When I started working in-house directly out of law school, I helped establish the patent department of a small research laboratory in a very big company. My boss and I were responsible for the patents (and occasional trademarks) that came out of a 50+ person advanced research laboratory in Massachusetts, a much smaller lab in New Jersey, and a start-up. Everything was compact and our role within the organization was well-defined. Primarily, we drafted and prosecuted patent applications for these 3 groups. Life was simple with one role (patent prosecution) and one type of client (researchers and engineers).
Then, I moved on to the patent department of another large company. A department of 6 attorneys responsible for all of the intellectual property matters of hundreds of companies located in 65+ countries around the world. Those matters included patent and trademark prosecution, litigation, mergers & acquisitions, licensing, and all manner of contracts and agreements. Suddenly, my work life was not so simple and well-defined. The number and type of clients grew exponentially. To make matters worse, I did not have the advantage of daily interaction with any of them. I sat in a remote outpost relying on email and the telephone to keep me connected.
I quickly discovered that there are actually many aspects to managing an organization’s intellectual property. Intellectual property often overlaps several people and departments. Organizations might have in-house legal departments that handle patent and trademark prosecution. Human Resources is responsible for non-compete and non-solicitation agreements and other general IP policy issues involved with new hires or departing employees. Engineering and Research & Development ‘invent’ the next generation of products. Marketing comes up with the latest brand name.
If an organization’s intellectual property matters do not reside in one place within an organization, how does an organization manage it all across departments, continents, and business units? The simple answer is that an organization needs an effective and efficient intellectual property management system in place to recognize IP issues when (or preferably before) they arise, capture its IP no matter where it resides, and leverage the IP as needed to fulfill the business strategy. This is no easy feat in a large organization.
So, what do you need to consider when setting up good intellectual property management processes and systems in your organization?
Well, I believe there are 12 components in a complete IP management program. Those components are divided among 3 different categories.
1. The Fundamentals
- Intellectual Property Administration, Organization & Budget
- Intellectual Property Reports & Communications
- Intellectual Property Audit
- Intellectual Property Education
2. In-House IP Practice
- Intellectual Property Capture
- Worldwide IP Issues & Foreign Filing Practice
- Invention/Patent Valuation
- Intellectual Property Metrics
3. Third-Party IP Issues
- Intellectual Property Risk Management
- Intellectual Property Agreements
- Intellectual Property Licensing
- Intellectual Property Disputes
There is a definite order to these 12 components. Each one builds off a previous one to some extent. For instance, if you don’t have a decision-making process then you will have a problem capturing your IP. Also, it would be fairly difficult to implement an effective licensing program if you have not completed an audit of your intellectual property assets. Unfortunately, a third-party can sue you for patent infringement whether or not you are prepared.
Over the coming months, we will delve into these 12 components in some detail and talk about what each one is and what they might mean to your organization. While I developed this system with larger entities in mind, this information is just as useful to start-ups. Along the way, I will point out areas of particular interest to start-ups as I believe it will allow you to effectively address your IP matters at every stage.