• Intellectual Asset Management Fact & Fiction
• Managing Your Intellectual Assets
• Portfolio Analysis: Realizing the Value of your Intellectual Assets
• Five most common intellectual asset management mistakes companies 
• Your Intangible Assets A Time to Take Action
• Present State of Intellectual Asset Management

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• Dow Chemical

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In this Issue:

Letter to Intellectual Property (IP) Professionals

Questions of the Month:

Inside Counsel: 

Are you getting enough out of your outside IP counsel?  Why not?  How do you measure what you get?  Could you be utilizing them more optimally?

Outside Counsel: 

As an outside counsel supporting an in-house patent department do you feel your client is utilizing your firm effectively? Are you able to get the information you need from your client how and when you need it?  Do you feel comfortable being measured by the performance of your inside counsel?

R&D

Are you getting enough direction and support from your legal contacts (In-house or Outside Counsel)?  If you work directly with Outside Counsel, do they understand the strategy?  Does it feel like they have a patent filing strategy that is consistent with the business strategy?  Are you sharing or being asked about the ideation background of your invention by your IP contact? 

#5 Intangible Asset Driven Business Trends  

Topic of the Month  

Best Practices - Organizing for Intellectual Property Asset Management (IPAM)

Top 14 Challenges For  Intellectual Property Professionals

Top Challenges for Inside and Outside Counsel

Future Topics

Inside/In-house IP Counsel:

Are you getting enough out of your outside IP counsel?  Why not?  How do you measure what you get?  Could you be utilizing them more optimally?

Outside IP Counsel:

As an outside counsel supporting an inside patent department do you feel your client is utilizing your firm effectively? Are you able to get the information you need from your client how and when you need it?  Do you feel comfortable being measured by the performance of your inside counsel?

Research & Development

Are you getting enough direction and support from your legal contacts (Inside or Outside Counsel)?  If you work directly with Outside Counsel, do they understand the strategy?  Does it feel like they have a patent filing strategy that is consistent with the business strategy?  Are you sharing or being asked about the ideation background of your invention by your IP contact? 

______________________________________________________________________________

We have seen the trend of corporations utilizing outside counsel to support their IP efforts continuing to increase. Some companies are even outsourcing their entire IP efforts. More and more of our corporate clients are finding that their significantly internal IP resources to be under stress. Many companies have downsized internal IP resources to the point where they cannot effectively support internal demands of harvesting innovations and supporting disclosures, administrating outside prosecution and litigation efforts, and report and advocate to management strategic risks and opportunities.

Even large companies that have a high dependency on their technology and IP are continuing to pressure their IP departments to do more with less. These departments are barely able to keep their heads above water; at best reacting to priorities. It can be very frustrating to try to break this vicious circle of declining resources and reactive responses. Breaking this reactive approach requires a champion from within the company patent department that is willing to step back and look at what process and tools would be required to be able to get out in front and be more proactive. These tools and processes exist and have worked for companies in similar circumstances. More can be done with less, but it requires some investment in time and money in order to accomplish this.

We feel that if IP departments, that find themselves in this circumstance, do not try to move from reactive to proactive IP management they will ultimately find themselves being in a position of having no chance to make a meaningful contribution to the company. The vicious circle will only get worse for the department and the individuals in them

Outside attorneys have a vested interest in the plight of their client’s in-house IP legal department. The ability of in-house IP attorneys to manage their companies IP workload has a direct impact on the IP law firms they hire to support them. Their successes will be viewed as the outside attorney’s success and visa versa. Outside counsel run a risk of losing clients if they do not pay attention to what is happening to their counter parts inside the company. They can do everything they are asked to well and still end up on the short side if their company counter parts are not perceived as doing well.

Outside council can support their clients in more ways than just doing what they are asked. They need to give their clients that find themselves in these circumstances, their insights to the problem and encourage them to take the initiative in advocating change. Law firms with internal processes and tools could offer these services if they had them. Setting up interactive databases and processes that the client and outside council can access and interact with could improve both in house and outside counsel improved productivity and quality of work product.

PetrashWilliamson understands these types of problems and has successfully advised corporate and legal clients on how to address them and over come them. “We have been there and done it.”

E-mail us what you comments or questions.

ALL COMMUNICATIONS ARE KEPT STRICTLY CONFIDENTIAL 

1.   Excessive reporting requirements 

2.   Business people do not understand Intellectual Property

3.   Delusional Management

4.   Extensive reporting requirements

5.   Lack of definition & context

6.   Ad hoc processes

7.   Determining where to start

8.   No consistent process

9.   Inefficient & costly

10. Functional silos

11. 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

Trend #5   Intellectual Assets and superior Intellectual Asset (IA) knowledge will continue to make good deals better.

• Due diligence of JV, acquisitions, mergers and divestitures
• Under valued IA’s being recognized and bought by knowledgeable buyers i.e. bankruptcy
• Optimal partners will increasingly find each other through the synergy of their IA portfolios, creating stronger deals
• Companies that are better at understanding and articulating what IA value they bring will do better deals that take advantage of the other party

Implications

• IAM competency (including valuation of IA) will give companies a stronger negotiating position by allowing them to better understand the value of the intangible assets involved in deals. It will allow them to reduce risk and improve the ROI of investments because of the knowledge they have and utilize during the deal making.

Best Practices - Organizing for Intellectual Property Asset Management (IPAM)

In today’s business environment driving costs down is a key business driver. Doing more; Doing it better; and doing it for less is the new business mantra.  IP organizations are probably on the leading edge of corporate cost cutting. Why? In many cases management doesn’t see the returns on a function that costs and has a difficult time articulating value. This will be addressed in another newsletter. IP organizations have responded to cost cutting demands by outsourcing some of their work to outside law firms. Over the past few years outsourcing patent prosecution and litigation has increased allowing corporations to decrease their fixed costs. Other rational for outsourcing is improved quality and efficiencies de ability to select firms with unique capabilities or specialties. It seems that the splitting of in house and outsourced IP legal support is a best practice. The challenge is finding the right balance and optimizing the work processes in order to get the best performance from both sides.

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* Intellectual Asset Portfolio creation and inventory 

* Intellectual Property Asset Management process audit and development 

* Benchmarking 

* Strategic Advisory 

* Valuation and Evaluation Services 

* Royalty Audits

* Value Extraction Consulting

* Portfolio Analysis

* Out-Licensing/In-Licensing
* Systems Analysis and Implementation

Inside Counsel Role & Responsibilities:

Roles

Budget management

Strategic interface

Innovations capture

Disclosure

Internal communications

Agreement

Managing outside counsel

Foreign filing coverage

Challenges

Business Alignment

Budget

Harvesting Procedure

R&D Stage Gate interface

Litigation (Minimizing and reducing financial exposure)

Risk assessment

Tax maintenance fees

Terms and conditions (Agreement with patents)

Infringements (In and Out)

Getting Opinions

Product Clearances

Career Development

Resource Constraints

Managing deadlines and dates to keep patents current

Manage and measure outside counsel quality and delivery

In-house and outside counsel balance

Corporation valuing IP effort

Redundant docketing systems (out of synch)

Managing multiple outside firms

To avoid patent duplication

Tracking competitive activities and patent infringement

Getting engineers to cooperate with patenting processes

Assessing our available intellectual property

Quantifying the value of our intellectual property

Outside Counsel

Roles

Prosecution

Litigation

Portfolio Management

Patent Strategy

Challenges

Communications

Getting more work

Being more secure with the relationship

Understanding business context

Visibility to all disclosures (multiple firms)

Redundant docketing systems (out of synch)

Scorecards, how are they being measured

CLICK HERE TO TELL US IF YOU AGREE OR DISAGREE

CLICK HERE TO TELL US  YOUR SUGGESTED TOPICS

PetrashWilliamson

Aligning Intellectual Property with Business Strategy & Metrics

www.IPAMBestPractices.com

630-416-7459

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