MT5001 IP Management

AY 2016/2017

AY 2016/2017 Semester 1
MT 5001 IP Management
Prof. LIU Shang Jyh ()
Visiting Professor, Division of Engineering & Technology Management,
Faculty of Engineering, National University of Singapore
email: etmlsh@nus.edu.sg
Professor & Dean, School of Law,
National Chiao Tung University (), Hsinchu, TAIWAN
email: sjliu@mail.nctu.edu.tw
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 Taiwans
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, APECs Strategic Intellectual Asset Management for Emerging
Enterprises, a chapter to WIPOs 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.

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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,

in

particular

Surface

Acoustic

Wave

(SAW)

components

designs,

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,

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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.

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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 students 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.

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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

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(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.

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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 Managers Guide to Profiting from Patent Portfolios,
Wiley.

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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

Course Topics

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)

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)

Examination Week

No written exam