IP strategy tk
Create effective IP coverage for our businesses efficiently
2017 | Dr. Stephan Wolke
thyssenkrupp | CO-TIS Intellectual Property and Services
3 | IP within tk – S. Wolke
IP strategy tk: Create effective IP coverage for our businesses efficiently
Effective IP coverage to secure our businesses
Efficiently created IP
Have the business decide on IP
Build IP community & create awareness
Manage brands strategically as part of IP
Manage external services and insource
Create a common IP shield
Stimulate & Incentivize IP creation
Give direction and IP focus
Understand competitive IP environment
4 | IP within tk – S. Wolke
IP situation tk has been improved
Effective IP coverage
Efficiently created IP
DPMA
(Rank 39)
Reduction of prices for IP servicesReimburse-ment to BUs
in % in Mio EUR
Price 17/18
Price 15/16
-x% -x%-x%
16/1715/1614/15First
Filing
Pre-
check
PCT
National
.
EP
Region
EP
Validat.
PCT
Basis
(Rank 14 of German applicants)
14
EPO
+45%
16
/17
18.765
17.73016.984
16.284
15.679
20
12
12.968
+55%
16
/17
475449409
389370
20
12
306
Portfolio
optimization
started
First filings Patent stock
5
16
/17
20
12
-13%
16
/17
20
12
in Mio EURPatent
lawyers
Trademark lawyers
Insourcing &
IP law firm
managemen
t
IP
coverage
extended
IP professionals IP Costs
If ranked as
one instead of
two owners
39
15
Partially by
price reduction
5 | IP within tk – S. Wolke
IP strategy tk: Create effective IP coverage for our businesses efficiently
Effective IP coverage to secure our businesses
Efficiently created IP
Have the business decide on IP
Build IP community & create awareness
Manage brands strategically as part of IP
Manage external services and insource
Create a common IP shield
Stimulate & Incentivize IP creation
Give direction and IP focus
Understand competitive IP environment
6 | IP within tk – S. Wolke
Create a common IP shield
Representation
at patent office
(patent filing)
TK AG
Inventing
legal entity
Representation
at court
(infringements)
Representation at
customers / partners
(licencing)
Trustee
contract
Patent
office
Court of
law
Customer / competitor / LE
Model
How
it w
ork
s
Legal entityTK AGTK AG and LE
have declaratoric
ownership
Only legal entity
has economic
ownership
TK AG represents
legal entity at
patent office
In most cases TK
AG represents legal
entity in court of law
Internal and
external licencing
agreements need to
be signed by legal
entity & TK AG
External
Implemented now in all relevant countries
7 | IP within tk – S. Wolke
Use of IP shield - we started to use our IP to defend our businesses:
tk won dispute at Chinas highest IP court
thyssenkrupp built and delivered product –Tianda filed Chinese patent
Tianda filed law suit against us, won severalinstances, but tk finally prevailed
Outcome for tk
• tk has won the case because of its persistance to
go all the way to the last instance
• The victory is important to tk because negative image
as infringer was avoided
• Legal certainty for tk was achieved regarding „prior
use defense“ as defined in Chinese Patent Law of
2009
Higher general significance of the case
• Supreme Court has issued a „judicial interpretation“
clarifying the concept of „prior use defense“
• Legal certainty for companies doing business in CN
2001 2004 2010 2011 2012 2014 2016
• 13th annual WIPO conference together with SIPO
November 2016 in Beijing
• thyssenkrupp invited as industry speaker
("Building up an effective IP shield efficiently in an
international engineering conglomerate“ – S.
Wolke)
tk built and delivered
the product in the US
- no patents filed in CN
or elsewhere
Competitor
Tianda filed CN
patent for this
product
tk built and
delivered the
product in
CN
Tianda filed
patent
infringemen
t law suit
against tk
1.
instance
decision
in favour
of Tianda
2.
instance
decision
to uphold
decision
of 1.
instance
3. instance decisionof Supreme People‘sCourt to reverseprevious decisionsand dismiss all claims
Ranked as TOP 1 case
among the top 50
cases of Chinese
Patent Office SIPO for
2016
Additional success:
UIF won over Technip
Zimmer at Board of
Appeal of the EPO
(2011 – 2017), AZ R 01/16
8 | IP within tk – S. Wolke
IP strategy tk: Create effective IP coverage for our businesses efficiently
Effective IP coverage to secure our businesses
Efficiently created IP
Have the business decide on IP
Build IP community & create awareness
Manage brands strategically as part of IP
Manage external services and insource
Create a common IP shield
Stimulate & Incentivize IP creation
Give direction and IP focus
Understand competitive IP environment
9 | IP within tk – S. Wolke
Stimulate & Incentivize IP creationIP trainings for all groups
Flat fee remuneration
> 50 workshops
conducted so far
• 5 – 20 engineers
• ½ - 1 day
• 5 – 10 engineers
• 1 – 2 days
• 5 – 20 engineers
• 1 day
• 5 – 10 engineers
• Marketing & Sales
• 1 day
• 5 – 10 engineers
• Service employees
• 1 day
• 5 – 10 engineers
• IT experts
• 1 day
Setup
TRIZ
Idea
Harvesting
KBF IP
Spare part
IP
Software Hardware
IP
own IP
Workaround
Idea Workshop
Depending on• Revenue• Proportion of invention in product• Industry specific license rate
1,30
CN0,37IN 0,05AS 0,03
0,66
EU
0,71NA
Inventiveness (= # InvRep / # R&D-FTE)
#R
&D
F
TE
s
229
Inventiveness Potential
10 | IP within tk – S. Wolke
Effective IP coverage to secure our businesses
Efficiently created IP
Have the business decide on IP
Build IP community & create awareness
Manage brands strategically as part of IP
Manage external services and insource
Create a common IP shield
Stimulate & Incentivize IP creation
Give direction and IP focus
Understand competitive IP environment
IP strategy tk: Create effective IP coverage for our businesses efficiently
11 | IP within tk – S. Wolke
Give direction and IP focus
Technology
tree Own IPCompetitor
IP
IP gap
to competitors
Technology focus
of Innovation Dialogue
IP goal
Target
portfolio
future IP focus
future IP focus
How can our technologies be sorted ?
How are these technologies covered with own IP ?
How do competitors cover these technologies with IP ?
In which tech-nologies do we have IP gaps ?
In which technolo-gies do we want to invest strategically ?
Thus, where to focus our IP ?
Technology
landscape tk
IP focus of all
Business
Units
12 | IP within tk – S. Wolke
Embedded within the annual Innovation Dialog
Ensuring IP effectiveness & IP efficiency as results of the annual IP dialog
Goals Input/discussions Results
• Innovation dialog
• Top 5 todays & top 5 future products
• New IP foci
• IP portfolio • Portfolio decisions(families, countries)
based on Coreness Detectability
• Licensing (int./ext.)
• Competitor observation results
• Invention on demand workshop planning
• Overview licensing income
• Licensing strategy
• Ambition setting
• IP budget
x
x
x
Countries
TK A B C
0
10
20
30
40before
after
Patent
families
# of countries of
a patent family
Effective IP coverage
"Are ourbusinessesprotected?"
Efficientlyused IP
"Do we use our IP-resources wisely?"
13 | IP within tk – S. Wolke
Effective IP coverage to secure our businesses
Efficiently created IP
Have the business decide on IP
Build IP community & create awareness
Manage brands strategically as part of IP
Manage external services and insource
Create a common IP shield
Stimulate & Incentivize IP creation
Give direction and IP focus
Understand competitive IP environment
IP strategy tk: Create effective IP coverage for our businesses efficiently
14 | IP within tk – S. Wolke
Understand competitive IP environment
* as for patents and trademarks, all IP-/patent related researches need to be conducted by /
ordered thru IPS in order to ensure quality and consistency
Get freedom to operate
Understand
risk and
probability
Decide necessity and
degree of FTO
Develop
around or
take licence
Destroy competitor IP
Patent
not
publishe
d
Publicatio
n of patent
filing
Gra
nt
Grante
d
patent
Public
ation
Fili
ng o
f pate
nt
File
opposition
File nullity
plea
18 months
Rationals for IP competitor observation
Implemented for ca. 700 users
IP intelligence as a service
From <5 to 30 .. 50 p.a.
From < 3 to 40 .. 80 p.a.
15 | IP within tk – S. Wolke
Toolset for infringement detection
Reverse Engineering
Public Material Analysis Structured & prepared Trade Fair Visits
Sales-/Service Field Force Approach
16 | IP within tk – S. Wolke
Understand competitive IP environment Overview of Methods for IP Valuation
• M&A
• Licencing
• Accounting
• Controlling / KPI
• Purchasing
• Sales
• Cooperations
• Investor
Relations
• Liquidation /
Insolvence
Cost-based methods
Income-based methods
Market-based methods
Option pricing
typically used for
young patents
typically used
for
mature patents
or portfolios
typically used for
larger portfolios
typically used
for
IP in pharma
Patent value = Advantages / Disadvantages Effort needed
Sum of historic costs
for filing and
maintaining
+ simple to apply, clear value
Not related to income, very
imprecise (costs ≠ value)
• Cost controlling of application
• Low effort for determination
Patent value = Advantages / Disadvantages Effort needed
WACC-discounted sum
of future internal and
external cash flows
+ well-established
many parameters to be
determined
• Knowledge about possible
income
• Influenced by many
parameters
Patent value = Advantages / Disadvantages Effort needed
Value of recent other
portfolio transaction
adjusted by multiples
+ Future use is considered
Deep knowledge about his-
torical transactions
needed
• Offer patent to market
• Collect information about
comparable transactions
Patent value = Advantages / Disadvantages Effort needed
Real option value of
patent taking into
account future options
+ Low starting cash-flows
and high risks can be
assessed
Raw data difficult to assess
• Difficult calculation, many
parameters
Why IP Valuation ? Methods for IP Valuation
17 | IP within tk – S. Wolke
Effective IP coverage to secure our businesses
Efficiently created IP
Have the business decide on IP
Build IP community & create awareness
Manage brands strategically as part of IP
Manage external services and insource
Create a common IP shield
Stimulate & Incentivize IP creation
Give direction and IP focus
Understand competitive IP environment
IP strategy tk: Create effective IP coverage for our businesses efficiently
18 | IP within tk – S. Wolke
Have the business decide on IP: Within the Operative Patent Councils all
IP decisions are taken by the Business Units, then handled by IP
ServicesBUs
• Own IP economically
• Decide about IP coverage
IPS• Conducts IP filing
• Ensures IP protection
Head of R&D Head of M&S
IP CoordinatorTM
Coordinator *
Typical organizational
embedment
Main contact points
within BU
Responsibility
within OPC
Primary contact with
IPS-organization
• Part of R&D/TIS
organization
• Part of M&S, COM or
PLM organization
• Contact to all
inventors
• Contact to M&S,
COM & PLM people
• Proposes patent
decision to OPC
• Proposes trademark
decision to OPC after
approval from BA/COM
• Acts with patent
lawyer within IPS
• Acts with trademark
lawyer within IPS
• Generating new
Intellectual Property
Rights
• Transfer of IP
• Disputes relating to
Intellectual Property
• Amendments of IP
clauses in contract
templates
(also embedded in
TRA catalog)
* responsible for trademarks and domains
Operative Patent Council
Standard
OPC tool
& discussion
process
Fully automizedwith OPC 2.0
19 | IP within tk – S. Wolke
Effective IP coverage to secure our businesses
Efficiently created IP
Have the business decide on IP
Build IP community & create awareness
Manage brands strategically as part of IP
Manage external services and insource
Create a common IP shield
Stimulate & Incentivize IP creation
Give direction and IP focus
Understand competitive IP environment
IP strategy tk: Create effective IP coverage for our businesses efficiently
20 | IP within tk – S. Wolke
Build IP community & create awareness: IP Coordinator Meeting
WE build the IP community@tk
Discussion about what IP communities needed Sessions at IP Coordinator Meeting 2017
Building the IP community of tk
IP effectiveness IP efficiency
PatOrgIP shield
IP
decisio
n
IP
observation
R&D
IP
coord.
IPS
IP DialogOPC2.0
IP Research advisory
board
PatOrg advisory board
PatOrg
Wiki
Role / Target:• Involvement of IP Coordinators• Increase of usability
Staffing: • ~ 5 IP
coordinators• 1 per BA
21 | IP within tk – S. Wolke
Create IP awareness: IP in every contract
Aspects to be considered
• Exclusion of liability
regarding patent
infringement
• No licenses for tk
IP except in special
sit.
• Regulations
concer-ning
sublicenses
("no" as default)
• Prevent second
sources via IP
• Limit licenses to
product
geograph.
region(s)
time span
partner (in
coop.) kind of
use
• Include "hold-
harmless-clause"
regarding infringe-
ment of 3rd parties
IP, e.g.
other suppliers
all pre-suppliers
other customers
• Freedom to assign
2nd source to
deliver goods using
suppliers IP
• Defined fractions of
ownership
• Clear rules and
clauses who is
allowed to use the
results (what,
when, how, where)
• Ideally freedom for
tk regarding
IP generation
country portfolio
licensing
• Clear rules for
background IP
foreground IP
• Cost allocation
• Responsibility for
filing & prosecution
• Inventor remunerat.
• Close 2 contracts
with
institute/univ.
academic
personnel
in order to avoid
"negative publication
right" of professors
for "Diensterfindgen"
(§42 ArbEG)
• Set up publication
rules regarding
timeframe
• Define price for
buying inventions
from university /
professors
• Regulate "rights of
use" for development
results
• Include IP
clauses to ensure
ownership of
inventions for tk
legal entity in
CEO contracts
contracts with
graduands
contracts with
interns
contracts with
every person
not covered
by German
"Law on
Employee
Inventions"
Group Employees SuppliersCooperation
partnersAcademic partners,
specifically in Germany Customers
22 | IP within tk – S. Wolke
Create IP awareness: KPIs measure achievement of strategic IP goals
R&D spend
R&D
yield
# first filings
# inventions
Selectivity
# country files
# first filings
Country
spread
# stock of
patent families
# first filings
Innovation
rate
IP density
Revenue
# stock of
country files
ProcessInvention
development
First filing Country filing Stock of
patent families
Stock of
country files
IP
KPIs
Quarterly standard IP reporting
• Quarterly
reporting
• Yearly full
reporting of
all IP KPIs
for
discussion
with CTOs &
R&D headsBasic figures Annual IP reporting
OPC
Create
inventions
Ensure
IP quality
Develop
IP shield
Renew
IP shield
Benchmark
IP shield
Strategic
IP goals
# inventions
23 | IP within tk – S. Wolke
Effective IP coverage to secure our businesses
Efficiently created IP
Have the business decide on IP
Build IP community & create awareness
Manage brands strategically as part of IP
Manage external services and insource
Create a common IP shield
Stimulate & Incentivize IP creation
Give direction and IP focus
Understand competitive IP environment
IP strategy tk: Create effective IP coverage for our businesses efficiently
24 | IP within tk – S. Wolke
Manage brands strategically as part of IP: Our new trademark department
Filing of our company
brand thyssenkrupp
Filing of all tk trademarks (legal entities & products)
Securing our traditional brands
Brand management processes
Day1: IP coord., Day2: Brand
protect.
GLOBAL: 15.-17. of May,
Landsberg
NAFTA: 26./27. Sept: Chicago
LATAM: 17./18. Oct: Sao Paulo
INDIA: 7./8. Nov: Mumbai
ASIA: 13./14. Nov: Singapore
CHINA: 28./29. Nov: Beijing
* = issued office actions incl. single classes
25 | IP within tk – S. Wolke
Effective IP coverage to secure our businesses
Efficiently created IP
Have the business decide on IP
Build IP community & create awareness
Manage brands strategically as part of IP
Manage external services and insource
Create a common IP shield
Stimulate & Incentivize IP creation
Give direction and IP focus
Understand competitive IP environment
IP strategy tk: Create effective IP coverage for our businesses efficiently
26 | IP within tk – S. Wolke
Manage external services: Consolidation of IP law firms and
systematic purchasing of services
Germany30+ 11
75 10
20 6
20 6
• Xx
• Xx
• Xx
• Xx
• xx • xx
• Xx
• Xx
• Xx
• Xx
• Xx
• Xx
Australia:
Brazil:
Canada:
India:
Japan:
Korea
(S):
Lat.
Amer.
Xx
Xx
Xx
Xx
Xx
Xx
Xx
Review
talksReview
talks
Review
talks
Review
talks
Review
talks
Review
talks
Review
talks
China
US
Brazil,
Canada,
India, Japan,
South Korea
Instru-
ments of
IP law
firm
manage-
ment
For Trademarks
• Xx
• Xx
Standardized list of services Systematic qualitative review Systematic quantitative review
New highly specializedlaw firms for computerimplementedinventions
• Xx
• Xx
• Xx
• Xx
27 | IP within tk – S. Wolke
thyssenkrupp Intellectual Property GmbH• Contains all IP activities of ThyssenKrupp
• With locations in Essen and Duisburg
• Patent lawyers in RHQs Beijing & Chicago
Insource: After 120 years IP at tk moves into new organizational
setup
Source: Historisches Archiv Krupp
Patent for seamless wheel tire filed 21st of March
1853
IP department founded 2nd of March 1895
The new
tk IP GmbH
28 | IP within tk – S. Wolke
Confidential For Team Meeting
For Information
CF TIS IPS tk IP GmbH, Status 15.11.2017
• IP law firm management
• IP finance• IP reporting• Projects &
Admin
• IP strategy• Invention
stimulation• Competitor
observation• IP analytics
• First filings & Subsequent filings for teams ET/IS
• First filings & Subsequent filings for teams SE/CT
• America/Asia coordination
• IP creation• IP decision
support• IP contracts• IP advice• Patorg• IP risks
• tk brand• Product
brands
• Local nationalizations• Local first filings
• Inv. incent.• Inv. remun. • Flat fee
• IP creation• IP decision
support• IP contracts• IP advice
• IP creation• IP decision
support• IP contracts• IP advice
• IP creation• IP decision
support• IP contracts• IP advice
• IP in contracts
Wolke
IP
Operation
s
IP
Strategy /
Research
Schulze
IP Admin
ET/IS
Sow
IP Admin
SE/CTAmericas
Cassin
CT / CO
Adams
König
IS
Pflughoefft
Klinkert
Langen-bach
Siemasz-ko
von Scheidt
ET
Ossmann
Erdogan
SE / MX
Groth
Rösgen
Ulrich
Trade-
marks
Hang
Asia
Yu
Feld-mann
HörichHampel
Pangsy
Schnei-derCoye
Mahler
Pings-mann
Kurth
Uhrhan
Placzek
Ising
Wycisk
Kroll
Baade
Wege-
ner
Hollet-schek
Kirch-heim
Braun
Kreutzer
Harazim
Turow-
ski
Roschy
Ranft
Lange
Ambor
Jacobi
Frank
HarmerMänz
Kohlhof
Filips
Stein-busch
Weis-gerber
Kauff-mann
Albrecht
Hong-mei Ma
Sunying
Bram-bach
Gierlings
Held
Becke-herm
Pappas
Kou-kounisLively
Pixberg
Kong
Monken-
busch
Thüner
Selimaj
Wojczyk
Heinrich
Bäcker
Kolbe
Meyer-
Gramann
Bartholo
-mäus.
Brune
>1.1.
Weiß
Stöw-hase
Daolio
Volk
Krüger
Zeciro-vic
Zhang
Wanke
Fischer
Fonder-
mann
Bier-brauer
> 1.1.
Hanft
> 15.12.
Friedrich
> 1.2.
Ziems
> 1.12.
Just reached
100+
29 | IP within tk – S. Wolke
We started communication with and participation in the IP world
TK
internally
(WE, ..)
"Official"
IP bodies
Inter-
national
experienc
e
exchange
VDMA
IP group
Wirtschafts-
Vereinig Stahl
BDI
IP Group
Global
Patent
Congress
9/2015
Copenhagen
Patente
2016
1/2016
Munich
Build up IP
departmt /
FTO-search
Inv. Incentive
WE 2/2014
120 years IP within tk
WE 4/2015
Founding tk IP GmbH
WE.lead 11/2015
Campaign "Inventors"
on tk webpage
techforum
China, USA, India
2015, 2016, 2017
Quality Brands
Protection Com-
mittee China
IP department
WE 5/2014
Patent Docu-
mentation
Group
VDA
IP Group
Strategic IP
Forum
Cambridge
5/2016
Global
Patent
Congress
Brussels
10/2016
Association of
Europ. Trade-
mark Owners
Federal
Circuit Bar
Association
SMPG /
WIPO
Shanghai
11/2016
Global IP
Convention
New Delhi
1/2017
IP
Service
World
Munich
11/2016
World IP
Forum
Bangalore
4/2017
Pat-Tech
Exchange
Dublin
6/2017
PatInfo
Ilmenau
6/2017
CEPS
Round
Brussels
5/2017
DIN IP
Group
EPO Acad.
Advisory B.
Intn.
Tradm
Assoc
30 | IP within tk – S. Wolke
Effective IP coverage to secure our businesses
Efficiently created IP
Have the business decide on IP
Build IP community & create awareness
Manage brands strategically as part of IP
Manage external services and insource
Create a common IP shield
Stimulate & Incentivize IP creation
Give direction and IP focus
Understand competitive IP environment
IP strategy tk: Create effective IP coverage for our businesses efficiently
31 | IP within tk – S. Wolke
Questions welcome
Dr. Stephan Wolke
thyssenkrupp Intellectual Property GmbH
(CEO)
thyssenkrupp AG
Corporate Function Technology, Innovation & Sustainability
(Head of Intellectual Property & Services)
+49 173 205 6772