May 24, 2016 | Written by: sue.hallen
Categorized: IP Portfolio and Landscape
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An IP portfolio contains your ideas, patents, trade secrets, trademarks, copyrights and defensive publications. Do you know what is in your portfolio, why it is there and the value of those portfolio assets to your company or your products?
There are two major challenges:
- One information source (or one access across many sources)
- Time and resources to create, maintain and leverage the data
Many companies we work with struggle with maintaining relevant and up to date information on their portfolios. It takes a commitment of time, energy, cross functional inputs and consistent attention…and that always seems to be at the bottom of your priority list.
The “right size” of your portfolio means it provides:
- Freedom of action
- Support for your business and IP strategies,
- Brand and influence support,
- Support for a robust innovation culture.
Every company has different purposes for their portfolio. Defining the right size starts with understanding the purpose.
Once you know the goals for the size and the focus of your portfolio (we will discuss the IP Strategy in the next blog), you need some ideas on how to right size the portfolio. We will focus on your Patent Portfolio for the remainder of this discussion.
Do you need to grow or shrink your portfolio? Chances are you need to do both…grow in new areas of focus to align with your business and IP strategy and shrink in areas that are no longer relevant or needed for the direction of the company.
How should you approach right sizing?
- Grow organically
Growing organically means leveraging your internal smart people and collaborating inside and outside of your company. Here are a couple great techniques:
- Patent Mining: Look into existing innovations/development efforts to find the hidden gems that should be protected
- Patent brainstorming: Get a team of people together physically or virtually and brainstorm new ideas. Nothing is bad. Open the idea flow. Assess and prioritize at the end, do not put limits down too early. It is more effective to start with a topic area or problem area…then open up the ideas for solutions. And note: not every idea needs to be patented: trade secrets and defensive publications are alternative ways to protect IP.
- Patent incentives: What is the culture of patenting and innovation in your company? Do your inventors (and EVERYONE should be an inventor) have incentives to patent? Incentives are often monetary. But you need to understand what your team responds to best. It could also be public accolades, titles/tiers of expertise, or as a requirement for promotion. Or a combination of all of these. Set up the incentive system and be consistent in its application.
- Grow Inorganically
Obtaining a patent portfolio from outside the company can be done in many ways. However you do this, you need to have a lightweight repeatable process to identify the need, find the source and bring in the IP.
- Mergers and Acquisitions: Identify a company or technology that fills a gap in your portfolio and acquire the company
- Buy the IP: Instead of acquiring the whole company, you might want to buy the patents.
- License use of the IP: Obtain a license for usage rights of another company’s patents or portfolio.
- Joint Development Agreements: Collaborate with others, but make sure you have the patent rights for joint developments defined in the agreement up front.
- Shrink your portfolio
Shrinking a portfolio is much more than making maintenance decisions. It takes forethought of understanding the value internally, potential value externally and the direction of your company.
- Maintenance decisions: Do you want to continue to maintain your registration of the patent in all the countries you have patents? Every PTO has different timetables for maintenance decisions.
- Sell the patents: Select individual or clusters of patents to sell to other companies. This often includes a license back for continued use in your products if needed.
- Divest of a part of your company, including the applicable IP: Make sure the value of the IP is included in the divestiture valuation and contracts.
If you are interested in more information or help with IP Management, the IBM IP Management Solutions team exists to bring IBM’s expertise in IP management matters to our clients. Contact me for more information and please visit our web page at www.ibm.com/ibm/licensing/ip_management.html