United States: The Case For A Comprehensive 360° IP Strategy: Opening Arguments

Last Updated: July 11 2016
Article by David R. Schaffer and Eric G. King

This article is the first entry in a multi-part series on the critical need for businesses to extract total value from their IP assets through the employment of a comprehensive, consistent and efficient IP strategy.

Intellectual property can be among the most valuable commodities a business owns, yet it is often an area that is regularly underserved. Frequently, otherwise successful companies of every shape and size—through scattershot IP efforts or an improper (or nonexistent) strategy for patents, trademarks, trade secrets and copyrights—leave opportunities on the table, not getting the most out of what is already theirs. A bird in hand is worth two in the bush, but what if you already had two in your hand but didn't know it?

In this initial blog, we will begin to make the case for, and outline, a six-step process to tailor, implement, run and maintain a scalable, proactive and integrated IP protection strategy for companies of any size—but especially useful for small- to medium-sized entities (SMEs), which generally employ 10 to 500 or more people and produce revenues of $10 million to $1 billion.

What is it? In a nutshell, Miles & Stockbridge has developed an integrated process of organizing, protecting, managing and controlling your IP assets for optimized cost benefit to your business.

Why do it? The process aims to increase the value of your company, conserve budget, give you a competitive advantage and position you to be a leader in your market area.

How do you do it? The process allows you to control your current, in-process and planned IP and non-IP assets while getting to know more intimately your competitors' current, in-process and planned IP and non-IP assets.

Who does it? Stakeholders from a company's executive suite and legal, marketing, sales, technical and administration departments, as well as outside IP counsel, are involved.

What is involved? For peak performance, stakeholders maintain an up-front and ongoing effort and commitment to implement and maintain the IP strategy and management program.

What are the benefits? Participants will gain control over—and improve—their IP portfolio contents and portfolio value, realize long-term cost-savings (ideally turning their IP from a cost center to a profit center), better handle company assets and gain a broader understanding of the existing patent landscape and what competitors are doing.

How is it implemented? The six steps of the process include:

Step 1: Assessment
Step 2: Analysis
Step 3: Recommendations to Align Portfolio and Products with Priorities
Step 4: Preparation of Plan
Step 5: Implementation of Plan and Progress Tracking
Step 6: Regular Review and Adjustment of Plan

Assessment – We perform a complete audit of the company's priorities, portfolio, products, etc.—and evaluate the results individually, so there is not a one-size-fits-all analysis/planning. Specifically, at a top level, we structure the assessment around each company's business units, as well as their product/service lines within each business unit. An IP Scorecard that includes each product/service line is completed to aid in the analysis and decision-making process steps to follow, in accordance with each company's business plan.

Analysis – We identify gaps and other issues in, for example, available company resources, including money and personnel to implement and run the plan; additionally, we examine how the existing IP protections (i.e., patents, trademarks, copyrights, trade secrets) cover the company's existing products and/or services.

Recommendations – We prepare recommendations to align each portfolio asset and its related products/services with specific company priorities.

Preparation of Plan – We set up the IP strategy program with a multi-disciplined IP Management Team—for example, C-level, sales, marketing and technical representatives. We develop the program to ensure that the plan is a core corporate priority with buy-in from the top down—and involvement and excitement from the bottom up.

Implementation of Plan and Progress Tracking – We implement the portfolio management and prior art/landscaping processes to include regular review and updating of the patent, trademark and copyright portfolio and patent prior art/landscaping databases. This involves the addition of new—as well as updating the status of existing—patent, trademark and copyright applications, as well as adding and annotating additional prior art references to the patent prior art database.

Review and Adjustment – We conduct regular client program reviews (e.g., monthly, quarterly, every six months or every year) and provide feedback to steps 1 - 5, as needed based on:

  1. supporting strategic management decisions based on key metrics;
  2. asset pruning/maintenance decisions;
  3. new product/service areas; and
  4. competitor analysis.

In today's competitive marketplace, it is crucial to leverage all assets to their maximum value. IP is increasingly important to your business—replacing the factory as the key corporate asset. Stayed tuned for subsequent blogs that will dive deeper into our approach. Considering the high stakes involved and the context of the 21st century intellectual property landscape, our IP team understands that—like your business—if we're not advancing, we've already fallen behind

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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