The strategic intellectual property process is developed by building the organization structure, the business processes, and the intellectual property methodologies to provide all that is needed to realize maximum value from intellectual property. Many of the concepts which are set out below are shown in the section “Example of an IP Strategic Plan”.
The following list of considerations is a high-level review of many, but not all, of the considerations that the strategic intellectual property process entails to ensure appropriate integration:
Understanding focus on underlying business and technology strategies
- Products, services, markets, customers
- Sources of competitive advantage and role of technology and intellectual
property in creating competitive advantage
Understanding the current state of intellectual property management and intellectual property knowledge in the organization
- Perceptions as to the importance of intellectual property to the company
- What the company is doing to manage IP
- What processes is the company using to manage these assets
- What types of intellectual property does the company currently have
- What is the weighting of the company’s strategic goals for managing IP
- Generating additional revenue
- How is the management of intellectual property increasing shareholder value
- Protecting market competitive leadership and strategic position, licensing philosophy
- Maintaining freedom to operate
- Strengthening technological position in the industry
- Developing and marketing intellectual property as the industry standard
- Enhancing reputation as quality and innovation leader
- Entering new markets alone or through partnering
- Creating value aggressively through use of intellectual property in mergers and acquisitions
- Considering aggressive licensing-an “everything for sale” attitude
- Applicability of tax aggressive or conservative positions inherent in the corporate culture and strategy
- Developing internal awareness of the importance of intellectual property to the company
- Determining whether these are the correct goals, given the competitive environment and the company’s strategic business objectives
Defining desired future state for intellectual property management
- What should the company’s strategic goals for intellectual property management be in the company’s future strategic plan from the following perspectives
- Operational – processes for developing, protecting and deploying intellectual property to generate value
- Financial – value generated from internal use, licensing revenue, strategic value in mergers and acquisitions, managing intellectual property-related costs like maintenance fees
- Competitive – how the company will develop and use intellectual property to create competitive advantage, including patenting and trademark policies and guidelines
- Tax – evaluating and implementing organizational and operating strategies for managing tax consequences of developing and deploying intellectual property, including holding company, franchise issues, donation
- Legal – developing approaches for dealing with legal issues involved in constructing value realization transactions and in analyzing infringement issues
- What processes and strategies should the company be using to manage intellectual property more effectively
- How should the intellectual property management function be organized and staffed to maximize creation of an effectively operating “machine”
- Centralized or decentralized
- Law department or R&D, operating business units or specialized intellectual property management organization
Educating key management involved with the administration and operations
- What is intellectual property?
- Importance of effective intellectual property management in creating value from intellectual property and using intellectual property to achieve business goals
- What other companies in the competitive space are doing to manage intellectual property-best practices adoption
- Integration with the overall company strategy
Evaluating management support for a change in property approach
- How can management support be gained?
- What impact does proposed intellectual property management approach have on the major functions and departments and how they operate
- What are the benefits and potential costs for each major function or department?
Developing strategies to drive major intellectual property management activities and processes and to drive migration from the current state to the future state
- Inventorying of current intellectual property assets
- What data needs to be gathered to drive management decisions about investment, protection, and value realization?
- What data needs to be gathered to enable intellectual property assessments and measurement of the performance of the intellectual property management system
- Sharing of information-narrow or broad; who needs access to information
- Technical assessment and economic assessment of merit and value
- Evaluation of intellectual property driven by both internal and external concerns
- Level of current and future planned investment in intellectual property
- R&D aligned with business strategy
- Invention/innovation flow based on market-oriented strategy
- Portfolio balance-basic research vs. product-driven, balance across business units and products, etc.
- Buy vs. develop internally decision
- Strategic positioning-using brands to generate customer loyalty and public image, to define and protect competitive position, etc.
- Strategic patenting-using R&D and patents to define and reinforce the company’s competitive position and/or to invade competitors’ market space
- Protection actions and framework
- Providing appropriate incentives to inventors to generate relevant and valuable invention disclosures
- Operational trade secret/know-how development and documentation
- Trademarking and branding aligned with business strategy
- Patenting strategy
- Trade secret vs. patents
- Broad or narrow claims
- Strategic positioning
- Enforcement-license or litigate
- Company-wide education and communication on intellectual property and intellectual property management
- Value realization activities
- Internal and external options exploration
- Tax-advantaged structuring
- Alignment with business and technology strategies
- Establishing initial focus of value realization efforts based on internal corporate inventory and assessment of intellectual property
- High potential value
- Core vs. non-core intellectual property (license competitors or only noncore applications)
- Timing of potential value realization (time to market, maturity of assets, dependence on third-party IP)
- Identifiable products, markets, and partners (pathway to the market)
- Identifying strategic issues
- Understanding potential value of the intellectual property under alternative value realization strategies
- Possible goals
- Quick value
- Sustainable value
- Cash only (sell, license, donate) or expand business (alliance, JV)
- Protect current business or license core technology to expand market
- Create value realization strategies and business terms to meet these goals
- Measurement and monitoring
- Types of metrics to be used in intellectual property management performance assessment
- Risk management
- Disciplined intellectual property management processes communicated and adhered to consistently
- Asset protection (patenting, trade secret protection, publishing: trademark/brand development, promotion; domestic vs. foreign protection, etc.)
- Asset maintenance (maintenance fee control)
- Managing relationships with vendors, consultants, contractors to protect intellectual property assets
- Formation of intellectual commercialization relationships which protect while at the same time leverage the value of the company’s IP
- Administration of commercialization agreements
- Pursuit of parties who infringe the company’s IP
- Avoidance of infringement of others’ IP
- IP infringement insurance coverage