For each intellectual property asset identified, confirm that the information is recorded in the intellectual property database including: a unique name for the asset; a non-technical description which describes the problem solved by the asset and how the asset also solves the problem; a unique internal tracking number; date of invention/reduction to practice; docketing information that will allow management to track individual assets through the registration/prosecution process; registration numbers from legally registered assets both US and foreign; patent or trademark first page information such as title, abstract, dates, inventors, etc.; dates when actions are required relative to the legal maintenance of the asset.
For each asset identified, gather and record business information including: what was the business purpose for developing the asset; text of primary patent claim or description; the business unit which is responsible for the ongoing management of the asset; intended use of the asset by product, program, research program, product or service; stage of development of the asset such as research, product development, prototype, commercial product; names of business units, products and services that incorporate or use the asset; how the asset is currently being used in products/services, under development for potential future use, defensive, license, probably will never be used; names of the portfolio or multiple portfolios that the asset should be included in for ongoing management purposes; designation as a core or non-core asset; value assessment of the asset by dollar value range, scale of 1 to 5, etc.; decisions regarding asset maintenance.
To ensure the databases remain current, develop procedures for accumulating the information described above for newly developed or acquired intellectual property assets. It’s also important to develop procedures for a periodic review of the portfolio to enable improved intellectual portfolio management. This is particularly important because individual asset’s use in the business will vary over time. As a result the portfolio should be actively reviewed and updated in business strategy reviews, R&D planning reviews, and asset maintenance reviews.
In summary Kelly Hale reported that Rockwell utilized the following criteria in picking an IP database.
- The database should readily identify patents that have value but that are not being used by the Corporation. These would be good licensing candidates.
- The database should allow its administrators to easily identify nonperforming assets so they can be sold or abandoned.
- The database should be designed such that it can dynamically reflect and accommodate the strategic direction of the company.
- The database should provide access to the costs associated with maintaining the portfolio and individual assets.
- The database should provide the users with the ability to easily group patents comprising similar technologies.
- Within a technology area, patent should be easily grouped and identified as being fundamental versus iterative in nature.
- Where a particular asset is iterative in nature, it should be easily grouped with patents that are fundamental within the same technology group.
- The database should have a mechanism to allow its users to group patents that might be applied to particular product or class of products.
- The database should identify competitors and potential competitors for each patent.
- The database should be designed so that it is easily if not automatically appended with new information from a variety of sources.
- The database must be designed with hierarchy access control, so that only those with a need to know have access to sensitive information.
- Each patent should identify alternatives to itself and the associated costs of each; advantages versus disadvantages.
- The database should be a constantly updated and interactive source of information on individual assets.
- Procuring the information required for the database with sad little or no extra burden to the inventors or to their management.