Evaluating the diligence of a company’s intellectual property management process can leave decision makers paralyzed. What questions do you ask? What do you look for? Is it possible your organization wouldn’t score to well when it comes to evaluating IP diligence?
To determine how well an organization manages its most valuable assets, the following questions should be considered:
On what intellectual property does the company depend?
Understanding the intellectual property rights that are currently owned or licensed, what is in process, what is of potential value and the parties involved in these activities is the first step in properly protecting and leveraging that intellectual property. An IP audit can help, and real-time visibility is ideal.
Are employees properly trained to identify and protect intellectual property?
The best source to identify intellectual property is a properly trained workforce. Employees who are trained to understand the value of intellectual property are much more likely to disclose it internally and protect it externally. This entails effective intake and exit procedures in which rights and obligations are expressed and reiterated, explanations of the basics of intellectual property, periodic refresher sessions, creation of an effective culture that respects and appreciates confidentiality and intellectual property, and simple tools where appropriate to facilitate these activities.
Are time-sensitive issues consistently and purposefully managed?
Many IP protection activities are extremely time sensitive. Invention assignment agreements and, where permitted, non-compete agreements must be in place before an employee or contractor starts work. Any gap in this coverage or an attempt to secure it after the fact greatly weakens the protection and in some cases removes it entirely. Since most patent jurisdictions are first-to-file systems, the timing of patent applications is critical, and the timing of trademark and copyright registrations drives the availability of many legal rights and remedies.
Who owns the rights to the intellectual property?
Aside from internal protective documents such as non-disclosure, IP assignment, work for hire and other agreements, what does the chain of title look like regarding intellectual property that is licensed, acquired or targeted for acquisition? How are IP rights distributed in joint ventures, standards organizations or other collaborative environments in which the company participates? Do the inventors have pre-existing, shared or termination rights? Are assignments properly recorded and security interests perfected? If you’re not sure where to find any of these answers, it is likely your company could benefit by upleveling the organization of its IP.
Is there an IP management system in place that helps ensure a competitive advantage?
Having an inventory and culture of awareness of the intellectual property is a good step, but will fail by itself without a management system to ensure consistency and completeness. In a hyper-connected and competitive world, there is little time to lose. And there is more information needed by inventors, reviewers and business leaders about a company’s own and its competitors’ patents than can be effectively ingested and analyzed manually. IP tools that connect everyone to relevant information quickly, and facilitate fast decisions, are now critical. Cost containment is equally important. Hundreds of thousands of dollars are wasted annually by companies maintaining unproductive patents and other IP. It is easy for much of this to slip through the cracks if tracked manually or with disparate systems and services.
Is the company getting the best value out of its intellectual property?
The commercialization opportunities for intellectual property are growing exponentially. Multiple revenue streams can be created not just through direct sales of a product that might embed a protected idea, but also through the licensing of a particular technology and the brand created around it. An understanding of how the IP is (or could be) deployed can be crucial to business success. Which products or services use it? Which IP is collecting dust yet being maintained with wasted resources? Who is licensing it and on what terms and for how long (and for that matter, who are you paying royalties to unnecessarily)? Tracking all of this either manually or with suboptimal tools is imperfect at best and perilous at worst.
IP diligence is an organic process; it requires constant documentation and internal transparency. Recognizing that intellectual property creates a real competitive advantage should lead to scrutiny and the implementation of a structured approach in order to protect, foster and nurture it. To do otherwise could be a disservice to your company and its stakeholders. Thankfully, affordable technology exists that can help you get your assets in gear. Interested in learning more about IP diligence? Click below to download the guide and discover how to leverage your intellectual property for business success.