Whether a company uses its IP offensively or defensively, a company's
investment in IP strategy can be implemented cost-effectively in both the short
and long term. Below are four practices to consider.
IP portfolio audit
Idea: Ensure business alignment of a patent portfolio.
Process: Categorize the IP into 3 buckets: patents used
currently in the business, patents that may support future direction, or patents
of no business interest. A strengths assessment of those patents of "no business
interest" can inform the decision to license/sell or abandon.
Example: Dow Chemical saved $40M in the early 1990s by
abandoning patents that the company evaluated as having no business use or
licensing value. For more information, see "Reducing
Costs in Managing Patents."
Strategic foreign filings
Idea: Establish priority date while delaying individual
country translation and filing fees.
Process: File an international patent application under
the Patent Cooperation Treaty (PCT). The applicant has up to 30 months to
evaluate market and technology factors before investing more in IP protection.
Example: Instead of paying for translations and application
fees in many countries when the patent application is first filed, you can
delay foreign filing costs by using the PCT filing approach. If, during the
30 month delay, the original business reason for filing the patent application
ceases to exist, then the application can be abandoned before significant
translation and filing costs have been incurred. This can save in the range
of $50,000 per patent. Similarly, if the preliminary patent search for the
PCT application by the chosen authority (EPO, USPTO, etc.) finds relevant
prior art, then the application can be abandoned without any more expense.
Idea: Prevent competitive patents from issuing by creating
Process: Protect incremental improvements to already patented
core technology by writing enabling descriptions and then disclosing these
descriptions in the public domain, such as on IP.com's prior art database.
Example: While IBM's prolific patenting practice is well-known,
fewer people recognize that IBM's IP strategy incorporates defensive publications,
in the form of its Technical Disclosure Bulletin. These publications prevent
competitors and customers from obtaining patents on-top-of IBM. This protection
of Freedom to Operate is very valuable in allowing future design freedom for
the R&D engineers.
Strategic portfolio development
Idea: Build IP portfolio strategically not ad hoc.
Process: Focus IP investments by filing on targeted R&D
Example: This strategy prevents the opportunity cost of
R&D staff inventing in areas that do not relate to the business strategy.
A powerful innovative engine is created when the R&D staff is led by a
business-aligned IP strategy. No IP investment is wasted on non-aligned patents.
Utilizing these four practices can reduce your IP costs and establish a stronger,
more valuable IP portfolio that supports the business strategy. These are just
some of the effective Intellectual Asset Management processes that can be implemented
to help your business compete in this difficult economic environment.