Review Your IP Strategy

May 31st, 2017

Last month I highlighted World IP Day and suggested a half dozen things you should do to keep your valued intellectual property on track.  Thinking that many of you passed on the opportunity, I offer a look at the first item on the list, Review your IP Strategy, and suggest thinking about how it aligns with your business strategy.  This post will focus on patents.

Aligning strategies requires understanding how the timelines match up

Depending on the industry you are in, this alignment may look quite different.  Consider a product with a rapid lifecycle in the figure below.  By the time you have an issued US patent, you may already be selling the next generation of your product, or a completely different one.  In this scenario, you should think about protecting your core technologies more intensely than ancillary features.


Perhaps you are in a pharma or biotech company with a much longer development timeline.

In the second scenario, patent protection is critical for more aspects of the product because of the long timeline, significant investment, and exposure of the product before it is available for sale.

But in this second scenario, there are many opportunities for the patent strategy to become misaligned with the R&D activities or the marketing plans.  After all, those activities rarely progress on a straight line as planned.  Yet, the patent process is fairly linear with distinct deadlines.  Delays in development may require changes in your patent filing plans.  These things need to be communicated to your IP folks!

Your business may fall somewhere in between these two extremes

Nonetheless, it should be evident that along the way from concept to product, you should compare the IP activities and the product development activities.  This is done by gathering information and holding an IP review.

The information you need is not held by any one individual

In the IP world, everyone in the value chain for a product plays a specific role according to their needs and view of the world.  Here are some examples.

Research and Development:  Your scientists and engineers are often so busy with their work that once the invention disclosure is filed it’s the last you’ll see or hear from them on the topic.  And, there may be related or follow-on inventions that haven’t been disclosed but are being incorporated into the product.

Project Management:  This group may come the closest to knowing how the pieces are fitting together.  They should have the timelines and delays well in hand.

In-house or outside counsel:  Patent attorneys who prepare and prosecute applications are usually focused on defining the scope of the patent claims.  In-house counsel may have a feel for the business activities, but may not always be up to date.  Remember that most groups run when they see legal coming!  Outside counsel will only be aware of what you are thinking or doing if you tell them.  They can’t read your minds.

Marketing:  This group is defining the features, attributes, and commercial claims associated with the product.  Will the patents actually cover them?  Many of the patents were likely drafted at the start of development and not looked at since.

Periodic IP reviews will keep you on track

Once you overlay the timelines, understand the needs of each group, and have gathered information along the way, it’s time to bring the groups together to share and validate the assumptions.  This is where you bring in your IP folks to facilitate a review in conjunction with the project management group.  It’s not as hard as you think and, even if you have to pay outside counsel, it will save you time, money, and heartache in the long run.

If you need help with this, give me call.



World IP Day – Time to review your IP portfolio

April 25th, 2017

Tax Day comes every April and most of us take the time to review our personal finances.   World IP Day also happens every April as well, and most companies miss the opportunity to review their valuable assets.  So this year, make a commitment to examine these 6 important areas.  If you need some assistance give me a call!

  • Review your IP Strategy

Is it aligned with your business strategy?

Is it in concert with the current changes patent law?

  • Take stock of your patent portfolio

Ensure you have the proper balance between expenditures and scope of protection.

  • Harvest new invention disclosures

Not only will it lay down protection for future products, it will excite the scientific and engineering staff.

  • Review your trademark registrations

Are all of your marks in use?

  • Review confidentiality agreements and trade secret protections

Do you even have a trade secret protection plan?

  • Examine your royalty payments on in-licensed IP

You might be surprised to find that you are still paying on expired patents!

Don’t Try This at Home

May 15th, 2010

At a recent networking event I met some scientists from a new biotech startup. They told me about several provisional applications in their pipeline. They were so proud they had drafted and filed them on their own. They saved “a ton of money.” But did they do more harm than good?
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Celebration or Regret?

April 26th, 2010

Today is World IP Day 2010. Are you celebrating today or looking back wishing that things had gone differently?
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Who’s Minding the Store?

April 7th, 2010

By now you surely understand the importance of paying close attention to your IP portfolio.  So the next question is, who in your company is doing it?  Many companies rely on outside counsel to prepare and prosecute their patent applications.  But you could be getting more out of the money you are spending for that time and effort.

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Time to Spring Clean Your IP Portfolio

March 16th, 2010

The arrival of spring in San Diego isn’t a big deal. The weather is nearly perfect year round. But in some parts of the country, folks are just beginning to open the windows and clean the house from winter.

What does this have to do with intellectual property?
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Hope Is Not A Plan

March 3rd, 2010

Does this sound familiar? “The Board meeting is tomorrow and I hope they don’t grill me on the IP!”

A wise friend of mine once told me, “Hope is not a plan.” This is especially true when it comes to IP protection for your product and business. Having a real IP plan, instead of hoping that all of those applications you’ve been filing will stop infringers, is fundamental to your business. And it’s well within your grasp.

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SWOT – A Tool to Help Determine the Real Value of your IP

February 18th, 2010

Understanding the value of your IP consists of knowing the strengths and weaknesses of each application in a portfolio and of the portfolio as a whole. It also means understanding the opportunities and threats presented by your competitors’ IP. Using that information you can begin to craft a realistic and manageable strategy to maximize your IP protection and value and to manage associated risks.
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Positioning Your IP

February 15th, 2010

Simply having the next greatest product with patent protection is not sufficient for success in the market. You are seeking patent protection to enjoy exclusivity and to keep competitors out of your market space. And so are they. Eventually, however, the patents will expire and lower cost versions of the previously protected product will enter the marketplace. Knowing when this will happen to both you and your competitor(s) will help you position your product and IP for maximum value.

Charting Patent Expirations

In Part 1 I showed how to identify competitors and the key patents they rely upon for exclusivity. The first step to positioning your IP is to know where you currently stand in relation to those patents.
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Thirty Minutes a Week Keeps You Ahead of the Competition

February 8th, 2010

You can’t compete in today’s marketplace without tracking the activities of your competitors. It’s the only way to know that you are really out in front or if you will be late to the party. While you naturally read all of their scientific publications, are you also tracking their IP activities? There is a lot of competitive intelligence to be gained by monitoring patent and trademark applications.

In this installment, I show you how to do some of this competitive intelligence on your own. And, you can do it using free, on-line databases. Once you see the benefits, you can then decide whether to allocate funds for external support of this valuable information-gathering function. In Part 2, I’ll show you how use IP positioning to maximize your competitive edge.
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