United States: The Case For A Comprehensive 360° IP Strategy: Step 1 - Assessment

Last Updated: July 15 2016
Article by David R. Schaffer and Eric G. King

This article is the second entry in a multi-part series on the critical need for businesses to extract total value from their IP assets by developing and applying a comprehensive, consistent and efficient IP strategy.

An essential first step to performing an IP audit is to first obtain a panoramic snapshot of a company's products, services and positioning. This snapshot captures a wide range of critical data: short- and long-term goals, plans and priorities, business organization and product lines, competitor analysis, and available resources for the strategy. The process involves independent research using publically available information, as well as interviews with management and other personnel.

After obtaining a comprehensive company picture, further assessment can then be tailored to the specific needs and unique aspects of each company—questions/areas of review can be added and/or subtracted based on, for example, whether a company provides a service or manufactures a product.

The assessment process is generally performed from the top down (i.e., from business unit to product/service line), but remains flexible enough to move forward and backward, as needed, and as new and/or unexpected information becomes available.

Once captured, the results for the entire portfolio are organized into an "IP Scorecard"; obviously, the information contained in this scorecard contains extremely valuable and highly confidential and proprietary company information—so it must be treated with correspondingly extreme care.

A Representative Example

Let's look at a highly simplified and hypothetical example for a manufacturer—Company A. After conducting interviews with Company A's management personnel, it is determined that the company produces and sells three different product lines of machinery/equipment, of which two have a maintenance/service/repair component. All final products are made or assembled in the United States, but Company A does not manufacture all of the parts—in fact, there are some piece parts that are produced outside of and then imported into the country. The company has been in business for 35 years; it has a small IP portfolio of seven patents, two pending patent applications, eight registered trademarks (all on the Principal Register), no pending trademark applications, 15 copyright registrations, two pending copyright applications, two active domain names used for its website, six unused unflattering domain names, no trade secret program and no license agreements* related to any of their products. Company A also has a small R&D department that is developing new, and improving on existing, equipment—either theirs or their competitors'.

The next step is the tailored deeper dive noted above. For example, Company A's Product Line 1 has three different models completely made in the United States, with no foreign-origin components. Product Line 1 is the main product line, representing Company A's core technology, and three of the seven total patents relate to the products and their functions and/or features in Product Line 1. Four of the eight registered trademarks relate to Product Line 1 with one word mark for the overall product line and three word and design marks—one for each model in the product line. Finally, six of the 15 total copyright registrations relate to sales brochures and owner's manuals—one of each for each of the three models in Product Line 1.

Included below is a sample list of follow-up questions; note that only a very limited list is provided here due to space constraints. Of course, the actual lists for each IP right are much longer and go into much greater detail than can be fully developed here.

Existing Patents: Are all three of the patents still live (i.e., none have expired or been abandoned due to non-payment of the required maintenance fees)? Is ownership of the patents properly assigned to Company A? When is the next maintenance fee due? If any are expired, can they be revived; and, if so, what are the deadlines and at what cost? Do the patent claims cover all of the broad product line functionality and features? If not, what is not covered?

Are the trademarks still live? Is ownership of the trademarks properly assigned to Company A? When is the next Declaration of Use and Petition for Incontestability or Application for Renewal due for each registration? Do the listed goods and/or services in the trademarks match the actual products and/or services?

Are the copyrights still live? Is ownership of the copyrights properly assigned to Company A? Do they cover the current versions of the materials? If not, is there enough new material to support a new application for registration and what is it?

Are all of the domain names still active/live? When is each due to be renewed? Is Company A listed as the owner? If not, who is, and what is the relationship with Company A?

New Patents: Are there improvements to the product line and/or individual models that are planned? If yes, what are the improvements/features and are they patentable? Are there plans for a new model in this product line? If yes, what improvements/features does it involve and is it patentable? Will a new trademark be needed for the improved and/or new model? If improvements and/or a new model are in development, will new brochures and/or owner's manuals be produced? Will a new website/webpage be set up/created or will redirection of a new domain name be needed?

These questions are repeated for the second and third product lines, as well as each product and/or service in each product line.

The final step is to match and correlate the IP assets identified using the answers to the above questions for each product line. The results are organized in the IP Scorecard to provide a quick, visual summary to facilitate management review and empower companies to take the reins of their respective IP portfolios.

In the abbreviated IP Scorecard example shown below—for the "Model 100" product in Product Line 1—the status of each of the IP protections is summarized. Simple visual cues are employed to indicate issues related to that particular item. For example, yellow highlighting can be used to indicate issues that could be a problem, but that can be corrected, while bold and red text indicates serious issues requiring immediate attention, action and/or acknowledgement. Cells with bold, blue and underscored text indicate hyperlinks to the underlying details for that element—for example, copies of the complete patents or trademarks or their claims or goods and services statements, respectively. This layout allows for the inclusion of all relevant supporting data without complicating or cluttering the summarized information in the scorecard.

Now that the assessment is completed and all of the collected information is summarized and organized in the IP Scorecard, we are ready to begin the analysis step of the 360º IP Strategy. The next blog in this series will address the evaluation and analysis of the assembled portfolio information in preparation of a recommended IP Strategy for Company A.

* This only relates to license agreements for technology needed to manufacture the products and does not relate to any software licenses for office computer and/or network software and hardware systems in Company A. While the non-manufacturing-related licenses are an extremely important area (they are definitely addressed during the review to minimize liability for possessing copies of unlicensed software), they fall beyond the scope of this blog series. However, please see our upcoming blog that will address the danger of having unlicensed software installed on your company computer systems. If not handled properly, having unlicensed software installed and in use at your company can create a significant liability and be a potentially embarrassing public relations matter.

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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