This article is Part IV of a series of newsletter articles dedicated to the development and implementation of an IP strategy for businesses.
In Parts I to III of this series, the focus was on the design of an IP strategy, the creation of an IP culture within a company, and establishing a basic defensive strategy.
The purpose of the present article is to provide insight into how to develop an infrastructure for development of an IP portfolio that is well-suited for a business.
In developing a process for identifying IP for purposes of patenting the following items should be addressed:
- Development of an Invention Disclosure policy;
- Development of a patent award policy for inventors;
- Implementation of a software tool for tracking/organization of IP;
- Establishment of a process of identifying and selecting patentable ideas; and
- Establishing an IP budget.
i. Development of an Invention Disclosure Policy
A number of considerations need to be addressed when preparing an invention disclosure policy. Some major considerations are listed below:
- Establish criteria to be used in identifying IP for patent protection;
- Recommend content and format of Invention Disclosures, together with a discussion of the relevance of each item in the Invention Disclosure;
- Establish a format that is simple to use for ease in assessing technology for purposes of patenting.
ii. Development of a Patent Award policy for Inventors
A patent portfolio can provide an important source of revenue for a business, a competitive edge over competitors, and a strong defensive position against attacks of infringement. However, scientists and engineers are often too busy to be pre-occupied with patents and patenting inventions, and would rather be working developing new products and ideas. Being an inventor on a number of patents can be valuable for a professional’s career path, but sometimes this is not sufficient to raise interest in patenting. Some businesses provide additional incentives to inventors for participating in the patenting process in order to promote an IP culture. The incentives may be in the form of monetary rewards for patents when they become granted or recognition for the most active inventors, for example.
iii. Implementation of a Software Tool for Tracking/Organization of IP
When developing a patent portfolio it is imperative that a proper tool for tracking patents be in place. The life of a patent is typically 20 years from the filing date and for each patent there is a considerable amount of information to maintain. For example, a docketing system is necessary to make sure that due dates for responses to requests from patent offices and for payment of maintenance fees, for example, are respected. Furthermore, the tool should also maintain information on the valuation of patents. For example, a patent that is tagged as being valuable may be key in a defensive strategy and/or licensing program. In addition, a patent may be tagged for divestiture for providing revenues through sale or tagged for abandonment to save on costs of maintenance fees.
iv. Establishment of a Process of Identifying and Selecting Patentable Ideas
Having a proper Invention Disclosure policy in place enables a business to effectively mine patentable ideas and recommend ideas for patenting, which fall within the scope of the business’ IP strategy. For example, the IP strategy may define selection criteria that are based on the need to mitigate risk for exposed technologies and on potential for future revenue through licensing efforts. These selection criteria might be applied in a review process of Invention Disclosures submitted by engineers/scientists. The process might also include interviews with engineers/inventors to discuss their research and solutions to problems, and recommendations of ideas for patenting based on those discussions.
v. Establishing an IP budget
Establishing a proper budget of IP is imperative in implementing a successful IP strategy. The amount to be allocated to a budget can vary depending on the level of complexity of the IP strategy and the size of the patent portfolio that is sought. Given below is list of items that should be considered in preparing a budget for developing and maintaining a patent portfolio.
- Costs for establishing and maintaining the infrastructure described in items i) to iv) above;
- Costs for preparing and filing patent applications;
- Costs for prosecution (Examination Process) of patent applications;
- Maintenance fees and other government fees associated with the patent applications; and
- Costs for acquisition of patents and patent portfolios, if applicable.
The above costs only cover expenditures for developing and maintaining a patent portfolio. Additional funds should also be allocated for the development of the IP strategy discussed in previous parts of this series of articles, and maintaining a licensing program and/or patent divesture program, if applicable. These costs will also depend largely on the type and level of complexity of the IP strategy being implemented. |