Intellectual property and R&D contracts:A closer relation between patent portfolio and contracts to guide and enhance strategic innovation decisions.

Abstract

This thesis explores the hypothesis that Multinational Companies (MNC) sometimes lack historic information about contractual obligations attached to the patent portfolio due to poor management routines or processes and therefore MCN become less effective in new collaboration deals. This hypothesis is investigated particularly within the context of the multinational company, Nestlé. The methods used in this study included structured and unstructured interviews with internal actors involved in R&D collaborations with third parties and contract portfolio management; external interviews with Unilever, General Mills and Nokia; external interviews with intellectual property (IP) management system providers such as Thomson Reuters and Unycom; quality and risks analyses; and different literature on the topic of IP management and contracts. The study shows that Nestlé has a R&D procedure to collaborate with third parties and different systems to manage the patent portfolio and contracts with third parties. This thesis finds that the lack of a complete IP portfolio and contract management system can expose Nestlé to legal, technical and managerial risks, in addition to jeopardizing strategic decisions for innovation. To minimize these risks, this thesis recommends links to be created between existing systems to strengthen the IP portfolio and contract management systems in order to provide an overview of the contractual obligations linked to the IP, contracts and third parties. It is also recommended that a responsible function is created to give the overview of the R&D collaboration process within Nestlé in order to identify the gaps and suggest solutions and actions. This thesis also suggests the responsible function to become the hub for receiving information about the IP created from collaboration with third parties and between the different departments involved within contracts and IP management, as well as having the overview of the rights that Nestlé owns or have rights to. This thesis shows the benefits of having a structure to support the patent portfolio, the contract management, as well as a responsible function to have an overview of the process, such as building a complete patent portfolio and having the contractual terms of a patent properly tracked and monitored.