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Q1 2004 Issue 7 TABLE OF CONTENTS
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| IP MANAGEMENT QUESTIONS | ||||||
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Challenge:
How does your Patenting/Disclosure process inform the
inventor that the invention does not meet the threshold for patent
pursuit? Patent/Trade
Secret scorecards are the predominant method used by leading
companies to evaluate and communicate patenting decisions.
These decisions are an outcome of the patent review
committees. There are a
variety of scorecard systems for the patent evaluation process, but
they essential have the same objective. The
scorecard system for evaluating inventions provides a feedback
mechanism to the inventor.
It provides the inventor that very important feedback loop
and a basis for calibrating innovative direction.
The scorecard doesn’t have to be negative; it could use the
scale “good, better, best.”
Good could represent an invention that does not meet the
threshold for a patent application filing.
The scorecard approach institutionalizes the process and
provides a guide to the inventor towards the future. Ultimately it
enables the inventor to better align research and patenting efforts
towards what the business is looking for.
The
value of the scorecard approach is simplifying the feedback process,
providing direction and providing a disciplined approach.
The scorecard strengthens the decision and reduces the circumspection by “The Squeaky Wheel” approach. The value of feedback to the inventors is reinforcement of the technical direction the company is going. It provides the inventor with a information in a timely and accurate way satisfying his interest and minimizing resources from the patent department needed to respond. Contact us to learn more about building an evaluation process and/or tool. Should the engineers be educated about the Patent Practice? What’s the benefit? * Continuous R&D alignment with the business strategy * Reduced resources to respond back to status inquires * Make it easier to respond to the “Why Questions” * Source for metrics to determine if the process is working well or not * Reduced frustration from inventors not being able to satisfy their interest in the process of their disclosure or patent * Better decisions in setting priorities for patent department resources * Better understanding of IP portfolio in order to make better business decisions * Increase opportunities to leverage the IP Portfolio * Better manage prosecution and maintenances costs * Ability to creditably report to management the value contribution of IP CLICK HERE TO GET MORE INFORMATION ON PETRASHWILLIAMSON
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| Newsline: Outsourcing | ||||||
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What is the impact to IP in outsourcing professional work/jobs to other countries? * Who owns new IP developed in other countries? * Will confidentiality agreements be honored in other countries? India? China? * Will ideas generated by customer interaction be feed back to product development effectively with foreign nationals as the face to the customer? Companies that are outsourcing either directly with foreign national employees or with foreign contract companies need to consider IP implications down the road carefully. Be proactive rather than reactive.
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| SURVEY ON STRATEGIC MANAGEMENT OF INTELLECTUAL PROPERTY | ||||||
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Example
Observations: Companies
that write less than 150 Disclosures Yearly: How
do you measure the effectiveness of your IP group? *
68% # of patent applications filed. *
67% Satisfaction of operating company managers, Companies
that write between 150 and 500 Disclosures Yearly: Do
you use a specialized software application to automate or support to
IP management decisions? *
69% said yes What
percentages of companies use specific hard-and-fast quantitative
criteria to guide patenting decisions? *
50% Companies
that write more than 500 Disclosures Yearly: What
percentage of internally generated disclosures is pursued? *
52% What
percentage of internally generated disclosures is filed in emerging
markets? *
25% General
Observation: The
ratio of professional to support staff on average is about 1 to 1 Contact PetrashWilliamson to purchase or request the overview 630-416-7459 | ||||||
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| Discussion Topic: Basis for Competition | ||||||
Basis for CompetitionA firm’s basis for competition may be described as its fundamental strategy for creating a defensible IP position in the long run and outperforming competitors. There are three general bases for competition that may be used: 1.
Cost Leadership -
by achieving the low cost position in a market, XYZ would have the
ability to control price. Controlling price would allow XYZ to acquire above-average
returns on sales. Cost
leadership is a commonly sought-after strategy in commodity markets. 2. Differentiation -
by making an XYZ product or service different from that offered by
competitors, this strategy seeks to make the product or service
appear unique to customers. 3. Market Segmentation
- focusing on a particular customer group, segment of the
product line, or geographic market; XYZ can serve the narrow target
market more effectively or efficiently than competitors who are
competing more broadly. Knowing the basis for competition is particularly helpful in Patent Mapping because it allows the team to learn whether the legal, technology and business strategies and actions are consistent with the competitive basis. After all, if the marketing plan for a new XYZ technology business were to rely on selling product at a price lower than the competition (a cost leadership competitive basis) then one should expect that the technology tree as well as the technologies patented by XYZ would include a significant number of cost-reducing technologies. Or, if the marketing plan for new specialty chemical products called for the creation of chemicals that met product needs of an XYZ customer, one would expect the technologies and patents to include items that covered features or functionality of XYZ products. | ||||||
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| FUTURE
TOPICS | ||||||
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Patent
Maps and Trees:
Look at your patents visually to evaluate
categories and how technology has developed over time.
Portfolio Inventory: Organizing and Classifying your Portfolio. Benchmarking: Evaluate outside company practices. The practice would result in: productivity gain, financial gain, risk reduction, and other gains.
Foreign
Filing Strategies:
Determining a defined strategy and
framework. How do you evaluate which countries to filing in?
What are the issues in Asia? IPAM Model: Explained in detail the interaction of various disciplines to gain business alignment. >> CLICK HERE TO SUGGEST TO SUGGEST OTHER TOPICS
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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) |
Intellectual
Property Asset Management Benchmark Report: 10 Diverse Leading
Companies
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.
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| TOP 14 CHALLENGES FOR INTELLECTUAL PROPERTY PROFESSIONALS | ||||||
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