of the Patent Landscape (distributions of relevant patents among leading companies) for the product of interest, and pertinent Patent Portfolios (quantity and quality of relevant patents/technology classifications, geographical coverage, product mapping) of such organizations, as well as possible uses (commercialization and utilization, such as licensing, excluding competitors, alliance, etc) of those patents to enhance the competitiveness. 4. Identification of the technology trajectory as revealed by the patent landscape through analyzing the important patents as depicted by indicators such as high frequency of citations and/or large size of patent family, along with considerations of the technology/effect/product aspects of the patents. 5. IP Valuation, methods such as Cost, Income or Market Approach, will be employed to justify the values of patent portfolios. 6. The Litigation or Negotiation of IP Disputes, with which its historical development, major issues, arguments and court decisions of the disputes, are to be discussed. 7. Review and propose an IP Risk Management and Strategy in the future, such as licensing, alliances, pooling, standard setting, etc.
MT5001 IP Management
Further details regarding the group projects will be introduced in the class.
Submission Deadline (Tentative): Individual Term Paper & Group Project Group Report: 18 Nov 2015 (Fri 11:59pm) Individual Term Paper: 25 Nov 2015 (Fri 11:59pm) References: 1. Thomas G. Fields, Jr., 2011. Fundamentals of Intellectual Property, University of New Hampshire. 2. Howard B. Rockman, 2004. Intellectual Property Law for Engineers and Scientists. Wiley, IEEE Press. 3. Bruce Berman ed., 2002. From Ideas to Assets: Investing Wisely in Intellectual Property. Wiley. 4. Bruce Berman ed., 2009. From Assets to Profits: Competing for IP Value and Return. Wiley. 5. Julie Davies and Suzanne Harrison, 2001. Edison in the Boardroom, How Leading Companies Realize Value From Their Intellectual Assets. Wiley. 6. Richard Razgaitis, 2002. Valuation and Pricing of Technology-Based Intellectual Property. Wiley. 7. Barry J. Nalebuff, and Adam M. Brandenburger, 1996, Co-opetition. Harper Collins Business. 8. H. Jackson Knight, 2001. Patent Strategy for Researchers and Research Managers. Wiley. 9. David Hunt, Long Nguygen & Matthew Rodgers ed., 2007. Patent Searching: Tools & Techniques. Wiley. 10. Mark Blaxill & Ralph Eckardt, 2009.The Invisible Edge: Taking Your Strategy to the Next Level Using Intellectual Property, Penguin Group. 11. David S. Ruder, 2008. Strategies for Investing in Intellectual Property, BearBooks. 12. Anthony Miele, 2001. The Manager’s Guide to Profiting from Patent Portfolios, Wiley.
MT5001 IP Management
Syllabus of MT 5001 IP Management (AY2016/2017 Semester I) Class Hour: Saturday (10:00am-1:00pm) Venue: Regular Classes: EA-02-11
Semester II 2016/2017
Week.1 L1-13 Aug (Sat) 10:00am-1:00pm
Overview of IP Management (1) (Prof Liu)
Week.2 L2-20 Aug (Sat) 10:00am-1:00pm
Overview of IP Management (2) (Prof Liu)
Week.3 L3-27 Aug (Sat) 10:00am-1:00pm
IP Analytics: Search and Analysis (1) (Jack)
Week.4 L4-3 Sep (Sat) 10:00am-1:00pm
Legal aspect of IP: Law & Enforcement (Prof Liu)
Week.5 L5-10 Sep (Sat) 10:00am-1:00pm
IP Analytics: Search and Analysis (2) (Jack)
Week.6 L6-17 Sep (Sat) 10:00am-1:00pm
Patent portfolio, patent landscape & patent strategy (Prof Liu)
Recess Week L7-24 Sep (Sat) 10:00am-1:00pm
Mid-term presentation (Prof Liu)
Week.7 L8-31 Sep (Sat) 10:00am-1:00pm
IP Risk Management Framework (Anna)
Week.8 L9-8 Oct (Sat) 10:00am-1:00pm
IP Intermediaries: Emerging Business Models (Tony)
Week.9 L10-15 Oct (Sat) 10:00am-1:00pm
Corporate IP Strategies (Anna)
Week.10 L11-22 Oct (Sat) 10:00am-1:00pm
Patent Portfolio Structure (Tony)
Week.11 L12-29 Oct (Sat) 10:00am-1:00pm
Help Session for the Final Project
Week.12 (No Class)
Week.13 L13-12 Nov (Sat) 10:00am-4:00pm
Final Project Presentation
18 Nov (Fri)
Group Report Due at 11:59pm (tentative)
25 Nov (Fri)
Individual Term Paper Due at 11:59pm (tentative)
No written exam