Not sure how to
manage intellectual Property?
Frankly, few companies do!
The question from potential clients is so often: “Why should I have my Intellectual Property (IP) managed by a third party? I already have competent Intellectual Property lawyers who are patent experts.” This is certainly, a good and reasonable question.
Patent lawyers are not business people and business people are not patent lawyers. Intellectual Property portfolios require both tactical and strategic analysis that are tied into the dynamics of a business as it currently evolves and its long term goals. This requires existing patent appraisal as well as where new patentable material should be created (where the gaps occur in a company’s Intellectual Property estate). This leads to the all important analysis of cost versus reward, which most often leads to: “Where, internationally, should the subject company apply for patents and where is it in their best interests to support existing patents?” Patent annuities are an ever increasing cost and have become a significant source of income for many countries.
An Intellectual Property portfolio should be thought of as a minefield that a Company has established to prevent competitors from using and employing the patent owners hard work and costly research to develop better products or services. Therefore, the Intellectual Property “minefield”, should be designed and deployed to best serve the company’s goals, both currently and in the future. Competitors should see that the company has created an IP fortress, and if a third party attempts to assault the fortress (i.e., use your patent), they will walk right into the company’s minefield.
The main attributes of Intellectual Property management are the following:
1. Cost containment
a. Patent only that which is meaningful to the Company’s goals
i. More patents do not mean better protection
ii. Think of quality, not quantity
b. Support only patents which are currently, or in the future, meaningful to the Company’s business plan
i. Patent annuity costs increase over time and if not paid, the patent expires
ii. Is the continuing patent cost worth the reward?
c. Create Patents which have only meaningful claims avoiding superfluous or irrelevant claims
i. Claims must be consistent with Company goals (i.e., business plan) and not erroneous or wandering regimes that serve no significant protective purpose
ii. The client should be aware that claims cost money not only at the creation of the patent, but as part of the annuity protocol in many countries
d. Before a patent is applied for, and its concomitant cost as well, it should be evaluated both for its strategic value and, conversely, not underestimated for its potential
i. We repeatedly find clients assuming there is no meaningful invention associated with a new development, and therefore not bothering to consider applying
ii. We feel that we can supply a more objective evaluation of the patentability of an idea consistent with the Company’s strategy
2. Effectiveness Analysis
a. Continuous evaluation of patent estate from both a strategic and tactical perspective
i. Participation in strategic planning
1. Annual Business Plan IP evaluation
2. Annual Business Plan contribution
ii. Participation in tactical issues
1. Litigation effectiveness analysis
a. Is it worth it?
b. Is it not worth it?
i. Why not?
iii. Participation in strategic (global) issues
1. Is a company’s business, current or future, in a specific country one where the potential market justifies the cost?
2. Does the foreign country respect patent law?
a. Are there examples of successful patent enforcement?
3. How has the foreign country traditionally dealt with foreign patent issues in their bureaucracies, courts, and business dealings?
iv. Participation in recommended IP financial planning
b. Exposure of weaknesses in the competitive market
i. IP areas which are either of the following:
1. IP protection which is about to expire
2. IP that is either one of the following:
a. IP that is a matter of public knowledge and therefore can’t be subject to patent protection
b. IP that has been ignored by the company
c. IP for which the company has no solution
d. IP for which the company has a solution but has not provided resources to complete
a. Current patent analysis with the publication of a patent aging calendar whenever an Intellectual Property Estate changes
b. World Map showing where all a company’s patents and patent applications exist, again as with the Intellectual Patent Estate, whenever a change occurs the map is updated
c. Track patent estate financial pro forma cash issues as they become meaningful
i. exhibiting annual and potential expenditures costs going forward and trailing costs as they were spent
ii. identifying meaningful expenditures and those that are potentially and absolutely wasteful
The Windessa Group brings together a holistic perspective of both the intellectual property (IP) business and protection issues. Further, because of the way the reports are designed and presented, management and the board of directors have a much better and quicker understanding of what their IP dollars have provided, the cost, and what should be provided for in the future.