No question that an IP strategy should be aligned with your business strategy. But what are the steps involved in developing an IP strategy and how do you put it all together?
Kate Wilson, Partner, James & Wells Intellectual Property, was asked to write this article as one of a series of Briefing Notes recently published1 by the International IP2 Strategists Association (INTIPSA) on World IP day. Below is an extract of Kate's published INTIPSA article. Kate Wilson was named one of Intellectual Asset Management Magazine's 2011 global Top 250 most influential IP strategists - the first year a New Zealander has been listed . To read Kate's full article you can view or download the PDF document here under INTIPSA Tips.
No question that an IP strategy should be aligned with business strategy.
But, what needs to be better recognised is that IP issues can actually drive most strategic considerations in an organisation. For example, many pharmaceutical & chemical companies (Dow for example) focus their research on compounds for which they have freedom to operate3 and can gain the most patent4 protection.
When you consider that 80% of the value of a business is in its intangible assets, then it makes sense that the framework of an organisation is based around those assets and associated IP issues - rather than trying to dovetail an IP strategy into a less than effective business plan.
However in the real world most businesses have grown organically rather than through ruthless planning, so this article also takes into account the existing DNA of a business when developing an IP strategy through a step wise approach.
Thus, the first step is to analyse the organisation itself, along with the environment in which it operates. One way to do this is to have regard to the following categories. Read more
1 At some point a patent application
is published, meaning its contents are available for anyone to
read. In New Zealand publication occurs when a patent application
is accepted. However, in most countries publication occurs
18 months after the application is filed.
2 Refers to the ownership of an intangible thing - the innovative idea behind a new technology, product, process, design or plant variety, and other intangibles such as trade secrets, goodwill and reputation, and trade marks. Although intangible, the law recognises intellectual property as a form of property which can be sold, licensed, damaged or trespassed upon. Intellectual property encompasses patents, designs, trade marks and copyright.
3 Typically used in respect of a search performed on granted patents or pending patent applications to determine if a product or process infringes any of the claims. If the search determines that there are no relevant granted patents then someone may be said to have freedom to operate (ie to operate a business making and selling the product or using the process). Pending patent applications may affect freedom to operate in the future if granted. Note that the search may be expanded to include registered designs.
4 A proprietary right in an invention which provides the owner with an exclusive right for up to 20 years to make, sell, use or import the invention. In exchange for this monopoly the patent is published so that others can see how the invention works and build on that knowledge. The patented invention may also be used by the public once the patent lapses.
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.
James and Wells is the 2010 New Zealand Law Awards winner of the Intellectual Property Law Award for excellence in client service.