Extracting value from intellectual assets introduction



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EXTRACTING VALUE FROM

INTELLECTUAL ASSETS

INTRODUCTION

Hello, you have decided to complete a short Intellectual Assets questionnaire for your organisation provided by Intellectualpropertynet.

Completion of this questionnaire will enable you to receive a free Half Day of Consulting and a free Executive Report outlining your organisation’s state of “IP Readiness” which will serve to give you some pointers to actions that you could take to extract greater value from your Intellectual Assets.

You are also free to use this self-completion questionnaire format in your organisation without our input. We do ask that you acknowledge the copyright of MJI Business Solutions in reproducing it. We in turn acknowledge the earlier input into the development of our thinking by our former colleagues in KPMG’s Intellectual Property Services team, particularly James Hodgson of K Legal, and the team at TaylorNelsonSofres who conducted the 2002 client research on behalf of KPMG.

Please let us know at Intellectualpropertynet if you do use the approach within your organisation, and how you get on. We welcome any suggestions or evolution of the approach as it is road tested further. Thank you.

DEFINITIONS

We define Intellectual Assets as those assets available to the organisation, which are or can be owned by the organisation and that value can be extracted from, including those assets which are made available from third parties. This includes all forms of Intellectual Property, Brands & Reputation, Knowledge and Technical Know How and Business Processes. It excludes the Human Capital, the truly personal knowledge and insights, that is the seed corn provided by individual members of the organisation, but which cannot be owned by the organisation, whatever service contracts might imply.

The report will also seek to set you in a general context of “IP Readiness” from a sample of 300+ major European organisations based on anonymous telephone research conducted in 2002

COMPLETING THE QUESTIONNAIRE

The questionnaire should take you no more than 30-45 minutes. Please type your answers into the questionnaire, adding any comments you wish about particular issues or observations that you feel are particularly pertinent to your organisation or industry. Any answers you give will be confidential, and neither you nor your company will be identified to any third party outside of the partners in MJI Business Solutions, and their Associates in Intellectualpropertynet.

We suggest that you may wish to review the questionnaire first if you are likely to be unfamiliar with definitions of Intellectual Assets or are unfamiliar with your organisation’s ownership and use of Intellectual Property and other Intellectual Assets.

This will enable you to gather the information to answer the questions as accurately as possible. We aim to provide useful and actionable insight in our “IP Readiness” report to you. However the very act of trying to answer the questions will be an indication for some that their IP has not been centre stage in their organisation or their own thinking. Please do not be concerned if you do not know all the answers. You will not be alone.

IP is increasingly a Board level, business issue that straddles several responsibilities so you may need to involve a colleague or two in answering one or two questions if you represent a large or growing organisation. You may find that there are some differences of opinion and emphasis. The shared responsibility often results in little real accountability.

MAXIMISING LEARNING

We are unable to offer the half-day meeting and Executive Report if you do not complete the questionnaire as fully as possible. Our subsequent input will be largely based on the content provided to us by you and your organisation. We wish to make the input as useful as possible and much appreciate your support.

The aggregate trend data from all participants will be collected and analysed further if appropriate. This will be communicated to fellow SPS members in the form of an article or presentation.

Thank you. We look forward to talking with you

The Intellectualpropertynet team.

Section A: Primary Respondent

A1 Are you the most senior person with responsibility for your organisation’s IP rights?

Yes

No

Don’t know



A2 Are you actively involved in the management of your organisation’s IP rights?

Yes

No



A3 Which of the following types of IP rights does your organisation own or make use of?

Patents

Trade Marks

Registered designs

Copyright (including copyright of software)

Database rights

Trade secrets

A4 Which of the following types of intellectual assets does your organisation actively exploit?



Know How

Knowledge

Business process

Image / Brand

Other (specify)

Section B: Organisation & Role

B1 What is your job title?

CEO (including Chairman, President, MD)

CFO (including Finance Director)

COO


Head of Strategy

R&D Director

Legal Director /General Counsel

IP Director

Other (Specify)
B2 Please indicate other contributors to the completion of the questionnaire.

CEO (including Chairman, President, MD)

CFO (including Finance Director)

COO


Head of Strategy

R&D Director

Legal Director /General Counsel

IP Director



Other (Specify)

B3 Please indicate how much you agree that the following statements describe the role of your organisation’s management board in relation to IP rights, on a scale from 1 to 5 where 1 is strongly disagree and 5 is strongly agree?



  1. Sets the strategy for IP rights management

  2. Provides guidelines within which others can set a strategy for IP rights management

  3. Monitors performance of the IP rights portfolio

  4. No involvement in IP rights management

5. Don’t know



B4 How has the involvement of the organisation’s management board changed in the past 3 years in relation to IP? Has it …



Increased

Decreased

Not changed

Don’t know



Section C: IP Profile

C1 What are the most important sources of competitive advantage for your organisation? Please rank your top 5 choices, 1 being the most important.



People

Products

Brand

Image

Speed to market

Service

Geographic reach

Sector specialism

Price

Technical knowledge

Distribution channels

Business processes

Knowledge

Other (please specify)

C2 Approximately what percentage of your organisation’s total turnover was spent on research and development in 2002?

<5

5-9

10-14

15-19

20-24

25+

Don’t know



C3 How important are the following types of intellectual assets to the success of your organisation? Please rate on a scale of 1 to 5 where 1 is not at all important and 5 is very important?



Patents

Trade Marks

Registered Designs

Copyright (including copyright of software)

Database rights

Trade secrets

Technical knowledge

Knowledge

Business process

Image / Brand

C4 Does your organisation seek to obtain additional income by commercialising its IP?



Yes

No

Don’t know



C5 Please state at what stage your organisation is with the following methods of generating extra income by commercialising IP rights. For each method please state if your organisation is currently generating income, plans to, is considering, have considered and rejected or have never considered?



Not doing any of this

Licensing to 3rd parties

Creation of a specific business unit within your organisation

Corporate venturing

Spinning off a specific business unit

An alliance or partnership

A joint venture

Selling IP

Donating IP for tax relief (in USA subsidiaries only)

Don’t know



C6 Please state at what stage your organisation is with licensing the following to third parties. Please state for each category if your organisation is currently licensing to 3rd parties, plans to, is considering, have considered and rejected or have never considered?

Patents

Trade Marks

Registered designs

Copyright (including software)

Database rights

Know How

Knowledge

Business process

Image / Brand

Don’t know



C7 Does your organisation measure or monitor the income it receives from licensing out its IP rights?



Does not receive any income

Yes

No

Don’t know



C8 Approximately how much revenue has licensing out generated in the last 12 months?

Please quote in £



50,000

50,000 to 99,999

100,000 to 249,999

250,000 to 499,999

500,000 to 749,999

750,000 to 999,999

1,000,000 to 1,999,999

2,000,000 to 2,999,999

3,000,000 to 4,999,999

5,000,000+

Other (Specify)

Don’t know

Refused

C9 Over the next 12 months do you expect the revenue generated from licensing out to …?



Increase

Decrease

Not change

Don’t know

Refused



C10 Do you believe you may be currently missing out on IP income by failing to successfully seize all commercialisation opportunities?

Yes

No

Don’t know

Refused

ANSWER IF YES ANSWERED AT C10

C11 Approximately how much revenue £ annually do you believe is being missed at the moment?



Don’t know

Refused

C12 Does your organisation license in IP from 3rd parties?

Yes

No

Don’t know

ANSWER IF YES SELECTED AT C12

C13 Which of the following are licensed in from a 3rd party?



Patents

Registered designs

Trade Marks

Copyright (including software)

Database rights

Don’t know

COMPLETE IF YES SELECTED AT C11

C14 Does your organisation measure or monitor the costs involved in licensing in this IP?



Yes

No

Don’t know

COMPLETE IF YES SELECTED AT C13

C15 Approximately how much annually does licensing in cost your organisation, including software costs?



£

Don’t know



C16 Over the next 12 months do you expect the costs for licensing in to…

Increase

Decrease

Not change

Don’t know



Section D: IP Strategy

D1 Please state at what stage your organisation is with the following IP tasks. Please state for each statement if your organisation has completed the task, plans to, is considering, have considered and rejected or have never considered?



  1. Protecting the IP as cost effectively as possible

  2. Creating an IP portfolio to be used to limit competitors commercial activities

  3. Establishing an income stream from third party use of IP

  4. Pursuing a multiple strategy of licensing IP, spinning out new organisations or disposing of to other parties

  5. Creating a documented strategy for management of IP rights

  6. Minimising your tax liabilities through appropriate structuring of your IP portfolio

7. Other

D2 Please state the extent to which you agree with each of the following approaches to the management of IP in relation to your organisation on a scale of 1 to 5 where 1 is strongly disagree and 5 is strongly agree.

  1. We ensure that our organisation ensures effective registration & protection on behalf of any part of businesses that uses the IP

  2. We primarily support the business in providing consistent, appropriate business processes and legal frameworks for effective protection

  3. We actively encourage and reward creation and extended use in order to maximise the income from our IP

  4. IP is a key intellectual asset which we expect management to manage for value within our overall corporate guidelines

D3 Please state at what stage your organisation is with each of the following IP tasks. Please state if your organisation has completed the task, plans to, is considering, have considered and rejected or have never considered?



1.Developing an inventory of all registered IP

2.Develop a registry of all intellectual assets

3.Implementing IP management software

4.Developing performance metrics for IP

5.Evaluating IP tax strategy

6.Developing a process for identifying key assets that can generate additional income from third parties

7.Developing a process for systematic identification of infringements

8.Establishing comprehensive legal barriers to infringement

9.Including IP in Internal audit procedures

10 Regular reporting of IP status to the management board

11.External Reporting of IP



D4 Which of the following has your organisation carried out a valuation of?

Patent portfolio

Brand



D5 Does your organisation plan to carry out a valuation of … in the next 12 months?



Patent portfolio

Brand



D6 Do you outsource any aspects of IP protection or management?

Yes

No

Don’t know



IF YES TO D6

D7 Who do you outsource to?



Trade Mark agents

Patent agents

Law firm

Other (specify)

Don’t know



D8 When you license IP to third parties do you use royalty investigations to ensure the proper royalties are received?



Yes

No

Don’t know



IF YES AT D8

D9 Do you currently use an outside specialist to perform royalty investigations?



Yes

No

Don’t know



D10 What is the average percentage of sales royalties recovered due to royalty investigations?

1-4

60-69

5-9

70-79

10-19

80-89

20-29

90+

30-39

Don’t know

40-49

Refused

50-59




Section E: IP Enforcement

E1 Please state how frequently your organisation has encountered the following types of infringement in the past 3 years. Please state whether it’s never been experienced, not very frequently, quite frequently or very frequently?



Counterfeiting

Grey goods or parallel imports

Violation of patent rights

Violation of registered design rights

Violation of trade mark rights

Violation of database rights



E2 Has your organisation in the past 3 years taken legal action to resolve a dispute about IP rights?



Yes

No

Don’t know



E3 Do the standard terms of your employment contracts include provisions as to the ownership of the IP in creations and inventions of employees?

Yes

No

Don’t know

E4 Is there a formal system of recording your employees’ creations & inventions that can subsequently be protected?

Yes

No

Don’t know

E5 Does your company provide any incentives, financial or otherwise, to employees that are responsible for creations and/or inventions?

Yes

No

Don’t know



Section F: Key Challenges

F1 What have been the biggest challenges to your organisation in the area of IP management? Please rank top 3, 1 being the biggest challenge.



Creating an IP strategy

Setting up a dedicated IP function

Creating a portfolio of IP rights

Protecting the IP rights

Exploiting the IP owned

Enforcing your organisations IP rights

Other (specify)

F2 And what will be the biggest challenges facing your organisation in the next 12 to 18 months?

Creating an IP strategy

Setting up a dedicated IP function

Creating a portfolio of IP rights

Protecting the IP rights

Exploiting the IP owned

Enforcing your organisations IP rights

Other (specify)

Section G: Classification

G1 Company turnover (from ranges provided if possible)
Please state £ Value from range or provide own estimate



  1. more than £5billion

  2. £3billion - £5billion

  3. £2.99 billion -£1billion

  4. £999 million -£600 million

  5. £599 million-£250 million

  6. £249 million-£100 million

  7. £99 million-£50 million

  8. £49 million-£10million

  9. less than £10million


G2 Sector SIC code from sample if available, Also please complete in your own wordsWhat is your company’s primary business activity?”


  1. Agriculture, forestry & fishing

  2. Mining

  3. Construction

  4. Manufacturing

  5. Transportation

  6. Communication

  7. Wholesale Trade

  8. Retail Trade

  9. Finance, Banking, Insurance

  10. Real Estate

  11. Services, Utilities, Consulting

  12. Medical / Healthcare

  13. Government

  14. Import / Export

  15. Media

  16. Other (specify)

17 Own words


G3 Respondent name

G4 Position

G5 Company name

G6 Company address


G7 Telephone
G8 Email
G9 Fax
G10 SPS Member
G11 Web site URL
Thank you for completing the questionnaire.
We will be in touch to make arrangements to discuss our findings with you. It is our normal policy to meet with you or representatives of your organization before finalising your Executive Report
Please contact the Intellectualpropertynet team with any further questions.
info@intellectualpropertynet.com


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