Once a company has accumulated an intellectual property portfolio, it is important to manage that portfolio with the goal of maximizing returns on investment and extracting value when opportunities arise. Managing a portfolio is a continually evolving, multidisciplined activity, and must be conducted on a regular basis given constant changes in business and legal climates.
The first step in managing intellectual assets is to complete an inventory: What assets are in the portfolio? What do they cover, or what is the scope of coverage? Where are they covered geographically? Are the assets tied to a specific product, process or business unit? If so, another helpful step is to map the assets to these products, processes or business units.
Once the assets are tallied and categorized, they should be audited. For example, if a specific product is covered by a patent, this product should be properly marked with the patent number. Any license agreement related to the patents or products also should be cataloged.
Additionally, are secrecy measures and/or standard agreements such as nondisclosure agreements in place in order to protect the intellectual assets? Employment agreements and corporate intellectual property policies also should be reviewed to ensure intellectual asset ownership. This audit allows gaps to be identified and a plan to be established to fill those gaps. Finally, assess where the dollars are currently being spent.
Next, establish a comprehensive understanding of the current intellectual property landscape. Who are your competitors and what are their intellectual assets? Identify key research institutes/universities and prior art in your technology field, and continually monitor developments and related patents/patent applications. Who is citing your intellectual property in their development? Review issued patents at the USPTO to find out. Additionally, what are the current technology and research trends and how can your company leverage them?
Along with the current intellectual property landscape, an up-to-date understanding of the legal landscape is also necessary. The latest developments in case law, USPTO regulations, legislative changes, and foreign law/ enforcement trends are among the areas that must be closely monitored to make strategic and cost-effective decisions concerning your intellectual property portfolio.
Various revenue tools can be employed to extract value from a portfolio. For example, the portfolio can and should be “pruned” on a regular basis to eliminate assets that no longer provide value to the company. These assets also can be donated to third parties, such as universities, in order to provide the company with tax benefits. Additionally, licensing opportunities can be identified for certain assets, whether they are a result of pruning activities or they remain in the portfolio.
Competitive scanning is also part of the process of extracting value, because it allows opportunities for licensing or intellectual property enforcement to be identified. This scanning can be achieved by reviewing issued patents and published patent applications at the USPTO on a weekly basis, attending trade shows/conferences, and reviewing trade journals. Additional tools include intellectual property bonds, auctions, acquiring intellectual property, patent marking, software to mine a portfolio for opportunities, and in-house training for all disciplines to better identify opportunities.
To find out more please access our IP Primer page.
