Building an IP strategy (cont'd.)

Patent Program

The educational investment will go for naught if systems are not in place that make it easy for people to contribute. A patent program must include organized methods for individuals to record and submit inventions, as well as means for feeding back competitive intelligence.

A patent program should also include some form of incentive system. Incentives can range from dinner for two and a hearty handclasp to the possibility of a $100,000 bonus, as a few outstanding inventors receive each year from IBM. The intangible knowledge that the entire security of an organization and its employees hang in the balance won't produce the same effect as a tangible T-bone steak.

Patent committees and executive leadership

The key to making a patent program work is to centralize responsibility and authority [9]. This is especially important if an organization has several divisions separated by function or location. The establishment of a patent committee is the best way to make sure that a wide enough view is attained to result in an effective strategy.

Committees typically have representatives from the legal department or outside patent counsel, engineering, marketing and sales. While some organizations rely on outside counsel to manage the effort, it's best if senior managers from within the organization take the lead since they'll be more keenly aware of details such as business strategy, R&D plans, geographic market differences, and competitors [11].

The duties of the committee should include both long-and short-range tasks. The group establishes policies and procedures and the IP strategy, keeping it in step with the business' overall plans. It makes sure the education function is carried out, reviews the organization's patent applications, identifies technology that needs protection and rewards the participants. Perhaps the most important function of the patent committee is to maintain a close, two-way relationship with the executive management of the company. After all, it's the primary responsibility of those individuals to guide, grow and defend the business. A patent strategy should have the authority and leadership of the very top executives in the organization.

Conclusion

References:

[1] The Patent Files; Jan M. Conlin and Ronald J. Schutz;: Chief Executive n135 (June 1998 n135): pp44(4).
[2] Measuring the Patenting Success of Companies Metrics and Measurement for Patent Departments - Part 2; Michael Kaminski; Mondaq Business Briefing (June 1, 2005).
[3] Measuring the Patenting Success of Companies: Metrics and Measurement for Patent Departments - Part 1; Michael Kaminski; Mondaq Business Briefing (June 1, 2005).
[4] In Pursuit of Patents; Michael Montembeau, Esq.; Connecticut Law Tribune 29.51 (Dec 22, 2003).
[5] Top Ten Things to Do About Your Competitors' Intellectual Property; Keith Zullow; Mondaq Business Briefing (Nov 22, 2004).
[6] Protecting the Power of the Idea; Rick Whiting; Electronic Business 18.n4 (Feb 24, 1992): pp24(6).
[7] Patent Strategies Help High-Tech Firms Protect Their Technology; Spencer Warnick; Capital District Business Review 27.35 (Dec 4, 2000): p8B.
[8] A Perfect Ten; Mark Voorhees; Corporate Counsel 10.5 (May 2003).
[9] Tracking Patent Portfolios Is Not Only Critical for Growth, It's Necessary For Survival; Linda Corman; CFO Magazine, July 01, 2006.
[10] Patent Strategy a Must for Biz; David Mancino; Crain's Cleveland Business 23.49 (Dec 9, 2002): p14.
[11] Designing an Effective Patent Program; David Lamarre; Mondaq Business Briefing (May 14, 2003).
[12] Developing an Effective Strategy for Managing Intellectual Assets; John Tao, Joseph Daniele, Edward Hummel, David Goldheim & Gene Slowinski; Research-Technology Management 48.1 (Jan-Feb 2005): p50(9).
[13] What's All This Name Stuff Anyway? RP Terminology Unraveled