The Case for a Comprehensive 360° IP Strategy: Step 3 - Implementing IP Assets/Business Strategy Alignment
This article is the fourth in a multi-part series on the critical need for businesses to extract total value from their IP assets by developing and applying a comprehensive, consistent and cost and time efficient IP strategy.
Now that you have developed a prioritized set of recommendations for aligning the IP assets with your corporate strategy, the next step of a comprehensive 360º IP Strategy is to make the alignment a reality.
First: Establish a multidisciplinary IP Committee/Organization to prepare and implement the plan.
The multidisciplinary IP Strategy Committee/Organization should include representatives from every functional unit in the company—for example, C-level, legal, sales, marketing and technical representatives. Clear lines of responsibility, communication and appropriate authority need to be assigned and delegated to ensure successful development, implementation and long-term success of the plan. It is also vital that the plan be identified as a core corporate priority with strong support, involvement and buy-in—from the top down—to drive involvement and excitement from the bottom up. Developing and implementing an IP Strategy program is not an insignificant undertaking and requires dedication and perseverance by all involved. As an example, the team might have the following tiered structure and include some or all of the following personnel roles:
IP Executive Team: The traditional suite of c-level positions (e.g., CEO, COO, CFO, CTO, General Counsel, IP Manager, Director of Research & Development, Director of Marketing, Director of Sales, etc.)
Patent Counsel: Inside and/or outside counsel (serves as a conduit for all communications to and from the GC in order to maintain privilege)
IP Technical Team: IP Manager, Director of Research & Development, Director of Marketing, Director of Sales, Technical Area Leads, Engineers, Scientists, etc.
Support: Data Entry Clerk
Second: Cross-reference your IP assets with the products and/or services they cover.
Create a two-dimensional matrix to cross-reference your patent, trademark, copyright and trade secret know-how assets with each of your products and/or services (see FIG. 1 below). These assets can include pending and issued patents; common law, as well as pending and registered trademarks; registered and unregistered copyrights; and explicitly established trade secret programs. As an example, the simplified and partial spreadsheet shown below illustrates a hypothetical cross-reference of a company’s complete IP portfolio against its products and services.
Third: Rank your products and/or services based on their importance (i.e., most important to least important).
Here you want to identify and categorize your products and services/technologies by how important they are to your business. For example, is the product or service a core technology or a platform technology upon which your business is built? In other words, which products, services and/or technologies provide you with significant revenue streams or have other high strategic value? Color-coding all of your goods and/or services can be used for ease of identification of the most valuable products and services. As an example, you could use green to indicate your first tier and most valuable core or platform technologies; blue to indicate your second-tier and next most valuable, although not core or platform, technologies; yellow to indicate your third-tier and lesser valuable technologies; and red highlighting to indicate your fourth-tier and least valuable technologies that could, potentially, be “pruned” out of your portfolio.
Fourth: Identify the spots where your IP assets don’t cover the products and/or services.
Color-code any good and/or service not covered by at least one (of each) patent, trademark, copyright and trade secret in, for example, red, and highlight in, for example, yellow, where the existing protection(s) do not accurately and completely cover the product and/or service. Short descriptions of the deficiencies and how to correct them can be entered into the highlighted boxes. A benefit of this visualization is that important areas for remedial action quickly become apparent. For example, looking at the “Service/Maintenance of Product Line B” in FIG. 3, below, this is identified as bringing high value to the company, but there are no patent claims that currently cover the Service/Maintenance procedures. This should lead the company to analyze, first, whether it is even possible to obtain patent protection for the procedures and, if so, then to include the pursuit of such patent coverage in the action plan that we discuss in Step 5 below. If it is not possible to have patent protection, for whatever reason, a note to that effect should be added to the matrix, and the highlighting can then be removed. Also observe that in FIG. 3 there is no copyright for the service manual, which should be obtainable; as such, your action plan should include a task to obtain a copyright registration for this manual. Finally, although FIG. 3 shows that the company does have a trademark correctly listing all of the provided services for the Service/Maintenance of Product Line B, unfortunately, due to a recent Trademark Office change in how services are classified, the IC designation is no longer correct. Fortunately, this is an easy fix and should also be added to the action plan.
Additional/alternative color coding and/or commenting can be implemented, as needed, to fit each user’s individual preferences and needs.
Fifth: Develop an action plan and cost estimates to correct noted deficiencies.
Prepare the plan as a prioritized list starting with the most urgent tasks—actions related to core/platform technologies should be listed for performance first and in the order of their importance within that group. Costs and timelines need to be associated with each action, so work flows and work assignments can be developed to ensure that needed actions are accomplished. Although not explicitly shown in the examples, the action plan can include tasks to “prune” some IP assets from the portfolio by simply not maintaining them (de facto abandonment), explicitly abandoning one or more of them, or selling assets in a private sale or at an auction.
Sixth: Implement the action plan.
Implement the action plan in the order specified in the prioritized list. Progress on each action needs to be tracked and reported until completion. Costs and timelines associated with each action need to be updated and modified as problems/delays are encountered to ensure the work flows, and that work assignments are completed as planned or proper workaround actions are identified and implemented.
By determining a company’s IP assets and aligning them with its products and services—with the company business strategy in mind—the company can determine how and where to shore up its IP coverage, as well as prune less valuable IP assets.
Now that the company has determined its IP assets and aligned them with its products and services, we are ready to begin the next step of the 360º IP Strategy: Implementation of the Plan and Progress Tracking. The next blog in this series will address this important step toward developing and implementing a comprehensive IP strategy for Company A.
This blog was written by David Schaffer and Eric King at Miles & Stockbridge.
Opinions and conclusions in this post are solely those of the author unless otherwise indicated. The information contained in this blog is general in nature and is not offered and cannot be considered as legal advice for any particular situation. Any federal tax advice provided in this communication is not intended or written by the author to be used, and cannot be used by the recipient, for the purpose of avoiding penalties which may be imposed on the recipient by the IRS. Please contact the author if you would like to receive written advice in a format which complies with IRS rules and may be relied upon to avoid penalties.