Archive for May, 2017

Review Your IP Strategy

Wednesday, 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.