Tuesday, June 10, 2008

IP ASSESSMENT

Any intellectual property assessment starts not with a catalogue of patents, but with a definition of strategic business goals and an IP vision. Then, an IP analysis system may be devised that fits the IP vision of the company. Tools may be selected to develop information, quantifiable or qualitative, capable of supporting IP management decisions directed to achieving the IP vision of the company.

Is the company looking to out-license some or all of its patent portfolio to others? Is the company looking to acquire companies with strategic IP assets in areas identified for strategic business development? Is the company trying to avoid IP infringement lawsuits by buying or licensing IP rights that might be acquired by others? Is the company looking to identify directions for targeted innovation for developing new markets? Each of these require a different type of search and different information to support decision making by company management.

Patent search and mapping tools offered by Delphion (clustering) and Micropatent (Aureka) are decent commercial tools for patent assessment, provided that a sufficient number of issued and published patent applications are available within the selected field(s) of interest to warrant the use of these tools. A patent specialist or paralegal may be trained to use these tools. Otherwise, it is best to develop a long term relationship with outside patent counsel capable of providing patent, trademark and copyright searches and IP due diligence using tools available to them.

Nothing beats a intellectual property attorney with the technical expertise and experience in using or understanding the available tools and a staff capable of providing initial keyword searches to identify relevant search terms and to analyze intellectual property assets, such as patent claims and written descriptions. A long term relationship with in house or outside counsel having a strong technical background in the related art and an understanding of your company's needs for information to support business decisions is essential to implementation of an IP vision.

A snapshot provided by a single report is only marginally useful and will soon be outdated. Continuous tracking of trends and the ability to identify opportunities aligned with the IP vision is far more useful. A long term relationship with IP counsel supporting an IP assessment provides benefits in the quality of the analysis, which goes beyond patent mapping of specifications, titles and abstracts and includes analysis of the claims, file histories and written descriptions within key areas of innovation. Patent counsel may provide information useful to key decision makers based on the reports and in depth analysis that goes beyond the reports and metrics used to keep management informed of the status of the company’s IP portfolio and strategic investments. If the IP vision is understood by the entire enterprise, then information developed using data mining tools will be supplemented by information from employees, such as the sales force, technical specialists and managers, provided that some system is in place to capture such information.

If the IP vision includes development of an ongoing out-licensing, innovation development or acquisition strategy, then adequate resources must be committed to the endeavor and senior management must be willing to be actively involved in formulating the IP vision and in managing the IP assets and the allocation of resources in support of the IP vision. IP management and analysis tools may be used for gathering specific information about company IP, providing patent mapping reports to support business decisions, presenting relevant relationships between IP clusters, identifying directions for new development, identifying corporate IP assets for out-licensing opportunities, and finding IP assets that may be beneficial targets for acquisition or in-licensing. Any use of such tools should support the IP vision and must be incorporated into the company decision making process. Decision makers must be familiar with the information that may be presented by such tools and how such tools may be understood and used by decision makers to evaluate IP assets of the company and to identify opportunities furthering the company’s IP vision.

A system must be provided for evaluation of IP assessment reports, identifying opportunities, making management decisions supporting the IP vision, and updating of the company’s IP vision.