Managing the intellectual property disassembly problem

California Management Review

Volumn 55, Issue 4, 2013, Pages 184-210

  Granstrand, Ove ^a,b   Holgersson, Marcus ^a  

^a CHALMERS UNIVERSITY OF TECHNOLOGY   (Sweden)

^b STANFORD UNIVERSITY   (United States)

Author keywords

Divestiture; Innovation management; Intellectual property; Investments; Licensing; Mergers acquisitions; Open innovation; Patents; Technology management

Indexed keywords

EID: 84927176234     PISSN: 00081256     EISSN: 21628564     Source Type: Journal    
DOI: 10.1525/cmr.2013.55.4.184     Document Type: Article

References (93)

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2. Garrett Hardin, "The Tragedy of the Commons", Science, 162/3859(December 1968):1243-1248.
3. Paul A. David, "Intellectual Property Institutions and the Panda's Thumb: Patents, Copyrights, and Trade Secrets in Economic Theory and History", in M. B. Wallerstein, M. E. Mogee and R. A. Schoen, eds., Global Dimensions of Intellectual Property Rights in Science and Technology (Washington, D. C.: National Academy Press, 1993), pp. 19-61.
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5. David J. Teece, "Profiting from Technological Innovation: Implications for Integration, Collaboration, Licensing, and Public Policy", Research Policy, 15/6(December 1986):285-305.
6. Joseph E. Stiglitz, "Knowledge as a Global Public Good", in Inge Kaul, Isabelle Grunberg and Marc A. Stern, eds., Global Public Goods (Oxford: Oxford University Press, 1999), pp. 308-325.
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8. Michael A. Heller and Rebecca S. Eisenberg, "Can Patents Deter Innovation? The Anticommons in Biomedical Research", Science, 280/5364(May 1, 1998):698-701.
9. See also Carl Shapiro, "Navigating the Patent Thicket: Cross Licenses, Patent Pools, and Standard Setting", in Adam B. Jaffe, Josh Lerner, and Scott Stern, eds., Innovation Policy and the Economy (Cambridge, MA: MIT Press, 2001), pp. 119-150.
10. For example, see Josh Rubin, "Nortel Patent Deal Worth $4.5B Approved", Toronto Star, March 13, 2012;
11. John Jannarone and Shalini Ramachandran, "AOL's Deal Eases Pressure: In Selling Patent Portfolio to Microsoft, Struggling Internet Company Buys Time", Wall Street Journal, April 10, 2012;
12. Shira Ovide and Geoffrey A. Fowler, "Facebook Buys AOL Patents from Microsoft for $550 Million", Wall Street Journal (online), April 23, 2012;
13. Dana Mattioli and Mike Spector, "Kodak to Sell Patents for $525 Million", Wall Street Journal (online), December 19, 2012.
14. Dennis W. Carlton and Jeffrey M. Perloff, Modern Industrial Organization, 4th edition (Boston, MA: Pearson/Addison Wesley, 2005).
15. Ove Granstrand, Pari Patel, and Keith Pavitt, "Multi-Technology Corporations: Why They Have 'Distributed' Rather Than 'Distinctive Core' Competences", California Management Review, 39/4(Summer 1997):8-25;
16. Deepak Somaya, David J. Teece, and Simon Wakeman, "Innovation in Multi-Invention Contexts: Mapping Solutions to Technological and Intellectual Property Complexity", California Management Review, 53/4(Summer 2011):47-79.
17. Ove Granstrand, "Multi-Technology Management", in John Cantwell, Alfonso Gambardella and Ove Granstrand, eds., The Economics and Management of Technological Diversification (London: Routledge, 2004), pp. 296-332.
18. For example, see Ove Granstrand, The Economics and Management of Intellectual Property: Towards Intellectual Capitalism (Cheltenham: Edward Elgar Publishing, 1999);
19. Bronwyn H. Hall and Rosemarie Ham Ziedonis, "The Patent Paradox Revisited: An Empirical Study of Patenting in the U. S Semiconductor Industry, 1979-1995", The RAND Journal of Economics, 32/1(Spring 2001):101-28.
20. Ove Granstrand and Marcus Holgersson, "Multinational Technology and Intellectual Property Management-Is There Global Convergence and/or Specialisation?" International Journal of Technology Management (forthcoming).
21. Henry W. Chesbrough, Open Innovation: The New Imperative for Creating and Profiting from Technology (Boston, MA: Harvard Business School Press, 2003).
22. John Hagedoorn, "Understanding the Rationale of Strategic Technology Partnering: Interorganizational Modes of Cooperation and Sectoral Differences", Strategic Management Journal, 14/5(July 1993):371-385;
23. John Hagedoorn, "Inter-Firm R&D Partnerships: An Overview of Major Trends and Patterns since 1960", Research Policy, 31/4(May 2002):477-492;
24. Grazia D. Santangelo, "Corporate Strategic Technological Partnerships in the European Information and Communications Technology Industry", Research Policy, 29/9(December 2000):1015-1031.
25. Kenneth J. Arrow, "Economic Welfare and the Allocation of Resources for Invention", in National Bureau of Economic Research, ed., The Rate and Direction of Inventive Activity: Economic and Social Factors (Princeton, NJ: Princeton University Press, 1962), pp. 609-625.
26. For example, see Gautam Ahuja and Riitta Katila, "Technological Acquisitions and the Innovation Performance of Acquiring Firms: A Longitudinal Study", Strategic Management Journal, 22/3(March 2001):197-220;
27. Marianna Makri, Michael A. Hitt, and Peter J. Lane, "Complementary Technologies, Knowledge Relatedness, and Invention Outcomes in High Technology Mergers and Acquisitions", Strategic Management Journal, 31/6(June 2010):602-628;
28. Srikanth Paruchuri, Atul Nerkar, and Donald C. Hambrick, "Acquisition Integration and Productivity Losses in the Technical Core: Disruption of Inventors in Acquired Companies", Organization Science, 17/5(September/October 2006):545-562.
29. Terje Gudmestad, and Ove Tobia Gudmestad, "Protecting Intellectual Property During Divestitures and Acquisitions", Research Technology Management 41/5(September/October 1998):36-39.
30. Elaine D. Ziff, "The Effect of Corporate Acquisitions on the Target Company's License Rights", The Business Lawyer, 57/2(February 2002):767-792.
31. See Wesley M. Cohen, Richard R. Nelson, and John P. Walsh, "Protecting Their Intellectual Assets: Appropriability Conditions and Why U. S Manufacturing Firms Patent (or Not)", NBER Working Paper 7552, 2000.
32. For example, see Warren Brown, "GM Agrees to Buy Half of Saab's Car Operations", The Washington Post, December 16, 1989;
33. Gregory L. White, "GM Plans to Buy Remaining 50% of Sweden's Saab", Wall Street Journal, January 11, 2000.
34. Interviewed on August 27, 2012. Quotes in Swedish have been translated by the authors throughout this article.
35. As described by Knut Simonsson, Vice President at Saab Automobile (interviewed on July 3, 2012), this license was only valid for automobile business, and only as long as the company stayed within this business.
36. For example, see Saab Automobile Annual Report 2005.
37. According to an interview on January 19, 2012, with a legal interviewee at Saab Automobile.
38. Interviewed on May 15, 2012.
39. See also Saab Automobile Annual Report 2006.
40. For example, see John D. Stoll, "Corporate News: Saab Speeds Up Talks with Suitors", WallStreet Journal, March 3, 2009;
41. Monica Kleja, "Saabs väg mot diket", Ny Teknik, December 14, 2011.
42. For example, see David Jolly, "G. M. Sells Saab to Swedish Automaker", The New York Times, June 17, 2009.
43. See also Peter Whoriskey, "Saab's Future Uncertain as Swedish Buyer Pulls Out; GM to Reassess Brand's Fate Swedish Government May Have to Kick In", The Washington Post, November 25, 2009;
44. Robert Channick, "GM Likely to Shut Down Saab Division", Chicago Tribune, November 25, 2009.
45. See also Eddie Pröckl, "Saab: Vi äger Phoenix", Ny Teknik, November 16, 2011.
46. See also Norihiko Shirouzu, "Chinese Car Maker to Get Part of Saab", Wall Street Journal, December 14, 2009.
47. According to a member of the general management team of Saab Automobile interviewed on May 15, 2012, the sales process had from the outset been driven more by Saab Automobile management than by GM management, and had actually been presented by executives at Saab Automobile to GM management as an alternative to closing down the business.
48. For example, see "GM Reaches Agreement to Sell Saab to Spyker", PR Newswire, January 26, 2010;
49. Paul Taylor, "Spyker Acquires Financing to Secure Purchase of Saab Unit from GM", National Post, February 9, 2010;
50. "Spyker Cars Finalizes the Purchase of Saab", PR Newswire, February 23, 2010;
51. John Reed, "Spyker Closes Purchase of Saab from GM", FT. Com, February 23, 2010.
52. For example, see Christina Zander, "Corporate News: Saab Auto has Deal to be Sold", Wall Street Journal, October 29, 2011.
53. Matthew Saltmarsh, "Saab Suffers New Round of Financial Difficulties", New York Times, April 8, 2011.
54. Quote from Saabs sista strid, TV4, April 24, 2012.
55. For example, see "Swedish Automobile Says no to Takeover Offer by Chinese Partners", Nordic Business Report, October 21, 2011.
56. For example, see Bernard Simon, "GM in threat to block sale of Saab to Chinese groups", Financial Times, November 5, 2011.
57. Quote from Saabs sista strid, TV4, April 24, 2012.
58. For example, see Monica Kleja, "Saabs väg mot diket", Ny Teknik, December 14, 2011;
59. John Reed, "Saab Files for Bankruptcy After GM Veto", FT. Com, December 19, 2011.
60. For example, see Christina Zander, "Asian Start-Up Acquires Saab Auto: Chinese, Japanese Investors Outline Plan to Build Electric Cars at Swedish Plant", Wall Street Journal (online), June 13, 2012.
61. As quoted in Gerhard Larsson, "Riksgälden ivrig ta över Saab Parts", Dagens Industri, June 20, 2012.
62. As interviewed on January 16, 2013.
63. See "Ford buys Volvo car arm", CNNMoney, January 27, 1999.
64. This process was described by the CTO at the time, as interviewed on June 19, 2012.
65. See also Volvo Trademark Holding annual report, 1999. Trademark reassignment data confirms this setup.
66. As an example, 29 registered U. S trademarks plus two applications were reassigned from AB Volvo to Volvo Trademark Holding on February 26, 1999.
67. As described by a senior executive at VCC in an interview on December 29, 2011.
68. Interview on December 29, 2011.
69. This picture was confirmed by another (former) senior executive at VCC in an interview on June 19, 2012, stating that the patent culture at VCC was markedly strengthened under Ford's ownership.
70. This was confirmed by Hans Folkesson, VCC's CTO at the time, in an interview on June 19, 2012.
71. For example, see Nick Bunkley, "Ford to Sell Aston Martin to Group Led by Ex-Racer", New York Times, March 13, 2007.
72. For example, see Bryce G. Hoffman, "Ford Unloads Jaguar, Land Rover to Tata", Detroit News, March 27, 2008.
73. As described by several interviewees, including Paul Welander, Senior Vice President at VCC (interviewed on July 9, 2012).
74. Interview on July 9, 2012.
75. Interview on August 28, 2012
76. As explained by several VCC interviewees.
77. As quoted in Keith Bradsher, "Ford Agrees to Sell Volvo to a Fast-Rising Chinese Company", The New York Times, March 29, 2010.
78. For example, see Ford press release, "Ford Motor Company completes sale of Volvo to Geely", August 2, 2010.
79. For example, 177 U. S utility and design patents were reassigned to VCC on August 26, 2010 (e.g., U. S patent numbers 6583973, 6631703, 7195574, and 8152345). Similarly, 220 German patents were reassigned from FGT to VCC ownership, mainly throughout 2011 and 2012. Note however that reassignment registrations are typically not compulsory (as of 2013), meaning that this data by no means needs to be complete.
80. For example, see Ford press release, "Ford confirms Geely as its preferred bidder for Volvo Cars", October 28, 2009.
81. For example, see Volvo Personvagnar annual report, 2010;
82. Ford press release, "Ford Motor Company completes sale of Volvo to Geely", August 2, 2010.
83. For example, see the special issue on "Joint Ownership of Intellectual Property Around the World", les Nouvelles, 47/4 (December 2012).
84. See also Henry Chesbrough and Eric L. Chen, "Recovering Abandoned Compounds Through Expanded External IP Licensing", California Management Review, 55/4 (Summer 2013).
85. See Joachim Henkel, Carliss Y. Baldwin, and Willy Shih, "IP Modularity: Profiting from Innovation by Aligning Product Architecture with Intellectual Property", California Management Review, 55/4 (Summer 2013).
86. For the case of Sweden, see Bengt Domeij, "Seizure of transferred intellectual property rights from an insolvent purchaser: A comment on the decision by the Swedish Supreme Court of 22 December 2010", Nordiskt Immateriellt Rättsskydd, 80/4(2011):414-421.
87. See, e.g., Ove Granstrand and Marcus Holgersson, "The 25% rule revisited and a new investment-based method for determining FRAND licensing royalties", les Nouvelles 47/3(2012):188-195.
88. Oliver E. Williamson, The Economic Institutions of Capitalism: Firms, Markets, Relational Contracting (New York, NY: Free Press, 1985).
89. See also Ove Granstrand, "Are we on our way in the new economy with optimal inventive steps", in Ove Granstrand, ed., Economics, Law and Intellectual Property (Dordrecht: Kluwer Academic Publishers, 2003), Chapter 10, pp. 223-258.
90. For example, see Ove Granstrand, "Intellectual Property Rights for Governance in and of Innovation Systems", in Birgitte Andersen, ed., Intellectual Property Rights: Innovation, Governance and the Institutional Environment (Cheltenham: Edward Elgar Publishing, 2006), Chapter 10, pp. 311-343;
91. Marcus Holgersson, Innovation and Intellectual Property: Strategic IP Management and Economics of Technology (Gothenburg: Chalmers University of Technology, 2012).
92. For example, see Robert Merges, Justifying Intellectual Property (Cambridge, MA: Harvard University Press, 2011).
93. See Thomas Ewing, "Indirect Exploitation of Intellectual Property Rights by Corporations and Investors: IP Privateering and Modern Letters of Marque and Reprisal", Hastings Science & Technology Law Journal, 4(2012):1.