Intellectual Property Management for Start-ups: Enhancing Value and Leveraging the Potential

Endorsements
Foreword
Preface
Contents
Editors and Contributors
How to Increase the Success of Innovative Start-Ups with Intellectual Property: An Introductory Overview
	1 Start-Ups and Their Need for Capital
	2 Why IP Actually Does Matter: The Status Quo
	3 Six Main Views That Allow Differentiated Insights on Intellectual Property Management for Start-Ups
		Selected Takeaways (the Start-Up´s View)
		Selected Takeaways (the Investor´s View)
		Selected Takeaways (the Corporation´s View)
		Selected Takeaways (the University´s View)
		Selected Takeaways (the Global IP Office´s View)
		Selected Takeaways (the Advisor´s View)
	References
Part I: The Start-up´s View
	Israeli Start-Ups and Ecosystem
		1 Israel Is the ``Start-Up Nation´´
			1.1 Local Culture and Exit Ecosystem
			1.2 Substantial Venture Capital Activity
			1.3 Massive Research and Development
			1.4 State Funding
		2 Adaptable IP Strategy: IP Matters for Each Phase of the Start-Up Life Cycle
			2.1 Phase 1: Pre-seed and Seed
				2.1.1 Clarify Patent Eligibility
				2.1.2 Take Care of Ownership Matters
				2.1.3 Perform an IP Search and Freedom-to-Operate Analysis
				2.1.4 Non-disclosure Agreements (NDAs)
			2.2 Phase 2: Start-Up (Minimum Viable Product)
				2.2.1 Evaluate Core IP Assets
			2.3 Phase 3: Growth (Product-Market Fit)
				2.3.1 Update Patent Applications
				2.3.2 Monitor the Market for Patent Infringements
			2.4 Phase 4: Maturity
				2.4.1 Exit Strategy
				2.4.2 Expansion Strategy
		3 Industry-Specific IP Hacks and Recommendations
			3.1 Artificial Intelligence
			3.2 Internet of Things (IoT)
			3.3 Automotive and Smart Mobility
			3.4 Blockchain and Cryptocurrency
			3.5 Digital Health and Telemedicine
		4 Learnings and Takeaways
			Takeaways
		References
	IP as a New Value Driver for Sustainable Start-Ups
		1 Sustainability as a Value Driver
			1.1 Today Billions of Dollars in Wealth Are Being Redirected
			1.2 The Global Impact Investment Market Is Growing Rapidly
		2 A Changing Investment Landscape
			2.1 A New Investment Landscape Has Been Formed
			2.2 Climate Protection as a Benchmark
		3 Case-Specific Challenges and Risks
			3.1 Identifying the Valuation Factors
			3.2 The SDG-Rating Tool
		4 Technology, Legal, Market, and Sustainability Model Risk in IP Valuation (Risk and Data Quality)
			4.1 An IP Valuation Project Is Also an Assessment of Risk Potentials
			4.2 What IP-Related Risks Are Relevant in an Investment Context?
		5 Learnings and Takeaways
			Takeaways
		References
	Mining IP: A Story of Start-Ups in the Global Mining Industry
		1 The Mining Technology Revolution
		2 Operational Framework of the Australian Mining Industry
		3 Case Studies
			Case: SoilCyclers
			Case: 3ME Technology Holdings
		4 Learnings and Takeaways
			Takeaways
		References
	IP and Start-Ups in the Context of Florianópolis, the Silicon Island of Brazil
		1 Florianópolis, the Brazilian Silicon Island
		2 The Complex Scenario of Intellectual Property for Start-Ups in Brazil
		3 The Florianópolis Ecosystem
		4 Learnings and Takeaways
			Takeaways
		References
Part II: The Investor´s View
	``IP Is Paramount:´´ The Significance of IP in Early-Stage Start-Up Investment Decisions
		1 Why VC Investor Views on IP Matter for Founders
		2 The General Importance of IP for Investment Decisions
		3 Priority of IP in the Overall Investment Decision
		4 What Founders Need to Know About IP
		5 The Level of IP Due Diligence for the Investment Decision
		6 Building the Company´s IP Position During the Portfolio Phase
		7 Influence of Contractual IP-Related Aspects on the Investment Decision
		8 IP and Digital Business Model Start-Ups
		9 Investor Views on Branding and Trademarks
		10 Learnings and Takeaways
			Takeaways
		References
	The Role of IP and Intangible Assets in Tech Private Placements: An Investor´s View
		1 Preface: How IP Can Shape Industries/Impact Businesses
			1.1 David Beats Goliath Using Patents
			1.2 David Becomes Goliath and Bullies the New David with Patents
			1.3 An iPad (Name) That Cost $60 Million
			1.4 Ford Won´t Let Tesla Market a ``SEXY´´ Product Line
			1.5 Sorry, Juliet. A Rose Is Not a Rose If by Another Name
		2 Introduction
			2.1 What Are Private Placements?
			2.2 What Are Technology Private Placements?
			2.3 How (or If) an Investor Will Value an Investee´s IP Depends
		3 Intangible Assets Include and Matter more than IP
			3.1 The Importance of IP and IA Is Exploding
			3.2 Data Is the New Oil
			3.3 Technologies to Help Measure, Manage, and Monetize IA/IP
		4 The Mindset of Technology Private Placement Investors
			4.1 The Various Players in Technology Private Placements
			4.2 The Mindset of a VC
			4.3 Sub-specialties in the VC/PE Segment
			4.4 The Mindset of Other Investors
		5 IP Considerations in Technology Private Placements´ Due Diligence
			5.1 IP Factors in Due Diligence at an Early Stage
			5.2 IP Factors: Due Diligence at a Later Stage
		6 Investors´ Typical Advice on Managing IP
			6.1 Typical Investor Advice: Things to Consider when Filing IP
			6.2 Typical Investor Advice: Why You Should File Patents
			6.3 Typical Investor Advice: Why You Should Not File Patents
		7 Investing in Patents, Not in the Patent-Owner´s Business
			7.1 Patent Investment Funds
			7.2 Debt Financing
			7.3 Patent Litigation Financing
			7.4 Considerations when IP Owners Choose Litigation Financiers
			7.5 Considerations when Financiers Evaluate and Choose IP Deals
		8 Seven Illustrative Case Studies
			8.1 Patent Sales Help Recoup R&D Costs
			8.2 IP Monetization Strategy Boost During an Industry Downturn
			8.3 IP Licensing Enables and Finances a Corporate Turnaround
			8.4 IP Sales Help Preserve Expiring Net Operating Losses
			8.5 Strategic Investor Invests for Intangibles
			8.6 Walked Away over Patent Assignment
			8.7 Protecting IP Before Meeting a Mega-cap
		9 Learnings and Takeaways
			Takeaways
		References
	What´s the Big Idea? The Crossroads Between Investment and IP
		1 Start-Ups: Attractive Ventures
		2 Challenges of Start-Ups: Understanding Survival Rates
		3 The Role Investment Plays in a Start-Up
			3.1 Finding the Fit: Investor Type and Stages of Financing
			3.2 The Rise of University Gap Funds
			3.3 The Canadian Context: The Changing Securities Landscape
		4 What Do Investors Look for?
			4.1 Determinant Investment Criteria for Investors
			4.2 Rate of Return
			4.3 Start-Up Valuation
			4.4 Additional National Security Considerations
			4.5 Being Exit Ready, All the Time
		5 MVIP: Investor and Business Protection
			5.1 What Is MVIP?
			5.2 Breaking Down MVIP
			5.3 Benefits of Implementing MVIP Early on
		6 The Dos and Don´ts of IP Protection and Investor Attractiveness
		7 Learnings and Takeaways
			Takeaways
		References
	Intellectual Property-Backed Financing
		1 Introduction: A Start-Up CFO´s Reflection
		2 IP-Backed Financing
			2.1 IP-Backed Financing for Start-Ups
			2.2 Benefits
			2.3 Costs
		3 How IP-Backed Financing Works: Breaking Down the BDC Capital Experience
			3.1 Qualification
			3.2 Due Diligence
			3.3 Underwriting
			3.4 Portfolio Management
		4 Raising IP-Backed Financing
			4.1 Know Your Audience
			4.2 Tell Your Story
			4.3 Prove Your Story
			4.4 Make It Happen
		5 Learnings and Takeaways
			Takeaways
		References
Part III: The Corporation´s View
	IP as an Important Value Driver for Start-Up Strategies in Established Companies
		1 Introduction
		2 Importance of IP for Start-Ups
		3 Outside-in Start-Up Strategies
			Case: Siemens Digital Factory´s Start-Up Strategy
			3.1 Characteristics of Outside-in Start-Up Strategies
			3.2 IP Due Diligence of a Start-Up by an Established Company
		4 Inside-Out Start-Up Strategies
			Case: Siemens Spin-Off Symeo GmbH
			4.1 Characteristics of Inside-Out Start-Up Strategies
			4.2 Transferring and Licensing of IP Rights to a Minority-Owned Spin-Off
		5 Learnings and Takeaways
			Takeaways
		References
	Strategic Uses of IP: Applying Learnings from Large Companies to Start-Ups
		1 Why Should Start-Ups Care About IP?
		2 Strategic Uses of IP in Large Companies
		3 Strategic Uses of IP for Start-Ups
			3.1 Freedom of Action
			3.2 Advantage Over Competition
			3.3 Influencing the Business Environment
			3.4 Differentiation of Products
			3.5 Revenue and Other Forms of Value Creation with IP
		4 Recommendations for Strategy Implementation for Start-Ups
			4.1 Aligning the IP Strategy with the Company Strategy
			4.2 Conducting Regular Scenario Work
			4.3 Considering Different Ways of Value Creation
			4.4 Assessing Risk and Planning for Its Mitigation
		5 Learnings and Takeaways
			Takeaways
	How the Life Sciences Industry Handles IP in Start-ups
		1 Building the Relevant IP for the Life Sciences Industry
			Excursus: ``Public Inventions´´
		2 Dealing with National Employee´s Invention Law
		3 Achieving Freedom of Action
		4 Reaching Out for Professionalism
			Excursus: Digital Start-ups
		5 Learnings and Takeaways
			Takeaways
	Mind the Gap: Business and Cultural Aspects for Start-Up Collaboration in Japan
		1 Influence of Business Culture Over a Start-up Mindset
		2 IP Ownership and Cultural Implications
			2.1 Principles
				Case: Facebook
			2.2 IP Portfolio Construction and Strategy
			2.3 IP Risk Identification and Mitigation Strategy
				2.3.1 Principles
				2.3.2 Cultural Reasons for the Gap
		3 Learnings and Takeaways
			Takeaways
		References
Part IV: The University´s View
	Experimentation in Academic Technology Commercialization
		1 The Joan and Irwin Jacobs Technion-Cornell Institute Experiment
		2 The Problem of Entrepreneurship in Academia
			Runway Startup Postdoc Program at Jacobs Technion-Cornell Institute at Cornell Tech
		3 Experimentation
			3.1 Hiring
			3.2 Licensing
			3.3 Patenting
				Case: Shade
			3.4 Investment
		4 Growth
			4.1 Mentoring
				Case: Biotia
			4.2 Staffing
				Case: OneThree Biotech
		5 Scaling
			5.1 Curriculum
			5.2 Resources
		6 Learnings and Takeaways
			Takeaways
		References
	A University Perspective with a South African Flavor
		1 Introduction
		2 Technology Transfer in the University Environment
			2.1 Policies and Legislation
			2.2 Legislative Background
			2.3 Policy Frameworks and IP Management
		3 The Technology Transfer Process
			3.1 Funding
			3.2 Interaction Between Universities, Government, and Industry
			3.3 Licensing
		4 University Start-Ups
			4.1 University Equity in Start-Ups
			4.2 University Incubation Programs
			4.3 Example: From Invention to Commercialization - A Stellenbosch University Start-Up Technology Transfer Journey with Nanofib...
		5 Learnings and Takeaways
			Takeaways
		References
	The Technology Transfer Office as Facilitator Between Researchers and Investors: A German Perspective
		1 Leveraging Commercial Value from Science
		2 IP Management in Academia
		3 Some Case Studies
			Case: A Start-up Example from Munich
			Case: Another Start-up Example from Munich
		4 Learnings and Takeaways
			Takeaways
		References
	Managing IP-Related Tensions Between Universities and Spin-Offs
		1 Introduction
		2 IP and Its Protection from Spin-Off and TTO Perspectives
			2.1 TTO´s Perspective
			2.2 Spin-Off´s Perspective
		3 Methodology
		4 IP-Related Tensions and Implications for How to Overcome Them
			4.1 Overview of the IP-Related Interaction
			4.2 Tension 1: TTO´s Success Might Hamper Spin-Off´s Success
			4.3 Tension 2: TTO Owns the IP but Is No IP Protection Advisor
			4.4 Tension 3: Need for Standardized, yet Tailored Processes
			4.5 Tension 4: Spin-Off´s Independence, yet Further Dependence on the University
		5 Learnings and Takeaways
			Takeaways
		References
Part V: The Global IP Office´s View
	Tools of the Trade: A Trading Nation´s View on the Value of IP Rights for Start-Ups
		1 Welcome
		2 IP Is Simple and Complicated
		3 Entrepreneurship and IP Activity in Australia
		4 IP Rights Are Tools for Survival, Adaptation, and Growth
		5 Play Defense and Find Your Cutting Edge
		6 Where to from Here
		7 Learnings and Takeaways
			Takeaways
		References
	Market Success for Inventions: Patent Commercialization Scoreboard and Innovation Support
		1 Role of Intellectual Property Rights for Technology Start-Ups and SMEs
			1.1 Intellectual Property Rights and High Growth
			1.2 Benefits of Patenting for Technology Start-Ups
				1. Market Access
				2. Negotiating
				3. Funding
				4. Strategic Value
		2 Patent Commercialization Practices of European SMEs
			2.1 SMEs´ Commercialization Practices
			2.2 Commercialization Practices of Universities/PROs
			2.3 Challenges in Patent Commercialization
		3 Innovation Support for Start-Ups and SMEs
		4 Learnings and Takeaways
			Takeaways
		References
	Raising IP Awareness of Start-Ups: A French Perspective
		1 Why Start-Ups Matter in France
		2 The French Start-Up Ecosystem, As It Stands
		3 The Reasons Behind an Accelerating Expansion: A Strong Support from the Public Authorities
		4 The IP Support Mechanisms in France
		5 Start-Ups and IP: The Current Status
			Case: Visible Patient
		6 What the Current Landscape Teaches Us
			Case: A French Med-Tech Example
		7 Learnings and Takeaways
			Takeaways
	Strategic Considerations and the Seed-to-Maturity Model When Establishing the Ideal IP Portfolio in the Start-up Context
		1 Start-ups: A Unique Operational Context
		2 IP Assets and the Firm´s Life Cycle
			2.1 The Seed-to-Maturity Life Cycle and MVP Design Process
			2.2 Specific Functions of IP Assets in the Start-up Context
		3 The Seed-to-Maturity Model and the Expected IP Portfolio
			3.1 The Lean IP Portfolio Approach for the MVP Design Process
		4 Practical Strategies for Maximizing the Value of the Expected IP Portfolio
		5 Learnings and Takeaways
			Takeaways
		References
Part VI: The Advisor´s View
	An Introduction to Intellectual Property Rights and Formal and Informal Protection Strategies
		1 Capturing Value by Protecting Innovation
			1.1 Formal Protection Strategies
			1.2 Informal Protection Strategies
		2 Types of Intellectual Property Rights
			2.1 Patents
				What Is a Patent?
				Prior Art
				Patents Are Exclusionary Rights
			2.2 Supplementary Protection Certificates (SPCs) for Pharmaceuticals
			2.3 Utility Models
			2.4 Design Patents
				Case Legal Dispute About Design: Apple vs. Samsung
			2.5 Topography
			2.6 Plant Breeders´ Rights (PBRs)/Plant Variety Rights (PVRs)
			2.7 Trademarks and Similar Rights
				Trademarks: Some Special Cases (e.g., Switzerland, Europe)
			2.8 Domain Names
			2.9 Trade Dress
			2.10 Copyrights
				Copyright Law
			2.11 Trade Secrets
		3 Learnings and Takeaways
			Takeaways
		References
	Important Aspects of IP for Start-Ups: Strategies for Avoiding Common Pitfalls
		1 The Challenges to Protect Intellectual Property
		2 Lessons and Cases
			2.1 Lesson 1: Ensure that the Invention Actually Belongs to You
			2.2 Lesson 2: Be Aware not to Destroy Novelty Before Filing a Patent Application
			2.3 Lesson 3: Choose the Right Filing Strategy
			2.4 Lesson 4: Find the Right Balance Between Budget and Scope of Protection
			2.5 Lesson 5: Do not File a Quick-and-Dirty Provisional Application
			2.6 Lesson 6: Make Sure the Patents and Products are in Line with Each Other
			2.7 Lesson 7: ``Perform a Thorough FTO Analysis´´
		3 Use Cases
			Case: University Spin-Off
			Case: Established Start-Up
		4 Learnings and Takeaways
			Takeaways
		References
	Blind As a Mole? How Patent Data can Help Start-ups to Compete
		1 The Deal Is: Exclusionary Right in Return for Disclosure
		2 Patent Data-Based Search: An Insightful Means for Start-ups along the Venture Life Cycle
			2.1 Seed Phase Patent Search
			2.2 Start-up Phase Patent Search
			2.3 Growth Phase Patent Search
			2.4 Maturity and Exit Phase Patent Search
		3 Overview of the Most Common Patent Searches
			3.1 Ideation/Technology Scouting
				Technology Scouting: Evaluating Biodegradable Solutions for Primary Packaging
			3.2 Prior Art Search and Novelty Search
			3.3 Freedom-To-Operate (FTO) Analysis
			3.4 Industry and Technology Search
			3.5 Market and Competition Search
			3.6 Opposition/Nullity Search
			3.7 Patent Landscape and White Spot Search
				The Making-of: ``Patent Landscape Quantum Technology´´
		4 Conducting Patent Searches: A Practical Guide with Examples
			4.1 IP Search Tools and Patent Databases
			4.2 The Patent Search Process
		5 Learnings and Takeaways
			Takeaways
		References
	Technical Patent Circumvention: How Start-ups can get Around Infringed Patents
		1 Context of Technical Patent Circumvention
		2 How to Get Started: A Guideline for Technical Patent Circumvention
			2.1 Elaboration of the Patent Basis
			2.2 Functional Analysis
			2.3 Trimming
				Case: Wind Turbine
				Case: Lighting System
		3 Learnings and Takeaways
			Takeaways
		References
Glossary
	Abbreviations
	Institutions and Associations
Index