The process of securing allowances of patents usually takes
three, four or even five years from the priority filing date,
depending on subject matter and the jurisdictions of patent
prosecution. A great deal can change in a patent applicant's
circumstances over these extended time periods. Patent applications
with great potential value at the time of filing, may lose their
corporate and/or commercial relevance over time. For the purposes
of this article, patent life cycle management will be considered
from the perspectives of institutions, start-up companies, and
Most patent applications filed by institutions and start-up
companies are exploitative, i.e., intended to capture and protect
commercial monopolies for an invention's compositions and/or
use and/ or related methods. Institutional goals in filing patent
applications include attracting licensing interests from commercial
entities, or securing assets that can be spun-out into a company.
Start-up and early-stage companies file patent applications that
can be used as collateral for securing capital investments and/or
research funding; and/or to provide for exit strategies which may
include one or more of joint venture agreements and mergers or
acquisitions by larger, better-funded companies. Large corporations
tend to file patent applications for defensive reasons as well as
exploitative considerations, securing freedom-to-operate and
ensuring commercially valuable IP for cross-licensing in cases
where they might not have freedom-to-operate.
Formal IP audits are usually conducted as a result of a
triggering event. For institutions, a typical triggering event
might be an expression of interest from a company seeking
licensing-in of one or more patent applications. Licensing
candidates typically conduct IP audits to assess the scope and
quality of protection provided by filed patent applications, and to
identify related commercial opportunities. For start-ups and small
companies, IP audits are requisite components of the due diligence
conducted by potential investors or business partners. For a large
corporation, an IP audit trigger may relate to a licensing-in
opportunity or to an IP portfolio acquisition opportunity. A large
corporation would be responsible for conducting or managing an IP
audit of a third party's IP portfolio or an individual patent
family. In cases where a large corporation is the target of a
merger or acquisition, or alternatively, is seeking significant
financing, its IP portfolio will be scrutinized by one or more
third parties. In all of these cases, IP audits can be hectic and
chaotic. They are often complicated by paucities of essential
documents and records, the result of poor practices in
documentation and document storage over the time the IP was
developed and protection sought by patent filings and
A good business management practice for patent applicants,
regardless of whether they are institutions, start-up or small
companies, or large corporations, is to conduct and summarize
internal IP audits on a regular basis, e.g., annually. Internal IP
audits should have at least four categories of
"checklist" questions, including: (i) administrative,
(ii) prosecution status, (iii) assessment of commercial opportunity
and potential value, and (iv) commercialization status. Internal IP
audit summaries should be kept as hard copies in "IP Due
Diligence" binders and also as electronic files in secure
directories. This approach provides management with the means to
track and confirm that key administrative documents such as
invention disclosures, assignments, disclosure agreements, material
transfer agreements and licenses have been properly executed,
recorded, stored and catalogued. Regular internal audits also help
ensure that time-critical events such as patent filing deadlines,
patent office response deadlines and fee payment deadlines are
addressed in a timely manner, and that pending and issued patents
are in good standing in all jurisdictions in which they have been
For both institutions and corporate entities, regularly
scheduled internal IP audits to update: (i) the target market
relevance and conditions with respect to the IP's potential
value, and (ii) progress made toward commercialization; will
facilitate favourable third-party IP due diligence reviews.
Furthermore, information generated by these audits will facilitate
management's decision-making on commercialization strategies,
licensing strategies, and early identification of new opportunities
to develop or acquire, or alternatively, divest selected components
of IP portfolios.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
McCartney & Lennon, Jobs & Wozniak, Watson & Crick. We are all looking for synergistic collaborations. In life sciences, some of those collaborations may be with your employees, independent contractors or corporate research partners.
A recent decision of the Federal Court of Canada has highlighted the difficulties in asserting trademark and copyright rights related to the appearance of functional products with unique design elements.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).