Part 1, we looked at three important steps in starting an
intellectual asset management process within your organization.
"Intellectual assets" can include the know-how and
intellectual capital within your organization together with
registered and unregistered intellectual property (IP), inventions,
trade-secrets, patents, copyright-protected works, trademarks,
industrial designs, and other forms of IP.
As we reviewed in Part 1, intellectual asset management starts
with (i) an internal IP audit, coupled with (ii) internal education
about the strategic importance of intellectual property within the
organization; and (iii) the organization should establish a
screening process, to weigh the various factors that influence how
to innovate through "make versus buy" decisions.
In Part 2, we take a deeper dive. An organization can be
innovative without being commercially successful. In other words,
there is often a gap between the creative process of innovating,
and the successful commercialization of those innovations. By
implementing the steps in Part 1, an organization becomes more
sophisticated in its treatment and analysis of intellectual assets,
and an organization will develop a culture in which IP is
understood and valued. That helps close that gap. However, this
does not necessarily mean that intellectual assets will become an
engine of economic value. That requires the development of
additional skills and competencies within the organization.
Consider the following "next steps":
Strategic Alignment: Let's be
clear. IP should not drive the organization. Rather, the strategic
goals of the organization should inform the intellectual asset
management strategy. Ensure that IP policies are aligned with the
strategic goals of the organization. Consider the organization in
question: is this a university? A government research lab? A
medium-sized for-profit business, or maybe it's a growing
business with markets in multiple jurisdictions.
How is success measured for this organization?
Are there immediate goals of raising capital?
Entering a new international market?
Making a strategic alliance or partnership?
Should the IP policy reflect a defensive or offensive
All of these organizations will have different strategic goals
and must ensure that their intellectual asset management strategy
reflects and supports the overarching goals of the organization. IP
is only one piece of the puzzle.
Gap Analysis: An IP audit is focussed
primarily on taking an inventory of the organization's
intellectual assets. A 'gap analysis' is the next step:
it's an assessment of what's missing from the
organization's IP toolbox. What does the organization need in
order to achieve its goals? And how can the gaps in the
organization's IP inventory be filled, considering the
strategic goals involved. This internal analysis can lead to an
external, "outward looking" review. What is available in
the marketplace, either through acquisition, in-licensing or
strategic partnership? See also the "make versus buy
decisions" discussed in Part 1. In connection with the
analysis of "gaps" in the IP portfolio, look at any gaps
in the paper: How do employment agreements and consultant
agreements deal with IP ownership issues and confidentiality? Do
vendor or supplier agreements need to be bolstered to address IP
issues? Perhaps standard-form end-user licenses or service
agreements need to be reviewed to ensure that the treatment of IP
is in alignment with the organization's overall intellectual
asset management policies.
IP Exploitation: As mentioned above,
an organization may be adept at innovating, and it may have a
sophisticated process of cataloguing internal IP, and even
assessing the gaps in that portfolio. IP commercialization and
exploitation is the process by which an organization extracts value
from its intellectual assets. This can be from product sales, or
from out-licensing of IP-protected services and processes, as well
as licensing relationships and franchise agreements, joint ventures
and cross-licensing. An organization must understand the steps to
market, whether through its own sales channels, or through
distributorships or resellers. And the process of bringing
innovations to market will be supported by a well-designed
intellectual asset management system.
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.
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