Intellectual Property Management

EARLY

• Outside counsel responsible for majority of patent and trademark filings, annuities payments, trademark renewals, database maintenance, and docket management

• Manual patent annuity and trademark renewal process

• Hard-copy patent and trademark files (bi- and tri-folds); manual tracking and docketing via spreadsheet

• Manual data collection across multiple sources

• Manual IP processes; written confirmations

• Decentralized operations; filings with government offices primarily via postal mail and hard copy.

INTERMEDIATE

• Standard operating procedures (SOPs) for filing, docketing, and maintenance of IP assets; forms and templates to facilitate IP procurement

• Encumbrance information attached to IP; contract performance requirements difficult to report on or track

• Internal resources dedicated to management of patent and trademark prosecution and budget management

• “Build vs. buy” assessments made across various aspects of IP management, taking into account budget, staffing, and portfolio size

• Basic understanding of applicable jurisdictional requirements for inventor remuneration; export control procedures defined (review is manual)

• Integrated patent annuity and trademark renewal decisions/payments either directly through the established IP Asset Management system (IAM) or through an annuities payments management provider and extracts from IAM

• IAM used for file creation, docketing, and maintenance; reliance on paper backup (shadow) files; electronic filing ad hoc and inconsistent; data integrity improved but remains an issue

• IP information available via reporting function, but reporting ad hoc; broad portfolio analysis/insight difficult

• SOPs in place for collecting invention submissions, filing, tracking decisions, docketing, and maintenance of IP assets; communicated to all resources

• Internal subject matter experts identified; roles and responsibilities more clearly defined; training provided on processFormal and effective patent, trademark, and trade secret planning processes; filing decisions made through an innovation team (e.g. IP, Legal, R&D, Clinical, Medical Affairs, Engineering) for review of inventions

• Dedicated IAM for file maintenance and docketing; basic patent and trademark workflows exist (some automated).

ADVANCED

• SOP manuals shared with all relevant parties for every workstream from idea collection to expiration of IP rights; SOPs reviewed/updated at least annually

• Encumbrance information attached to IP; tracked and reportable via database or dashboards

• Alerts on contract performance/requirements automated, scheduled, and pushed out

• Outsourced services for below-the-line work (e.g. database maintenance and docketing)

• Sourcing strategy in place and periodically reviewed, assessing best resources for all aspects of IP management

• Integrated IAM system incorporates rules that ensure proper payment of annuities, renewals, and fees for all jurisdictions

• IP files fully electronic (no backup/shadow paper files); data exchanged electronically among all parties and PTOs to procure patent assets; system connected to world patent entities for regular automated data integrity cross-check

• Patent portfolio rationalization strategy (aligned with company strategy) for annuity payment, portfolio rationalization, IP licensing, and sales-of-asset decisions

• Reporting fully developed, standardized, and automated; portfolio dashboards; high data integrity; automated audit reports identify risks and compliance issues

• IP processes and policies clearly defined, integrated, and effectively enforced; standardized forms and templates facilitate IP procurement

• Filing strategy (tied to corporate strategy) communicated to innovation team (including external counsel and vendors) and used to guide filing of IP globally

• Robust IAM system includes lifecycle management, analytics, and brand management, with full integrations into other key Legal and IP systems; automated workflows integrated for invention disclosures, due diligence, freedom to operate, inventorship remuneration, product clearance requests, IP review for information to be shared outside the company and trademark clearance requests

• Extensive use of artificial intelligence and machine learning across the lifecycle of patents and trademarks to drive efficiency, monitor health of operations, and inform decisions

• Capability to capture inventions in meetings and process filing decisions in real time.

Key Metrics for Intellectual Property Portfolio Measurement
This document’s purpose is to illustrate possible metrics to be considered when measuring an Intellectual Property Portfolio.

IP Metrics for the Maturing Corporate Legal Department
This webinar focuses on key performance indicators for measuring an organizations intellectual property processes and portfolio. 

Sample Invention Disclosure Record
This sample invention disclosure form can be completed by scientists/inventors/creators to explain the item or technology they have developed. This form can be used to help determine whether an invention is sufficiently unique to be patented.
 

Sample Patent Renewal Analysis Report
This sample report provides the user with a mechanism to show how patents in a portfolio are analyzed and rated based on the criteria outlined below. Ultimately this tool will help provide information needed to determine patent renewal.

• Enforceability - Likelihood that the claims can be enforced on potential commercial products and services that may be implementing the underlying technology of the patent.
• Infringement Detectability - Likelihood of detectability of infringement from publicly available information or other means
• Market Relevance - Commercial Scope of the patented invention
• Cost of Evidence - Cost of procuring evidence to determine infringement
• Priority of the invention with respect to the technology existing at the time of filing