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 businesspeople and business people are not patent lawyers. Intellectual Property portfolios require both tactical and strategic analysis that is tied to 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 asks “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 issue 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 owner’s 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:
Patent only that which is meaningful to the Company’s goals
More patents do not mean better protection
Think of quality, not quantity
Support only patents which are currently, or in the future, meaningful to the Company’s business plan
Patent annuity costs increase over time and if not paid, the patent expires
Is the continuing patent cost worth the reward?
Create Patents which have only meaningful claims avoiding superfluous or irrelevant claims
Claims must be consistent with Company goals (i.e., business plan) and not erroneous or wandering regimes that serve no significant protective purpose
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
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
We repeatedly find clients assuming there is no meaningful invention associated with a new development, and therefore not bothering to apply for a patent
We feel that we can supply a more objective evaluation of the patentability of an idea consistent with the Company’s strategy
Continuous evaluation of patent estate from both a strategic and tactical perspective
Participation in strategic planning
Annual Business Plan IP evaluation
Annual Business Plan contribution
Participation in tactical issues
Litigation effectiveness analysis
Is it worth it? Why? - Is it not worth it? Why not?
Is a company’s business, current or future, in a specific country one where the potential market justifies the cost?
Does the foreign country respect patent law?
Are there examples of successful patent enforcement?
How has the foreign country traditionally dealt with foreign patent issues in their bureaucracies, courts, and business dealings?
IP issues that should be considered
IP protection which is about to expire
IP that is either one of the following:
IP that is a matter of public knowledge and therefore can’t be subject to patent protection
IP that has been ignored by the company
IP for which the company has no solution
IP for which the company has a solution but has not provided resources to complete
Current patent analysis with the publication of a patent aging calendar whenever an Intellectual Property Estate changes
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
Track patent estate financial pro forma cash issues as they become meaningful
Exhibiting annual and potential expenditures costs going forward and trailing costs as they were spent
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. thewindessagroup1039VS1.5IPmanagement_blog.docx