motorola case study: digitization of the iam lifecycle

Beyond IP Strategy – Successful Implementation of IP Strategy through Harmonized Process & Tools

Maria ThompsonDirector, Intellectual Asset ManagementMotorola Law Departmentwww.linkedin.com/in/mariabthompson

Paris, 6/27/10

ADVANCING THE WAY THE WORLD CONNECTS

Cleared for External Release Successful Implementation of IP Strategy through Harmonized Process & Tools, v1.3 MOTOROLA and the Stylized M Logo are registered in the US Patent & Trademark Office. All other product or service names are the property of their respective owners. © 2008 Motorola, Inc. All rights reserved.

• Motorola is known around the world for innovation in communications and focused on advancing the way the world connects.

• From broadband communications infrastructure, enterprise mobility and public safety solutions to high-definition video and mobile devices, Motorola is leading the next wave of innovations that enable people, enterprises and governments to be more connected and more mobile.

• Motorola (NYSE: MOT - News) had sales of US $22 billion in 2009. For more information, please visit www.motorola.com.

• More than 35,000 global pending and issued patents

About Motorola


IP Strategy Components

IP PolicyCreation

IP PolicyCreation

PortfolioValuation

PortfolioValuation

ProcessUpdating

ProcessUpdating

TechnologyManagement

TechnologyManagement

IP StrategyIP Strategy

- Update Organization- Create Goals- Establish Metrics

-Value Assets-Commercial Opportunities-Defense

-Identify Processes-Hold Working Sessions-Document Processes-Implement Processes

-Design Processes Updates-Implement New Design-Monitor Progress

Implementing an IP Strategy requires a company to embark on the four initiatives identified below.


Strategy(policy)

Tactics(procedure)

STAMP

IAM Council

IAM ToolsCommittee

Systems(automation)


IP Policy Creation Initiative

• Establishes the declaration of management’s commitment to and involvement in IP management statement of policy

• Creates a statement of objectives, separated into short and longer term goals

Company will:

1. Create Oversight Committee’s responsibility, structure, membership and reporting mechanisms.

2. Create an action plan

3. Identify resource requirements, staffing and organization

4. Establish

– Performance indicators

– Procedures

– Milestones and mechanisms for assessing overall project progress

– Mechanism to monitor success

Project History

• 2006: Motorola embarked on a project

– select an intellectual asset management system that would provide continuous improvement and alignment with IAM strategy

– system to provide integrated, end-to-end, seamless environment with additional functionality

• Aligned with Corporate IT direction to migrate from homegrown systems to commercially available systems.


Leadership’s Vision

An integrated, end-to-end, seamless environment +

Additional capabilities required:• Portfolio management and strategy alignment

• Comprehensive and flexible reporting

• Knowledge sharing and knowledge management

• Global view of IA, including contexts such as licensing, products, and standards and user-configurable dashboard views

• Classification of assets by technology, business initiatives, etc.

• Automation of workflow and standard processes

• Integration of trademark and copyright management


Project History

• Huron Consulting Group engaged to – provide neutrality

– evaluate 3 commercial integrated IAM lifecycle management tools vendors

• Motorola selected Thomson Reuters IP Manager solution

Motorola Confidential Restricted March 201010

Motorola Businesses

HomeMobile Devices

Enterprise Mobility Solutions

Networks


IP Management at Motorola-project inception-

• Decentralized…– Intellectual Asset Managers, Patent Attorneys,

administrators, docketing dedicated to each business– Business-centric patent committees for disclosure

review & disposition – Dedicated analysis, decision processes per business– Business-centric patent application filing, prosecution,

& maintenance –assessed value of IP within each business portfolio context


• Delivers documented essential processes for the IP Function.

• After creation, the processes are documented, published and updated yearly (yearly review) or as processes change.

Company will:

1. Identify all processes that need to be updated

2. Conduct process workshops with each business group as necessary

3. Document, publish, and train IP community on updated processes

Process Updating Initiative


Team baselined existing business processes Identified best practices & harmonized IAM process The harmonized IAM process used to:o Generate the (Functional Requirements Specification)

FRS used in benchmarking & system selectionoDefine requirements for systems design and

functionalityoBusiness policies and goals disparate – harmonized

process useful for everyone, with mandatory & optional steps

Process Harmonization

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However, the priorities and focus to achieve seamless life cycle management differ between Strategy & Business Process and Legal Process participants*

Feature Sets OverallStrategy &

Business ProcessLegal Process Management

Reporting 1 2 4

Contextual view of IP 2 1 2

Dashboard 3 4 1

Categorization of Assets 4 3 3

Patent Analytics 5 5 5

Management and Workflow 6 7 8

Docketing 7 8 10

Recognition 8 5 11

Collaboration 9 9 7

Document Management 10 11 6

Budgeting and Forecasting 11 10 9

Reponse rate28 responses out of 50

surveys Sent Out18 responses out of 24

surveys Sent out8 responses out of 17

surveys Sent Out

*excludes docketing personnel


IP Management at MotorolaEvolution

• Harmonization of Patent Portfolio Strategy & Management– Corporate-wide (cross-business) strategic technology areas– Harmonized best-in-class processes for review, filing, prosecution,

annuity, secondary filing decision-making– Pooling of resources for patent committee reviews, technology

focus areas gap analysis, attorneys and administration of global patent portfolio

– Economies of scale: centralized & integrated systems and tools aligned with harmonized processes

– Less dependency on experts; shared knowledge– Greater ROI per patent filing (in support of multiple business

strategies & products)– Lower costs for fewer targeted filings; quality over quantity


The Technology Management Methodology allows Company to measure value & performance & track critical data allows Company to automate its newly harmonized IAM Processes

Components of Methodology:1. Document user requirements for relevant systems2. Conduct design sessions with stakeholders 3. Document new technology design

– Integrations4. Create updated technology environment5. Test new technology environment6. Train users on new environment7. Continuous improvement to processes & technology environment

Technology Management

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Critical Success Factors: Project Execution

5.0SUSTAIN

the change

4.0User

TRAINING

2.0PROCESS

improvement

3.0AUTOMATE

and DIGITIZE

1.0EngagePEOPLE

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MOTOROLA

1998 2000 2002 2004 20082006Pre 1998

Manual Workvery few tools:

IP Master

MO

TO

RO

LA

WH

O D

OES

TH

E W

OR

K

U.S. workOUTSOURCED

A few more tools:

eIntelligenceKoko

QUEST: PROVIDE MORE FOR LESS TO CORPORATION

GOAL:PerformPATENTWORK

ANYWHERE

FlexibilityRequired to

Achieve Target

Cost Levels

ENABLED BYPAPERLESS

PATENTPRACTICE

PPP&

eInt

Need a planTo enable Vision

Foreign workOUTSOURCED

Rethinking the Patent Case and the Work

19

LAW DEPARTMENT MAJOR TOOLS

NDA.mot.com

LD Website (s)LD

TOOLSSPAN

IP & GL

LRNTraining

Legal Research

WorksiteiManageTyMetrix

Financial ReportingBusiness Reporting

Knowledge Share

Subscription / SupportTools

IP - Strategy: Continuous Improvement and Efficiency & Tool Retirement and consolidation (Koko/IP Master to IP Manager)

- Cost reduction pressure drove digitization, process

improvements, and productivity increases

eIntelligence

Patent Disclosure

System

IP IP MasterPatent

DocketingSystem

KoKoPP

ManagementSystem(Filed/

Granted)IP Foundation Systems-Primary & Secondary

ThomsonAurekaPatent

AnalysisSearch Tool

PPP and PTP

IPManager IPR Portfolio Management &

Docketing System

PatentOptimizer


1. Obtain Sponsorship and Key Stakeholder buy-in (incl. IT!)2. Design harmonized processes before (Functional Requirements

Specification) FRS generation, benchmarking and system selection3. Vendor demo approach – by targeted FRS communities4. Partnering closely with vendor to ensure mature approach to system

design and development5. Manage & staff CONVERSION of legacy systems as a separate sub-project6. Business Process Analysts test technology alignment with FRS before

user acceptance testing7. Dual Docketing for one month!8. Weekly MOT project team + vendor calls9. Weekly communication & update of issues list10. On-site vendor visits11. Deployed TRAINING by: functional team, process-based and individual

Lessons Learned (IP Manager Technology Deployment)


Questions?

22

Maria B. Thompson

Maria is Director of Intellectual Asset Management Process and Tools in Motorola's Law Department. She manages a team of Intellectual Property Rights (IPR) Process and Information Technology specialists, benchmarking industry best practices, ensuring stability of IPR management tools, and applying Digital Six Sigma principles to continuously enhance systems and tools and automate processes for increased operational efficiency, as well as data currency and accuracy. This current role includes facilitation of Directed Innovation sessions, generating technology and product-focused solutions to problems and ensuring their codification as patent disclosures or product features. For the last 10 years Maria has applied her expertise to automating legal business processes and facilitating innovation.

During her 20-year tenure with Motorola and

prior 10 years with AT&T Bell Laboratories, her

job roles have included: software engineering

systems and tools Applied Research; Process

Design, re-engineering & improvement;

Benchmarking best practices; Operations

Management, Software Quality Assurance

management, and culture change applying the

SEI's Software Capability Maturity Model to

software organizations; patent portfolio

analysis, patent disclosure review & prior art

searching.

SPECIALTIES

Education and certification Bachelor of Science, Computer Science &

Statistics, Iowa State University Masters of Mathematics & Computer

Science, University of Waterloo, Canada

Special HonorsMotorola CTO Leadership Award for Orchestrating & Facilitating inventing sessions to generate record-breaking number of high-value patent disclosuresMotorola Women's Business Council Leadership, Mentoring & Networking Awards

2 Patents: US6985696: Method and Apparatus For Facilitating Wireless Communication with a Nonautomotive Roaming Object, AND US7539796: Configuration management of an electronic device wherein a new configuration of the electronic device is selected based on attributes of an application

Several Best Paper Awards for Motorola technical conferences;

Motorola Software People Champion.

NCR Most Promising Computer Science Student, ISU.

Director, IAM Process & ToolsMotorola Law DepartmentP [email protected]

• Creative Problem Solving• TRIZ (Theory of Inventive Problem Solving)• Change Catalyst• Systems Dynamics• Scenario Planning• Invention & Innovation Facilitation• S/W & Systems Management• Information Technology• Human-Computer Interaction• Telecommunications• Communication devices• Org. & Process design, re-engineering & Improvement ( a la SEI CMM)• IPR Management• Prior Art Searching• Patent legal processes & tools• Patent Analytics

motorola case study: digitization of the iam lifecycle

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