In-house guest post: Future-proof your intellectual property portfolio
By Damian Durrant
Business goals and objectives can morph at any time due to new leadership, market shifts, competitor activities or current events. As a result, your intellectual property (IP) values and directives are also changing constantly. In-house IP attorneys need tools to “future-proof” and pivot their company’s IP strategy in order to maintain a relevant and robust portfolio aligned to business objectives. IP assets must continually serve in a revenue-positive way, avoiding risk or drag on budget.
Here are 10 Tips to “future-proof” your company’s IP:
Consolidate and Organise IP Data and Documentation. The foundation of an IP operation adaptable to future business needs is to gather IP data and supporting documentation in a structured central location, preferably electronically. Harvest your data from all sources, whether it’s in digital format, paper, or still residing in employees’ brains. Digitise paper records whenever possible. Make sure that unsearchable or “dark” data residing in image-only PDF and TIFF files is made searchable via optical character recognition (OCR) technology. Organise your documents and correspondence in a structured IP management system or database so you can sort and find information easily. New cloud-based solutions make it even easier to gather and classify your IP data. Then you can better steward the portfolio through inevitable change.
Get Clear Insight Into Your IP Strengths and Weaknesses: Whether you are defending an existing market or entering a new one, the success of your business requires fast access to a complete summary of where your IP coverage is strong and weak. Future-Proofing your IP requires the ability to report on the integrity of the entire IP portfolio, including patents, trademarks and other IP assets. As mentioned above, consolidating your IP into one electronic system is the first step. The next is to map out your IP to current and future business strategies to see which IP assets support which initiatives and which revenue streams. Additionally, this information will provide insight to your executive management team and R&D leadership who seek to build or acquire IP when attacking new markets. Tools which provide quick, up-to-date and accurate access to this data are key to your company’s success in achieving its business objectives.
Standardise Terms and Establish Guidelines. IP is fueled by creativity, but it needs a standardised lexicon to be efficiently managed. Establish naming conventions, standard terms and guidelines for the entire organisation to use. Use consistent categories and technology terms for identifying your ideas and IP correctly. For example, one stakeholder may categorise a divisional patent filing as “Divisional”, another group “DIV” and yet another “D”. These differences will wreak havoc when people are trying to find documents. Standardising terms may seem tedious, but imagine how it will prevent disaster from a searching standpoint.
Once everyone is using the same naming conventions, you will be able to organise and find IP data quickly and easily. Fast access to data is a prerequisite for quickly navigating changing market conditions. Do not burden your IP team with the inability to find data. Future-Proofing your IP by creating a consistent way to file and retrieve data will be invaluable as unexpected changes come your way.
Protect your IP Rights. You cannot allow your company to lose an IP right on your watch. Such a loss can cost your company money, could possibly cost you your job, and may give competitors an edge. Make sure your statutory rights are protected. This requires strong workflow processes and monitoring technology which can help you ensure that you don’t overlook any patent and trademark filing or renewal dates.
Invite Everyone to Join the IP Patrol. Keep everyone at the company informed about IP developments, though to varying levels of detail based on their roles at the company. If employees feel invested in the company’s innovation, they can be your IP Patrol watchdogs in the field. Encourage employees to recognise infringement in the outside world. Deputise them for reporting potential infringement to legal so your team can investigate. To modify a saying from the U.S. Department of Homeland Security, tell employees: “If you see something [which impacts our company’s IP], say something.”
Educate all stakeholders about the importance of IP at the company. Everyone should be a part of this evangelism to some extent, from the C-Suite to the maintenance team. IP information can be shared as part of new employee onboarding. Workers can learn more via webinars, email campaigns, lunch and learn sessions, newsletters or other outreach activities. Employees need to be able to understand the connection between a strong IP strategy and building a successful business. Education will help your employees spot infringement so they can join the IP Patrol.
Track Employee Interaction with IP. Most of your company’s people interact with IP assets every day, whether they are lawyers, inventors, administrators or marketing professionals. Since people come and go from the company, it’s important to track who is handling IP and to ensure that all confidentiality and compliance requirements are satisfied. Upon joining the company, all employees should sign a mandatory non-disclosure, confidentiality and assignment agreement. They should be asked about legacy projects they worked on with prior employers to prevent your company from inadvertently infringing or co-opting IP. While employees work for the company, their interaction with IP should be carefully tracked with available tools to show which projects they worked on, and who they collaborated with. IP management systems can capture detail about projects they worked on during their tenure at the company. CRM databases can track leads, entries and deletions. Technology systems allow you to assign data access and downloading rights to confidential information.
When leaving the company, departing employees should be interviewed before they leave to ensure they won’t be divulging confidential information to new employers. When workers leave, technology systems can produce a list of projects the departing employees worked on. If something suspiciously similar appears in a competitor’s product, you’ll have proof of where the leak occurred. By tracking employees’ interaction with IP before, during and after their time at the company, you can ensure data privacy and security for the company and guard against infringement.
Leverage Flexible IP Management Tools to Communicate Across the Company. If corporate legal has one system, HR has another, and R&D has still yet another, intra-departmental communication can be compromised. IP should be managed by a dedicated IP management system that communicates via API with other mission-critical systems. Your IP system should be accessible by stakeholders, with properly secure profiles and roles.
Ideally, your IP Management system should allow Marketing and R&D to submit requests. If marketing is planning a big campaign behind a new product but they haven’t checked with legal to see if the trademarks can be cleared, it’s easy to see how such disconnects in communication can lead to costly mistakes for a company. A strong IP management solution solves these problems by incorporating both “need-to-know” access to facilitate communication between stakeholders and fully managed IP from initial idea stages through commercialisation.
Your IP system must be flexible enough to grow, bend and shift with how your business is advancing. Assuming that your business goals and IP strategy will constantly change, your IP management tools should be just as nimble so you can adapt the tools easily and quickly stay ahead of change. Your system should work for you, not against you.
Be the Innovation Supply Chain. Just as manufacturing has a supply chain, an organisation’s IP is the Innovation Supply Chain. A constant supply of new ideas is essential to future-proof your IP. Be in charge of collecting all innovation. Use an IP management system that will measure what you have, and the flow of your supply chain. Collect all the ideas in your Inventor Portal. You can then determine whether you are getting enough ideas, whether your invention disclosure pipeline robust and what is hindering idea generation. Be the hub for feedback on inventions to make future decisions. Help your company culture encourage innovation by opening the portal to everyone. Measuring the input of ideas is just as important as measuring the output. Using these metrics helps make critical decisions to get the most out of your innovation supply chain.
Integrating IP Management with the Company’s Financial Model. Your company’s IP portfolio can be a money making engine, perhaps the most important financial driver. Make sure you are tracking the net value of your IP, or even the cost of your protected assets vs. the cost of unprotected assets. IP and financial departments are forever linked. Be certain your IP workflows and systems are calibrated to assist with budgeting, cost projection, and providing intelligence to enable smarter financial decisions about the IP portfolio.
Choose an IP Management System that Adjusts Seamlessly to Change. Change is a constant, we started with that and we will end with it. Due to shifting priorities, in-house IP counsel must be flexible in serving their clients. When business goals change, the IP management strategy will need to accommodate this swiftly and seamlessly. The more metrics, data and KPIs (Key Performance Indicators) a corporate IP department can track, the better equipped it will be to adjust when change inevitably comes. Then, when the C-suite asks you to justify budget and headcount, you will have data at your fingertips. IP management systems that require work orders and additional cost to create fields and workflows that change will strand you without answers when the new CEO changes strategic direction. Track a variety of measurements either manually or with a system equipped with configuration for rapid customisation of fields, workflows, reports and dashboards, enabling greater responsiveness and agility.
Future-Proofing your company’s IP is a multi-step process, a worthwhile endeavour that will pay dividends for years to come. Getting your proverbial IP house in order is the first step; this includes not only corralling documentation but also taking a more holistic approach to raising IP awareness across the entire company. From corporate legal and R&D, to HR and marketing and beyond, all stakeholders need to be invested in the IP process. IP management systems and tools can be incredibly helpful in providing organisation, metrics and a decision-making platform to manage your innovation supply chain. IP management tools should include a strong workflow engine and an open portal for communication throughout the company. Corporate IP counsel plays a pivotal role in shaping the IP portfolio as it weathers change. By following the 10 tips shared above, IP lawyers can bring structure, security and flexibility to IP management at the company, thereby successfully protecting the organisation and its greatest assets, both now and into the future.
Damian Durrant is a lawyer and vice president of enterprise solutions at IPfolio, an intellectual property (IP) management software company