MOXZ’s Philipp Walk on Patents, Licensing and Evolving Standards

Verfasst von Hayo Gebauer

By Lucia Geringswald

The company name ‘MOXZ’ is derived from the English noun ‘moxie’, which according to the Cambridge Dictionary stands for self-confidence or self-assurance. In the Merriam-Webster Dictionary, moxie is a euphemism for energy or pep, for determined courage and know-how.

Philipp Walk and his co-founders bring this colourful cocktail of meanings to life. MOXZ is also the acronym for ‘Modulation on X Zeros’. The postdoc at the Technical University of Berlin (TU Berlin) conducted research into wireless communication, IoT, localisation and signal processing. He previously worked on 5G and 6G standards at Futurewei Technologies (Huawei) and has conducted research at leading institutions such as the University of California, Irvine and Caltech. Together with colleagues, he developed the patented wireless signal design MOXZ for reliable communication.

MOXZ is now part of the xG Incubator with three patents. Its greatest expertise lies in the development of specialised, digital radar devices. MOXZ solves problems that could not be solved with conventional radio technologies such as Bluetooth, WiFi, mobile phone networks or LoRa-Wan. Areas of application include navigation for autonomous driving or flying, as well as in agriculture, construction or in tunnel systems that swallow up certain signals. In most cases, more precision, safety or a stronger signal is required.

For the interview, Philipp welcomes us to CHIC Charlottenburg, where the start-up has its office. In the three rooms, several employees are sitting in front of at least two screens full of code. It's cosy and there's hardware under Philipp's desk that MOXZ is yet to be installed in.

Hello Philipp. Hello Lucia.

Why don't you tell us how your first patent came about? I had actually already uploaded the invention to a server for a conference at the time and realised afterwards that the idea was quite good, let's secure it. In the USA, you can win six months with a provisional patent despite publication. I put the provisional together relatively quickly with two pages and it was accepted, so we had time to apply for the right patent.n.

If an invention is published before a patent application is filed, it is deemed to be ‘prior art’ and disclosed. This makes patenting impossible. If an invention has been made while the inventors are employed, the employer has priority to apply for the patent. He decides first whether he wants to implement the patent. If he decides not to, the inventors can apply for the patent themselves.

At the time, Philipp Walk was in Los Angeles, California, where the patent application went through Caltech. The patents were first filed in the USA and then worldwide, including Europe, China, Japan, Korea and Singapore, which was associated with high costs, particularly due to the translations. The inventors were Babak Hassibi, a professor at Caltech, Peter Jung, then a postdoc at TU Berlin, and Walk himself. TU Berlin thus received one third and Caltech two thirds of the invention. While Caltech took the lead and took care of the paperwork, TU Berlin merely agreed. In the USA, universities are more active in patent applications than in Germany.

Did you already know when you filed your first patent that you were going to file another one, or did that come about over time? It came about over time. The reason for the second patent was to shed more light on practical aspects that are relevant for implementation at the University of California. The original intention was to carry out research with publications. I then invented additional things. A correcting code for the frequency offset and timing offset, for example. This is important for achieving synchronisation between transmitters and receivers.

Patents can fulfil several functions in a company. On the one hand, they discourage others from copying the technology and offer the opportunity to licence the invention. However, according to Walk, it is more likely that the researchers will realise their inventions themselves than that the patent will be bought. Researchers are therefore also in demand after the patent has been granted. They are responsible for ensuring that the standard continues to develop and that the patent pays off. For established companies, the turnover is too low to incorporate new technologies into standard products. This is where start-ups have the advantage:

‘You have to somehow realise your idea yourself, get into the market yourself, create an alternative. Nokia could also do what we do. They do it too, but with their standard device and in billions of units. But they wouldn't design for a use case of a thousand units. And I think that's the advantage of start-ups that you shouldn't forget: you're super small, very flexible, and neither stuck in the market nor in the product and can address these very niche markets.’

And customers are approaching the start-up. The products available on the market were often inadequate, so a customised, innovative solution was needed. When presenting the proposed solutions, it is less important how the MOXZ technology works in detail than that it works at all. This was followed by questions about the price and how long it would take to implement.

Another, rather unconventional way of earning money with patents is to wait and see. If a competitor uses the patents unknowingly or has even priced a patent infringement into the product development, this person can be sued. The place of jurisdiction depends on where the parties are located; in the case of MOXZ, the place of jurisdiction would probably be in the USA due to Caltech's involvement, which Walk sees as positive. America has a lawsuit-friendly justice system, he explains with a laugh.

‘Well, let me put it this way, if MOXZ is unsuccessful in 10 years and we haven't got anything together, but the patents are still valid and the company is still alive, then we could still become millionaires!’ (laughs)

Of course, that's not Walk's goal. MOXZ wants to utilise its patents. There is a co-dependency with Caltech and the other patent holders. If one party wants to sell the patent exclusively to a company or grant a licence, this must be done in agreement with the other patent owners. In the end, the revenue flows proportionately to the patent holders.

When end products are sold, the patent fees are calculated according to their final price. If several patents are incorporated into a product, the patent holders whose technology is most relevant receive the largest share. Key technologies that define a new standard are defined by standardisation organisations. The situation is different for product development and commercialisation. All rights holders can develop and sell a product with the technology without the other patent holders having to share in the proceeds.

‘This means we could build 6G mobile phones without having to ask Caltech. But in reality, we probably won't be able to do that because we don't have the know-how to build 6G mobile phones. (laughs) In that case, we would have to licence our technology to Intel and the like, who could build it. And we would need Caltech for that. If we grow on a large scale, Caltech has to be involved.’

Caltech itself will probably not develop any products with the patent. The expertise lies primarily with Walk and Jung, both founders of MOXZ. The company itself has also acquired patent shares, in this case from the TU Berlin. Caltech plays a different role. The OTTCP, the Office of Technology Transfer and Corporate Partnerships, a team of currently 29 employees that deals exclusively with patent matters, not only took care of the application for the first two patents, but also advised on a spin-off. Founding a company is the most likely way to monetise a patent.

‘For Caltech, as a private university and one of the richest in the USA, patents are also a business. [...] Caltech earns money from the start-ups. It's a business model for them. It's like VC.’

The inventor and entrepreneur does not have to vouch for the money that the university has invested in the patents over the years, even if MOXZ should fail. Furthermore, the university is the first organisation to have invested in the potential of the invention.

What is the relationship with Caltech as the ‘first investor’? Compared to a VC, Caltech has no leverage. A VC can deny you the next instalment, for example, so that you become insolvent. Caltech doesn't pay us any money, but takes over part of the costs of the patents. The only thing they could do would be to stop paying their shares. But then the patents expire and they can never get the money back. That means they actually have to keep going.

Caltech is still an important partner for the start-up. The TU Berlin invested around a quarter of what Caltech paid for the patent application. By taking over the patent shares, MOXZ GmbH has paid out the German university so that it can book a business without losses or profits. Compared to Caltech, TU Berlin has much less manpower and financial capacity to manage patents.

‘Caltech is very good at exploiting technologies because they know that they have to take risks at the beginning and put money upfront in order to then do everything, including organising VCs for the founders, so that the start-ups can grow and be successful.’

And MOXZ has potential. This can also be seen in the start-up's next project with BVG. The underground railway needs a dedicated, private and secure network that works underground in order to provide up-to-the-second updates on position and disruptions, as well as the ability to operate autonomously.

The last question: What is or was more complicated, developing and applying for the patent or building the products? Well, building the products. (laughs) Registering the patent, you don't do that yourself. You have the patent attorneys to help you with the wording. Of course it was an effort, no question. Realising the product is much more difficult and requires a lot of working time. That's why you need the company. [...] If we were just waiting for someone to use the patent and have to pay us, then of course the cost of the patent was greater. (laughs)

Thank you for the interview. It’s my pleasure

 

Do's and don'ts for founders when filing a patent application by Philipp Walk:

This is what I would recommend:

  • Patent application: Consider whether you are filing the patent as a private individual, via your own company or via your employer.

  • Prove inventions: Register patentable inventions if they are provable and detectable.

  • Company secrets: Some inventions, such as chemical compositions, can be easily reproduced without any evidence of ‘inspiration’ from the patent. In this case, it makes more sense to treat the invention as a trade secret. Unlike a patentable invention, they should never be published.

  • Check the market: Make sure that a market for the invention exists before you start the application.

  • Investors: Patents are attractive to investors and can be crucial for funding, especially in the deep tech sector.

  • Additional patents: Consider whether broader patent protection is beneficial and can cover the costs, especially if further inventions are planned.

I would advise against this:

  • Rash applications: Don't apply for as many patents as you like, as high costs can arise.

  • Cost trap: Be aware that application fees and annual costs can quickly become high.

  • Dependence on your employer: Do not rely solely on applying via your employer, as this could be rejected.

  • Duration of patenting: Plan that it can take 3-4 years for a patent to be accepted and calculate the financial resources accordingly.

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