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Q3 2004 Issue 9
TABLE OF CONTENTS
Do you know what is in your
Intellectual Property portfolio?
There will be new
business paradigms with the ongoing IP explosion
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LETTER TO IP PROFESSIONALS
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Dear IP Professional,
Our most
recent intellectual property study has reinforced the need
for improved portfolio management. Most IP leaders
interviewed look at the quantity of the portfolio but are
unable to articulate the quality. How can you and your
company make critical IP decisions if you don’t have a solid
understanding of the condition of your portfolio?
In this
issue we provide you with a few methods to organize the
portfolio that can help you communicate with business
management more effectively. Additionally, we challenge you
with questions that will hopefully provide you with an
assessment.
We have a brief statement discussing the "emerging
language" of IAM. We believe that a challenge the IP
leadership experiences is their inability to communicate
using a vocabulary that business management is comfortable
with. Our discussions with business management
confirms the communications gap.
This trend
section we write about the new business paradigms with the
ongoing IP explosion. We invite you to send in the trends
you are observing.
We are
introduce a new section, "Survey Question", this section
allows us to gather answers to questions we are asked on a
daily basis. The intent is that we will distribute the
computation of the responses to the the participants.
In our next
issue we would like discuss Sarbanes-Oxley and Intellectual Property. What's the impact
of the lack of intellectual property internal controls? We would like to
get your thoughts and opinions.
I look
forward to hearing from you. We are always interested in
your insights.
Sincerely,
Rob
Williamson (rwilliamson@ipambestpractices.com)
PetrashWilliamson
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| IP MANAGEMENT QUESTIONS |
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Do you know what
is in your Intellectual Property portfolio?
The need to better
understand what your Intellectual Properties are and what they are
not. Having a keen understanding of the substance and roles your
patents play is important if you want to maximize the value of the
portfolio. The ability to quickly reference the portfolio and
relate it other IP within it and with business data can be
invaluable in developing and leveraging business strategy.
It is amazing to us
how few companies have an organized list of their patents,
trademarks, key copyrights, trade secrets, and agreements. Few
companies can easily answer the following question about their IP.
- What
percentages of your patents are being utilized?
- What is the
annual cost to maintain the patents in the portfolio?
- What are your
company’s trade secrets?
- What patents
does licensing agreements encumber?
- What is the
projected licensing income from agreements?
- What business
is responsible for which IP in the portfolio?
- Have we
complied are complying with the terms and conditions of our
agreements that involve IP?
- Which
Business? Technology? Product? Is making the best use of its IP?
- What is the
total cost obligation to keep the patents in the portfolio in
force?
We believe that a
well organized, documented, and preferably data based IP portfolio
is necessary to leveraging the portfolio for maximum value and will
become an absolute necessity to remain competitive in the future.
Some of the benefits of a well-organized portfolio are the
following:
- Quick, easy,
and accurate IP information to support decision-making.
- Historical
documentation to better understand IP decisions.
- Internal
reference for new projects and IP.
- Disciplined
management of IP.
- Ability to
make better decision from a portfolio perspective rather than by
individual IP.
Creating a
well-organized IP portfolio does not have to be an overwhelming
effort.. An organization that decides to address improving its IP
portfolio does not have to reinvent the wheel. There are proven
approaches to accomplishing this.
The Portfolio
The
following are some examples of some out puts of a well
managed and organized IP portfolio could be like these:
The above
portfolio report is used by a number of large corporations
to report to their management and in some cases to
shareholders. It is particularly useful when reported by
business segments.
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Inventory
The
well-organized portfolio could look like this:
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CLICK HERE TO GET MORE INFORMATION ON PETRASHWILLIAMSON
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Newsline:
SURVEY
ON STRATEGIC MANAGEMENT OF INTELLECTUAL PROPERTY |
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Over
60 Companies participated in the Survey on Strategic
Management of Intellectual Property.
This
comprehensive report includes over 150 questions and 60
exhibits and graphs. It is organized into three strata of
companies, delineated by invention disclosure activity.
Additional delineations are by major industries.
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(Study was organized into
three groups based on Annual Invention Disclosures- 0-150
Disclosures, 150-500 Disclosures, and > 500 Disclosures)
Sample
Findings:
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All (100%)
of the Larger Companies (>500) measure the effectiveness of
their IP group by # of patent applications filed and # of
patents granted whereas 69% of Smaller Companies measure the
effectiveness of their IP group by # of patent applications
filed.
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Most
companies surveyed, regardless of size or IP activity level,
stated that “lack of management support” and “lack of
understanding” are the biggest challenges in managing IP.
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Most IP
portfolios are audited annually or rarely, if at all.
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Less than
50% of the surveyed companies do a patent search before
initiating any R&D or product development.
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Marketing
plays a more significant role in IP decisions in smaller
companies than in the larger companies.
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Over 50%
of the companies do not use quantitative criteria to guide
patenting decisions.
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Larger
companies (75%) are more apt to use specialized software
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applications
to automate or support IP management decisions.
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IP
headcount reporting directly to operating units is more
prevalent in smaller companies (48%).
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Education
is the highest priority for IP Departments in Large Companies.
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Over 69%
of the companies had a Patent Review Board.
For more
information please contact us. 630-416-7459
Contact
PetrashWilliamson to purchase or request the overview
630-416-7459
>>Click
here to get details on the complete report. |
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Discussion
Topic: An Emerging
Language |
An Emerging Language
Intellectual
asset management (IAM) is not an entirely new practice for
organizations. Yet, a new language is emerging that helps companies
more clearly see and understand the opportunity to better leverage
them. When developing new concepts, using a well-established
business language that is readily understood around the world is an
advantage. Leaders of industry, for the most part, do not need
translations or clarifications of business terms when talking to
people within their companies, customers, suppliers or
stockholders. The new language of intellectual asset management is
not yet common in business, but without it leveraging these assets
in a systematic, efficient way will be difficult.
>> CLICK HERE TO COMMENT |
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| What role/title in your
organization is the Intellectual Property Champion?
If there is none, reply with "none".
>> Reply with Answer
Responses will be
kept confidential. Participants will receive the results. |
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| BENCHMARK REPORT |
Organization
of IP Function
Patent
Data
Intellectual
Property Processes
Intellectual
Asset Portfolio Maintenance
Intellectual
Asset Portfolio Management
(Strategic/Portfolio
Exploitation)
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Intellectual
Property Asset Management Benchmark Report: 10 Industry Leaders This Benchmark
Report is a unique offering from PetrashWilliamson. It provides your
IP leadership with tremendous insights of 10 leading companies IP
program. Included in the report are Process, Metrics,
personnel and technology. Large companies get a picture
of what their contemporaries are doing and small/medium size
companies get exposure to companies practices to learn for future
application.
The authors
provide you with a synopsis of the interviews as well as the detailed
answers. They discuss the complete IP lifecycle.
>>Click
here to get overview on the complete report. |
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| TOP
14 CHALLENGES FOR INTELLECTUAL PROPERTY PROFESSIONALS
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1.
Excessive reporting requirements
2.
Business people do not understand Intellectual Property
3.
Delusional Management
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Extensive reporting requirements
5.
Lack of definition & context
6.
Ad hoc
processes
7.
Determining where to start
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No consistent process
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Inefficient
& costly
10.
Functional
silos
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Under
leveraged portfolio
12.
Lack
of alignment with business strategy
13.
Difficult
to develop metrics
14. More
to-do and less resources
CLICK
HERE TO TELL US IF YOU AGREE OR DISAGREE |
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There will be new
business paradigms with the ongoing IP explosion
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Bundling
concept – Multiple partners
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Industry
standards and patent pooling
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Take the IP
high ground by patent ownership gives major competitive
advantage even if patents are challenged.
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Litigation
will determine ultimate disposition
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In some
industries speed to market and shorter product life cycles
make patents less important
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Who needs a 20
year patent, with short product life-cycles.
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Expect
governments to enable “designer” patenting in the future
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Shorter
periods in some industries (Pharma?)
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Patent
examining depts. self interest bureaucracy leads to bad
patents
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Implications
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There
will be new industry leaders that will find their way to the
top in unconventional approaches of which IAM will be a
cornerstone to their success. Existing leaders will
recognize that what made them successful in the past will
not necessarily be what allows them to have future success.
These companies will prepare now in building the IAM
competencies and capabilities required for this future. IAM
will be the next big thing. It is one of the few rocks of
opportunity left un- turned.
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630 416 7459