IP Strategies International
Kevin P. Ashby, B.Sc.(Chem.Eng.), LL.B.
12 September 2004
CLIENT CIRCULAR #4: Savings
from Strategies
I am told we are now in
the “intellectual property” age. In
previous years it was not uncommon practice for the CFO or company secretary to
be responsible for managing the intellectual property portfolio of a business. Typically, this amounted to receiving
correspondence from “the patent attorneys” and paying their bills. Decisions to register a trade mark or file a
patent would be left in the hands of line management. This was the extent of IP portfolio
management.
Later, this function
evolved to the point of questioning someone in the know (such as a marketing
director for trade marks, or a technical director or R&D manager in the
case of patents) or as to whether a
particular item of IP was being used or not.
On this basis, a decision on renewal or abandonment was made. The patent
or trade mark concerned could then be locked away in the bottom drawer until
the next renewal date.
Essentially, IP items
were considered expenses – i.e. to be minimised to improve margins. Often, any excuse to cull a patent or trade
mark from the portfolio was a good one.
Then came a realisation:
IP items, being property, were supposed to be assets. The role of the IP manager was defined. Appointees were often recruited from the
ranks of patent / trade mark attorneys. Some
were patent hunters: They patented the
mere scent of innovation or registered the mere suggestion of a new trade mark,
so as to cover themselves by “catching all”.
Others were IP killers, cancelling for example all but the core trade
marks protecting the main brands of the business. Still others were administrators,
implementing systems and databases to capture data and present detailed reports
comprising tables and lists of their IP.
Nowadays, all these
aspects are being integrated in the compilation of strategic portfolios
relevant to the longer term health of the business and ultimately of
shareholders. In this intellectual property age, the escalating costs of
obtaining IP protection - and then maintaining it - have focused the spotlight
on financial returns. “Catch all”
portfolios are being restricted by carefully developed IP management policies
and practices. Innovation targets are
being integrated with marketing strategies to avoid waste.
If your patent and trade
mark applications have not passed through a rigorous system of development and
selection, in parallel with the products or services they protect, you could be
throwing money after nothing – not even something that you can licence
out.
Ask of each IP item: Would
anyone else want it? If not, what use or
value is it to you?
Next issue: Where to begin.
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