Effective Portfolio Management Defined

in Intellectual Property Strategy

Portfolio Management consists of four primary activities:

1. Create collaborative environments that allow portfolio-related knowledge to be shared among the various organizational units and key stakeholders involved in intellectual asset management. Effective Portfolio Management provides an environment where users can form unique, pertinent views and relationships of the organization’s portfolios in order to support their roles in the Intellectual Asset Management (IAM) process. Users can gain critical insight into how the intellectual assets are contributing value and how they gain their competitive advantage.

2. Continuously evaluate and analyze your portfolio. With the ability to categorize, organize, and analyze the portfolio, Portfolio Management lets users monitor the value of their portfolio and collaborate with others throughout the organization who share the same assets. For example, the Portfolio Management tools help users identify and distinguish critical assets with business value from those assets of little or no value. It also helps monitor responsibilities, patent groups across the business and patent rights.

3. Group and organize assets to enable users to associate important asset management related information. In the Portfolio Management environment, users can share portfolio related knowledge among the various teams needing this information.

4. Mine business intelligence that is key to the organization’s success by combining robust searching with reporting and analysis capabilities that enable users to detect opportunities that have financial and strategic importance. This helps clearly identify the company’s trends, strengths, and weaknesses.

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Increasing R&D ROI with Intellectual Property Training

in IP Training

Results from Intellectual Property (IP) Training Study

When survey participant were asked to best describe their IP training program, 74% of the companies responded that their program was ad-hoc in nature and split between active (frequent training) and in active (infrequent training), with the balance (26%) of companies having a formal and standardized program. Although only a small subset of companies indicated they have a formal program, there was strong evidence that those companies with formal programs have a strong correlation to better internal support and better understanding of IP concepts across multiple stakeholder roles. How strong? Those companies with a formal program show a 3x better return on R&D expenses as measured by patent applications per $1million of R&D spending.

For information on IP Training, please contact ipPerformance.

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Intellectual Property Training Program Effectiveness

in IP Training

Are there best practices for reaching and informing employees and business managers of key aspects of Intellectual Property (IP)? Many companies report that IP Training is a vital component of the IP asset management program.

Key findings:
• Companies report that a key objective of their IP training program is to drive an innovative culture.
• Companies with an active IP training program drive greater results as measured by invention disclosures per R&D dollars spent, and patent applications per R&D dollars spent.
• Positive correlations exist between companies that have IP training programs in place, and their employee knowledge of basic and advanced IP concepts.
• A growing number of companies is using web and computer-based delivery methods to provide greater access to IP training information.

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Developing Business aligned Intellectual Property Strategies

in Intellectual Property Strategy

Do you have IP strategies that guide your actions? Are they aligned with the business strategy?
Our experience and research indicate that many companies that believe they have an IP strategy actually have policy statements that don’t effectively guide IP asset management programs actions and decisions. Alternatively, companies will interpret their patent area filing actions as an IP strategy. , which is more or less just a mindset about patent enforcement. On the other hand, there are others who relate IP strategy to their area filing approach. It certainly is a term that is overused and misunderstood by many. We believe it is imperative to develop coherent IP strategies that are clearly aligned with the business strategy, and that provides a roadmap for the ensuing IP tactics and actions. Furthermore, the IP strategy should be subordinate to the business strategy and reflect the current internal and external situation. IP strategies need to be measurable. Accordingly, we propose that you think of your IP strategies from these four perspectives: blocking, revenue, market appeal and access.

Contact us to learn more about a workshop we will host later this year, where we will provide the process and templates for developing world-class strategic IP asset management program with clear IP strategies that may be incorporated into your annual business strategy planning activity. Company-only workshops can be scheduled.
>> Send me information about the strategy workshop

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America Invents Act Impact on Patent Operations

in Patent Operations

The America Invents Act (AIA) reflects a significant overhaul to the U.S. patent system, which most companies indicate will have substantial impact on their patent operations. The AIA will require IP leaders to make policy and procedures changes. Additionally, there are some significant fees increases, which require that companies increase their patent operations budget to fund additional staffing and external legal resources. Although many companies may reduce patent application filings to mitigate fee increases.

The topics that we investigated fell into eight core areas, which include: First inventor to file; Section 102 Disclosure; Costs – Increase in USPTO fees; Pre/Post-Grant Proceedings; Patent monitoring and searching activities; Virtual Marking; and Prior User Rights.

Overall, companies indicated that the major changes necessitated by “First Inventor to File” are process focused: 1) Approve and file applications quickly 2) Increase speed of disclosure from inventors and eliminate gaps between conception and invention disclosure. Responses indicate that IP leader interpretation of Section 102 disclosure provisions are mixed, although the most companies indicated that they to do not plan on a policy change at this time. The USPTO fee increase is causing the majority of companies to increase the patent budget, although 24% of companies intend on reducing filings. The majority of companies recognize that the new pre and post grant proceedings provisions will increase costs and workload.

IP leaders will need to request contingency monies to reflect USPTO fee increases, additional staff and/or law firm cost increases. Many changes of the Act will not take place until March 2013 and there will be some uncertainty with implications of some of the new provisions. Many companies will be compelled to refine their invention submission process and to streamline and improve responsiveness while reducing unwarranted patent filings. This will enable companies to reduce costs while improving the power of their patent portfolio.

Rob Williamson

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Welcome to ipDialogue

in Welcome

Welcome to ipDialogue.  Where Business Leaders talk IP Asset Management Best Practices.   We look forward to interacting with you.

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Selecting the Right Intellectual Property Asset Management Software

in Intellectual Property Software

Recent research on Intellectual Property (IP) asset management software products indicates that a majority of companies are dissatisfied with their software. Many research participants cite insufficient support for evolving process improvements, interfacing to third party software and reporting needs.

We now see a growing pressure for companies to upgrade or implement better IP asset management software and thus, these companies are embarking on the software selection and evaluation process.

For many IP leaders this can be a daunting process; one that includes developing a business case, establishing product capabilities requirements (i.e. company needs) and evaluating vendor software and capabilities to implement and support the company. The financial investment, preparation and resources can be significant for companies of all sizes.  The Software Evaluation and Selection process consist of multiple phases.

Some things we would suggest you do in Phase One are:

1) Understand how you currently operate and how you would like to operate.  Document the improvement opportunities. If possible, map out your processes so you can visualize the people, interactions and sequencing of activities. A visual map can help you see efficiency and effectiveness opportunities.

2) Understand the value propositions for each key stakeholder and meet with them one-on-one to get their requirements (needs).

3) Develop a business case that helps you articulate the business value of the improvements.

4) Develop your IP asset management solution requirements, this should include functional and performance requirements, reporting/analysis needs (decisions), technology and support.

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