Typically the process and building a robust intellectual property inventory database is to identify and catalog various forms of registered intellectual property assets (patents, trademarks, copyrights, trade secrets) contained within existing legal department documents. Cataloging should accumulate business information such as each assets non-technical description, current or intended use and stage of development. Information gathered for each asset may encompass a variety of technical, legal, and business issues, including descriptions, current and intended use, docketing/tracking information, and assessments of potential value. The intellectual property database itself should be identified and treated as confidential and proprietary to the organization.
Content characteristics of the inventory database should: readily identify patents that have value but that are not being used by the Corporation so they can be licensed; allow administrators to easily identify nonperforming assets that can be sold or abandoned; be designed so that it can dynamically reflect and accommodate the strategic direction of the company; provide users of the database with the ability to easily group patents and other assets comprising similar technologies; allow patents to be easily grouped and identified within the technology area as being fundamental versus incremental in nature; allow patents, trademarks, trade secrets to be easily grouped according to technology area, product function, potential uses; have a mechanism to allow users to group intellectual property assets that may be applied to a particular new or existing product or class a product; identify competitors and potential competitors for each intellectual property asset; be designed so that it is easily if not automatically appended with new information from a variety of sources both internal and external; be designed with access control so that only those with a need to know have access to blocks of sensitive information; allows for key patents to identify alternatives to itself for advantages versus disadvantages and the associated costs of each alternative.
It takes a significant amount of organizational time and effort to populate such a comprehensive database. Obviously it’s easiest for new companies to start the process off on the right track as they commence their business operations. For organizations that have existed for a period of time without a comprehensive intellectual property database it’s usually best to start with the list of the legal assets that the legal department has. This list is then supplemented with assets they can obtain from publicly available information. Then for art that business leaders identify as having high value to the Corporation, 80/20 rule, internal and competitive intelligence information can be added to that asset’s database fields. The database can be populated as innovation occurs and is codified into inventions and legally protected intellectual property assets. In addition, the organization’s business objectives can be tied to the intellectual property assets and encoded into the database. This will include analysis of emerging markets of interest to the Corporation, and the Corporation’s competitive position with regard to other players in the market.
Typically after the assets known to the legal department are entered into the database the major elements of completing the process are described below:
Interview managers and other people who are knowledgeable about the operations of the business unit that is the subject of the inventory process. Based on knowledge of the operations the business unit, and discussion with knowledgeable department personnel, assign individual intellectual property assets to the entity which either developed or is using that asset or may use that asset in the future. Note that this means that an individual asset may be assigned to multiple departments, products, or services. Also important is to identify potential trade secret assets by inquiring as to other processes, tools, accumulations of data, knowledge, etc. that are considered to be valuable, unknown to others outside the company and used by the company; and prepare a written description of the potential trade secret and why it is valuable.