In summarising an INNOVATION IP™ programme* workshop, Allan Main (MAINly Consulting) and Ian Boddy (IKB Consulting) shared ten critical success factors for effective intellectual property (IP) management.
1. Corporate strategy directs your IP plan
Your business plan always drives the IP management plan. If you do not have a clear vision and strategy for your business it is impossible to have an effective IP plan. Once your business strategy is in place, you can frame your IP plan to serve and deliver those aspirations. Focus your IP strategy on key enablers, both proprietary technology and unique identity, then ensure that your IP management tactical choices are appropriate to your business goals.
2. Frame your IP to support commercialisation
Path to market is critical to determine the appropriate elements of IP management. The IP portfolio that supports self-manufacturing/marketing will be different from that which enables a third-party licensing strategy. Be clear about your current intentions and future options, and structure your IP portfolio to best support these. For example, trade secrecy can be an effective technology IP strategy for self-manufacture, but is less robust in a licensing context where registered IP is preferred.
3. Make IP your business
Put IP management at the core of your business by building an IP culture of supportive beliefs and behaviours, with an effective IP architecture of policies, procedures and tools. IP leadership should be embedded in your corporate structure.
By investing in basic IP training you can save yourself many headaches later.
4. Be strategic with IP investments
Design your international IP coverage to give you the best net return on investment, then sweat those assets.
All registered IP rights are local, not international, so focus on key countries. Choose the best coverage you can afford. If you are in manufacturing, seriously consider protecting China.
Time is of the essence as IP registration is a queue - first-in-line gets the rights. Use provisional patents to buy 12 months to hone your final patent.
5. Keep tabs on your IP
Identify all your IP assets, registered and unregistered. For technologies include trade secrets and patents, for identity rights list trademarks, designs, web domains. Don’t overlook critical copyrights (eg for software), licenses and contracts.
Now log these assets in an IP Register. Your computer is logged in an assets register, yet IP assets are more worthy of that attention.
6. Be the master of secrecy
Confidentiality is always IP’s starting point. Filing patents and designs require prior secrecy, and signalling your trademark intent invites counteraction from competitors. Institute a strong secrecy management culture and architecture in your business; invest in solid confidentiality agreements and use them!
Ensure contracts claim and protect your IP, especially supplier contracts (including employment and research contracts), transfer agreements, licenses and sales contracts.
7. Choose your IP professional carefully
IP law is too specialised to rely on a general commercial lawyer, so choose an expert in IP law. For patents, find an attorney with technical skills in your field. In some specialist technologies an overseas attorney may be your best choice.
It doesn't have to be a big practice attorney. Many capable attorneys operate small practices with far lesser overheads.
8. Use cost containment practices
IP management can be expensive when professionals are involved. Reduce costs by doing simple actions in-house such as monitoring emerging IP, preliminary IP searches and simple trademark applications.
When escalation is needed or you are unsure - take your preliminary work to your IP professional – it improves briefing and you will better understand their advice.
9. Play a strong defence
Guard against infringing others’ rights. Determining Freedom to Operate (FTO) may be the best IP investment you make as the failure cost can be devastating.
Build FTO into key business processes such as R&D (avoidance space) and marketing (identity position clearance).
10. Make IP management BaU
Effective IP management must be routine, part of everybody's job. It should be as top-of-mind as other critical business management functions like financial management.
IP is a key strategic vehicle - drive it from the top-down and live it from the bottom-up.
Updated: 11 July 2022