Managing intellectual property portfolios
January 2018 | SPECIAL REPORT: INTELLECTUAL PROPERTY
Financier Worldwide Magazine
January 2018 Issue
The success of a company’s business strategy and the management of its intellectual property rights (IPR) portfolio (trade marks, patents, copyright, design rights, know-how, etc.) are closely interlinked.
On the one hand, the potential of a company’s IPR portfolio cannot be maximised, nor such IPR adequately protected, when there is misalignment with the company’s business strategy. On the other hand, companies get the most competitive advantage and profitability from the exploitation of valuable IPR. Therefore, a strategy for optimising a company’s IPR portfolio should go hand in hand with any strategy to increase the company’s profitability through its product and technology portfolio, from the early conceptual stage of innovations, to research and development (R&D), to commercialisation.
Accompanying innovation from early design can help establish which new products or technologies merit the most protection against external interferences, as well as which IPR are the most valuable to protect these products or technologies, and the commercial strategy that will follow market launch.
Among the strategies that a company can implement to seek a balance between its business strategy and management of its IPR portfolio, one should not be missed: incorporating into the company’s decision-making process in-house IPR counsel.
More specifically, in-house IPR counsel should be present during management meetings about new commercial priorities. IPR counsel in these meetings, alongside relevant members of the team (such as patent engineers) where appropriate, can offer advice on identifying priorities to protect the legal rights of the company and its IPR portfolio, on legal tactics that should be followed to leverage high quality IPR attached to a profitable portfolio, and on addressing the challenges that digitalisation poses to IPR.
In-house IPR counsel should ensure that incoming products and technologies or modifications made to existing products and technologies are protected with enforceable IPR (e.g., filing and obtaining patents, amending an original patent, etc.), that the most adequate IPR strategy is selected (e.g., acquiring a licence from a third-party rather than seeking a pure filing strategy, etc.) and, in general, that the IPR portfolio is reorganised and updated whenever necessary (e.g., abandoning part of the IPR portfolio thus reducing expenses, etc.).
They should also be involved when negotiating IPR related contracts (e.g., R&D or licensing agreements, etc.) and possible financial gains (e.g., tax deductions, etc.) to seek the most financial value from the IPR portfolio and selected strategies.
Furthermore, in-house IPR counsel should set up specific IPR programmes to educate other members of the company (e.g., R&D, marketing, finance, distributions and sales, communication, etc.) on the importance of IPR and how to best use and protect these assets to promote the company’s products and technologies. In addition, in-house IPR counsel (or another relevant department, such as finance) should conduct (announced or unannounced) IPR related audits on a regular basis, internally or ideally with the assistance of external experts.
An audit report is essential to ensure that the IPR portfolio is being handled to its full potential while complying with relevant laws. As a result, the reorganisation of the portfolio or the implementation of contingency plans may be required (e.g., reallocating R&D budget, reviewing the method for computing royalties in a licensing agreement should the original method undervalue said royalties, or searching for new ways to obtain revenues when relevant IPR have expired and negatively affect revenues, or when other IPR are not being fully exploited, etc.).
Ensuring that the IPR department is kept abreast of the company’s commercial priorities and that it interacts with other corporate teams should be a reflex action within the company to guarantee success. Likewise, in-house IPR counsel should get instrumental support from software database solutions in order to manage the IPR portfolio wisely. This support may prove essential in today’s digital context where the increased expansion of technologies or platforms intensifies challenges for the management of a company’s IPR portfolio. These solutions include databases that gather information and use customised processes to monitor the company’s IPR, in particular, their commercial status (e.g., licences granted and obtained, etc.), financial status (e.g., royalties received and paid, etc.) and compliance status (e.g., non-contentious or litigious counterfeiting procedures, etc.).
Finally, it is advisable to set up a specific team or committee focused on innovation and compliance. This team should specifically assess the feasibility of new products and technologies by analysing the commercial and financial impact and possible risks. The team or committee should ideally be composed of representatives of R&D, finance, marketing, distribution and sales, as well as a representative of the IPR legal team. IPR counsel should be involved at all discussion stages of the product design, from early conception to R&D and commercialisation, in order to protect possible innovations with valuable IPR and guarantee commercial success.
For the sake of efficiency, the marketing team should also undertake competitive intelligence analysis, involving a comparative benchmark and a survey of the current and potential competitor landscape. The so-called SWOT analysis (including strengths, weaknesses, opportunities and threats relevant to the company) is one such exercise that helps balance the value of the company’s present and potential product and technology portfolio with that of competitors, refines the analysis of commercial prospects, and helps identify IPR that are crucial to protect such portfolio.
In a nutshell, IPR are not just a legal instrument to protect a company’s business strategy. They are tantamount to commercial value that helps to capitalise on the strategy. Consequently, any business strategy should be aligned with the IPR portfolio management strategy. By the same token, a company’s business strategy that is not aligned with its IPR strategy would increase risks to the company’s IPR portfolio, thus hindering commercial success. This may be due to difficulties enforcing IPR, or increased risks of facing infringement actions, among others. Incorporating IPR counsel into the company’s decision making process will ensure balance and favour commercial success.
Laëtitia Bénard is a partner at Allen & Overy LLP. She can be contacted on +33 1 40 06 50 33 or by email: firstname.lastname@example.org.
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