The reviewing process (figure 1) is central to aligning IP with IP strategy. In the reviewing process, organizations need to decide whether an invention should be filed as a patent application, an enabled publication, kept as a trade secret, or abandoned. Organizations that do not use this process generally file patent applications on everything that is deemed patentable coming from the R&D staff. There is no one “minding the store” to ensure that the IP strategy is followed. This is a very expensive way to create a low-value patent portfolio!
The creation of an IP Review Committee, a multi-functional high level team with the appropriate charter and authority, can make an immediate change in the direction of the IP generated (Figure 2). I have seen companies transformed by implementing this process where none previously existed. I have seen other companies with a minimally functional IP Review Committee and very subjective criteria for evaluating invention disclosures. The companies without objective criteria and strong IP Review Committees generally did not achieve the results they wanted; when inventors learn that politics and favoritism influence which inventions get filed as patent applications, they quit submitting invention disclosures! Imagine how many inventions “bubbled away” instead of creating value for the company! It is important to have transparent decision criteria and to educate inventers about the IP review process.
The foreign filing decision process is another important step in the Reviewing stage. This process should be based on a global business strategy and tempered by the legal enforcement experiences in the various countries. Often, companies use up valuable resources obtaining patent coverage in countries where they will never get a return on investment. Companies can act much more efficiently and strategically by aligning foreign filing with their business strategy and using appropriate in-country legal input.
A portfolio analysis to ensure alignment between patent and business strategies can be very helpful for reducing the maintenance expenditures for patents that are not supporting the business strategy. In addition, a portfolio scoring evaluation can help find those patents that may be ideal for licensing for additional revenue generation.