IP Managers – Don’t Expose Your Company to IP Management Risk

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Intellectual Property Management can be exciting and rewarding  but can also be very unforgiving if you don’t do it right. There are some mistakes that can be extremely costly, but are, unfortunately, easy for an IP Manager to make. These mistakes can cause your company to lose its IP rights and can result in competitors getting those rights.

Eleven IP management slip-ups that can increase IP risks and threats to your company:

  1. Failure to capture an invention.  With the “America Invents Act”, the US converted to “first to file” from “first to invent”. The first one to file a new invention gets the patent right – not the first to invent, unlike the olden days. If one of your inventors has a patentable idea, and you don’t find out about it – you risk having a competitor file ahead of you. Your company can be excluded from using the invention, thus losing competitive advantage..
  2. Failure to make a timely filing decision.  Once you have the invention disclosure, you need to quickly make a filing decision. If you dawdle, you again risk being trumped by a competitor.
  3. Failure to meet statutory deadlines.  Once you begin the patent filing process, you must meet strict statutory deadlines to file abroad and to respond to communications from the patent offices. These include conversion to non-provisional status, application filing deadlines, and national filing deadlines. Miss these dates and your patent rights go poof!
  4. Failure to Stay in the Loop.  Are there IP related conversations and actions happening in your company that you are not aware of? While you may be diligently tracking your activities, your inventors, attorneys or outside counsel may be taking actions (or not taking actions) that you need to know about. Things can easily fall through the cracks if you are not tracking them or in the loop. This can result in expensive mistakes and potential loss of patent rights.
  5. Failure to accurately project costs.  There are costs associated with building an IP portfolio. These include outside counsel fees, filing fees and maintenance fees. Your IP program can be adversely affected if you cannot accurately project what these fees will be and budget accordingly.
  6. Failure to respond to PTO actions on time.  During prosecution, your patent applications will receive communications from patent offices. Either you or your outside counsel must respond to these in a timely manner. Failure to take timely actions, can lead to expensive penalties and/or loss of rights.
  7. Failure to properly disclose material information. In many countries, including the US, you are required to file Information Disclosure Statements that include all relevant prior art. These statements need to be consistent across all of your related patent applications. Failure to make proper disclosures can result in the loss of your patent rights.
  8. Failure to maintain your patent. In most countries, you must pay regular maintenance fees for issued patents or annuities for pending applications. If you miss making a payment, are delinquent, or if a payment is not properly processed, you can lose your patent rights or may have to pay significant penalties to restore your rights.
  9. Failure to enforce license obligations.  If you have licensed patents to others, you need to monitor the agreement and track the royalty payments. Failure to do so can result in significant loss of royalty revenue, and unlicensed use of your IP.
  10. Failure to align patent portfolio to business needs.  Over time, your patent portfolio will grow.  At the same time, your company’s business strategy may change. You need to monitor your portfolio to make sure it is aligned with your business needs. Maintaining a portfolio of low-value patents that doesn’t support your business strategy is a bad investment.
  11. Failure to accurately disclose your IP portfolio. For companies with SEC reporting obligations, it is mandatory to accurately disclose your patent assets. If you don’t have an accurate picture of your actual portfolio, you will encounter costly and embarrassing legal problems.

As the IP Manager, you are always confronted with these challenges. You ought to be keeping eternal vigil to manage your company’s IP portfolio successfully.  This is definitely a daunting or impossible task.  But, there is technology available that can help.

How can an IAM System help?

An Intellectual Asset Management (IAM) system tracks all of your intellectual assets through their entire lifecycle.

Here are all the things an IAM system can do:

  • Capture invention disclosures and monitor progress through filing, prosecution and maintenance.   
  • Enable creation of workflows that route tasks to the appropriate person and ensure that deadlines are met.
  • Store all assets in one place. This enables you to access and track all the data that you need to make informed decisions based on correct, current and complete data.
  • Provide visibility into the entire IP portfolio. Make accurate reports for forecasting and strategy reviews.

How can an IAM system mitigate the risks mentioned above?  Here is my view:

Risk

IAM Risk Mitigation

Failure to capture an invention A robust and easy to use invention disclosure capture system will encourage inventors to disclose their inventions in a timely manner.
Failure to make a timely filing decision An IAM system will initiate workflow events and deadlines. Invention disclosure reviews and filing decisions will be scheduled and completion will be tracked.
Failure to meet statutory deadlines An IAM system,  which can connect to patent office application tracking databases, will automatically create tasks and reminders. Responsible parties will be notified of upcoming deadlines and responses will be tracked.
Failure to Stay in the Loop By maintaining a single calendar of events, the IP Manager can monitor all activities and their status.
Failure to Accurately Project Costs By tracking all applications, foreign filings and maintenance fees in one place, the IAM system can accurately project costs..
Failure to respond to patent office actions By maintaining a single calendar of events, the IP Manager can monitor all upcoming patent office actions, their status and who is responsible for the response.
Failure to properly disclose material information The IAM can provide a robust Invention Disclosure database.  This will ensure proper and consistent disclosures.
Failure to maintain your patent By having a complete and accurate portfolio database that is connected to a fee payment system, the IP Manager will be notified of upcoming payments and can forecast future payment costs.
Failure to enforce license obligations Tracking compliance is made easier by recording license terms in one central database.
Failure to align patent portfolio to business needs Having a portfolio level view of the assets and the pipeline of pending applications enables the IP Manager to accurately report on the current portfolio, and to support strategy reviews.
Failure to account for your IP portfolio Having a complete portfolio view, including the relationship between IP and products, enables the IP Manager to support accounting reviews and meet reporting requirements, e.g., with the SEC.

As the IP Manager, you have a significant responsibility to avoid the IP risks discussed above. An Intellectual Asset Management (IAM) system can help you mitigate your risks. To get better insights on mitigating IP management risk using an IAM system, please watch the SymphonyIAM overview video: SymphonyIAM by MaxVal

Please contact us if you would like more information on SymphonyIAM, or to find out about MaxVal’s service offerings. MaxVal is dedicated to making IP professionals, including IP Managers, successful. We can help you manage IP risk.

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