IP Library Granted Patent US 8,560,419
Granted Patent B2
US 8,560,419 · App. 12/284,233 · Granted Oct 15, 2013

System and method for developing technology assets

Inventor: Christopher P. Ricci (Dayton, OH)
Assignee: Avaya, Inc.
G06Q40/06
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Quick Facts
Patent No.
US 8,560,419
App. No.
12/284,233
Granted
Oct 15, 2013
Kind
B2
Abstract

An automated method for developing new products within a development entity, comprises receiving respective catalogs of technology assets, each including at least one of a patent, trade secret, know-how, documentation, prototypes, pre-production units, production samples, tooling, and demonstration frameworks. Each catalog corresponds to a discrete pool of technology assets having subject matter in common. The development entity also receives, from the originating owner, title to each pool in exchange for an equity interest in the development entity and an option to re-acquire the pool upon payment of a reacquisition fee to at least one primary investor. Further development of each technology asset pool is funded by at least one primary investor, who receives an equity interest in the development entity in exchange for its capital investments. Costs expended by the development entity to develop new product concepts corresponding to each asset pool are separately tracked. If the re-acquisition option is exercised, these costs form the basis for calculating the fee to be paid. If not, monetization is achieved by selling and/or licensing elements the enhanced technology asset pool to a spin-off entity funded by at least one secondary investor.

Claims (30)

1. A method for developing and tracking technology assets in a computer system, said method comprising:

receiving from an originating owner a first catalog of technology assets including at least one of a patent, trade secret, know-how, documentation, prototypes, pre-production units, production samples, tooling, and demonstration frameworks, said first catalog corresponding to a first pool of technology assets having a subject matter in common;

receiving from said originating owner, at said development entity, title to said first pool of technology assets in exchange for an equity interest in said development entity and an option to re-acquire the first pool of technology assets for a reacquisition fee;

receiving from at least one primary investor, a capital investment in exchange for an equity interest in said development entity;

storing information about the received first catalog and title to said first pool in one of at least one database, wherein both said development entity and said primary investor are enabled to access the one of at least one database by use of a database interface;

selecting a first new product concept from said first pool of technology assets for development activity by the development entity;

tracking, in one of at least one database, costs expended by the development entity to develop said first new product concept and to acquire proprietary rights associated with said first new product concept and associating said costs with the stored information, wherein both said development entity and said primary investor are enabled to access the one of at least one database by use of a database interface; and

transferring said first pool of technology assets, including results of all development activity relating to said first new product concept, to a first spin-off entity unless the originating owner tenders the reacquisition fee, wherein said first spin-off entity is enabled to access said one of at least one database upon transfer.

2. The method of claim 1 , said method further including:

receiving from said originating owner a second catalog of technology assets including at least one of a patent, trade secret, know-how, documentation, prototypes, pre-production units, production samples, tooling, and demonstration frameworks, said second catalog corresponding to a second pool of technology assets having a subject matter in common;

receiving from said originating owner, at said development entity, title to said second pool of technology assets in exchange for an additional equity interest in said development entity and an option to re-acquire the second pool of technology assets for a reacquisition fee;

storing information about the received second catalog and title to said second pool in one of at least one database, wherein both said development entity and said primary investor are enabled to access the one of at least one database by use of a database interface;

selecting a second new product concept from said second pool of technology assets for development activity by the development entity;

tracking, in one of at least one database, costs expended by the development entity to develop said second new product concept and to acquire proprietary rights associated with said second new product concept and associating said costs with the stored information, wherein both said development entity and said primary investor are enabled to access the one of at least one database by use of a database interface; and

transferring said second pool of technology assets, including results of all development activity relating to said second new product concept, to a second spin-off entity unless the originating owner tenders the reacquisition fee, wherein said first spin-off entity is enabled to access said one of at least one database upon transfer.

3. The method of claim 2 , said method further including:

receiving from a second originating owner a third catalog of technology assets including at least one of a patent, trade secret, know-how, documentation, prototypes, pre-production units, production samples, tooling, and demonstration frameworks, said third catalog corresponding to a third pool of technology assets having a subject matter in common;

receiving from said second originating owner, at said development entity, title to said third pool of technology assets in exchange for an equity interest in said development entity and an option to re-acquire the third pool of technology assets for a reacquisition fee;

storing information about the received third catalog and title to said third pool in one of at least one database, wherein both said development entity and said primary investor are enabled to access the one of at least one database by use of a database interface;

selecting a third new product concept from said third pool of technology assets for development activity by the development entity;

tracking, in one of at least one database, costs expended by the development entity to develop said third new product concept and to acquire proprietary rights associated with said third new product concept and associating said costs with the stored information, wherein both said development entity and said primary investor are enabled to access the one of at least one database by use of a database interface; and

transferring said third pool of technology assets, including results of all development activity relating to said third new product concept, to a third spin-off entity unless the second originating owner tenders the reacquisition fee, wherein said first spin-off entity is enabled to access said one of at least one database upon transfer.

4. The method of claim 1 , wherein selecting a first new product concept includes analyzing several product concepts having common subject matter related to said first pool of technology assets, analysis being with respect to at least one of marketability, patentability, and technical feasibility.

5. The method of claim 4 , wherein tracking further includes tracking costs associated with said selecting.

6. The method of claim 1 , wherein said re-acquisition fee is calculated as the product of the costs tracked during said tracking and a scale factor negotiated by said originating owner and said at least one primary investor.

7. The method of claim 1 , further including: upon payment of the reacquisition fee to the at least one primary investor, transferring title to the first pool of technology assets back to the originating owner.

8. The method of claim 1 , further including: upon payment of the reacquisition fee to the at least one primary investor and at least one member of a development team responsible for development activity associated with the first new product concept, transferring title to the first pool of technology assets back to the originating owner.

9. The method of claim 1 , further including: transforming said first new product concept into a developed new product suitable for commercialization, said tracking including tracking costs associated with said transforming.

10. The method of claim 1 , wherein transforming the first new product concept into a developed new product includes obtaining a degree of proprietary protection by filing and prosecuting at least one patent application covering the novel elements of said first new product concept.

11. The method of claim 1 , wherein said at least one primary investor receives a controlling interest in the development entity in exchange for said capital investment.

Assignments (10)
BANKRUPTCY COURT ORDER RELEASING ALL LIENS INCLUDING THE SECURITY INTEREST RECORDED AT REEL/FRAME 029608/0256 Recorded Dec 15, 2017
From: THE BANK OF NEW YORK MELLON TRUST COMPANY, N.A.
To: AVAYA INC.
Reel/Frame 044891/0801 →
BANKRUPTCY COURT ORDER RELEASING ALL LIENS INCLUDING THE SECURITY INTEREST RECORDED AT REEL/FRAME 030083/0639 Recorded Dec 15, 2017
From: THE BANK OF NEW YORK MELLON TRUST COMPANY, N.A.
To: AVAYA INC.
Reel/Frame 045012/0666 →
BANKRUPTCY COURT ORDER RELEASING ALL LIENS INCLUDING THE SECURITY INTEREST RECORDED AT REEL/FRAME 041576/0001 Recorded Dec 15, 2017
From: CITIBANK, N.A.
To: AVAYA INC.; AVAYA INTEGRATED CABINET SOLUTIONS INC.; OCTEL COMMUNICATIONS LLC (FORMERLY KNOWN AS OCTEL COMMUNICATIONS CORPORATION); VPNET TECHNOLOGIES, INC.
Reel/Frame 044893/0531 →
BANKRUPTCY COURT ORDER RELEASING ALL LIENS INCLUDING THE SECURITY INTEREST RECORDED AT REEL/FRAME 025863/0535 Recorded Dec 15, 2017
From: THE BANK OF NEW YORK MELLON TRUST, NA
To: AVAYA INC.
Reel/Frame 044892/0001 →
SECURITY INTEREST Recorded Jan 27, 2017
From: AVAYA INC.; AVAYA INTEGRATED CABINET SOLUTIONS INC.; OCTEL COMMUNICATIONS CORPORATION; VPNET TECHNOLOGIES, INC.
To: CITIBANK, N.A., AS ADMINISTRATIVE AGENT
Reel/Frame 041576/0001 →
SECURITY AGREEMENT Recorded Mar 13, 2013
From: AVAYA, INC.
To: BANK OF NEW YORK MELLON TRUST COMPANY, N.A., THE
Reel/Frame 030083/0639 →
SECURITY AGREEMENT Recorded Jan 10, 2013
From: AVAYA, INC.
To: THE BANK OF NEW YORK MELLON TRUST COMPANY, N.A.
Reel/Frame 029608/0256 →
SECURITY AGREEMENT Recorded Feb 22, 2011
From: AVAYA INC., A DELAWARE CORPORATION
To: BANK OF NEW YORK MELLON TRUST, NA, AS NOTES COLLATERAL AGENT, THE
Reel/Frame 025863/0535 →
CORRECTIVE ASSIGNMENT TO CORRECT THE NAME OF THE ASSIGNEE PREVIOUSLY RECORDED ON REEL 022026 FRAME 0931. ASSIGNOR(S) HEREBY CONFIRMS THE CORRECT ASSIGNEE IS AVAYA INC.. Recorded Jan 13, 2011
From: RICCI, CHRISTOPHER P.
To: AVAYA INC.
Reel/Frame 025625/0588 →
ASSIGNMENT OF ASSIGNOR'S INTEREST Recorded Sep 19, 2008
From: RICCI, CHRISTOPHER P.
To: AVAYA TECHNOLOGY LLC
Reel/Frame 022026/0931 →
Continuity (2)
Provisional Application 61066505 · Feb 21, 2008
Related Publication 20090216589A1 · Aug 27, 2009