1 January 2010PatentsChristian Fortmann and Sebastian Tegethoff

IP portfolio management with a twist

Christian Fortmann and Sebastian Tegethoff take a fresh look at how to achieve a modern approach to IP portfolio management.

The financial crisis has shown that businesses must ensure, more than ever, that their intellectual property portfolios are well maintained and that the rights in those portfolios are properly attributed to the core businesses and platforms or individuals in question.

Integrated IP portfolios

Anyone with experience in IP portfolio management knows that it is difficult to separate real inventions and useful ideas from those that won’t help the company in any way, whether economically, technically or with respect to marketing.

In particular, considering that the major IP jurisdictions seem to be raising the bar regarding inventive step, a ‘patent everything’ strategy must be considered outdated, as it inevitably means that a large part of the money invested in such a portfolio will be lost, either because many patents won’t be granted anyway, as patents covering minor steps can easily be circumvented, or because patents directed at trivial solutions will be nullified as they become critical.

A well-maintained IP portfolio should give a clear definition of the relevant brands, products, and designs held by the business. It must be asked why companies create IP portfolios at all if they don’t know what’s in the portfolio and, even more crucially, why a particular right is in the portfolio. These days an ‘integrated IP portfolio’ should be capable of forming the basis for commercial decisions, meaning that bundles of IP rights are strictly related to economic or technical fields of interest.

Efficient IP management

Considering the financial constraints that every company faces these days, efficiency in IP portfolio management is a key requirement. Efficiency, however, does not mean simply buying IP services for as little money as possible, but instead, having a clear idea of what kinds of rights need to be in the portfolio to achieve the aims that were formulated when the decision was taken to create the IP portfolio. This in turn requires that such an IP portfolio strategy was formulated in the first place.

"As the parameters for each and every commercial decision that has to be taken are different, the main prerequisite should be to have the necessary commercial skills in connection with IP information available in-house."

In order to have a clear idea about what needs to go into an IP portfolio, and what needs to be removed, a governing entity with oversight of all IP rights needs to be in place. Today, efficient IP protection means having the right mix of specific IP rights for the product in each relevant country. This, however, requires cross-sectional skills in the respective technological and legal areas, as well as a direct interface to the boardroom.

The question is, which of these skills should be available in-house and how much of the work should be handled by outside counsel. Commissioning external IP counsel is expensive. Nevertheless, maintaining an in-house IP department covering a wide range of expertise is extremely expensive as well, in particular because the required mix of expertise usually differs for each commercial decision that has to be taken.

Whether it makes sense to have all the technical and legal IP knowledge in-house depends upon the size of the company, but also the size of the IP rights portfolio and the number of portfolio platforms on which the patents, trademarks, designs and copyrights are bundled.

Thinking outside the box should help in establishing modern, state-of-the-art IP portfolio management. To simply follow the lead of other companies is not going to produce satisfactory results. Every company is different and requires a different set-up to reflect changes in time, pace and environment.

As the parameters for each and every commercial decision that has to be taken are different, and given the varying nature of intellectual property rights and the great variety of situations in which IP rights may become a critical factor in a commercial decision, the main prerequisite should be to have the necessary commercial skills in connection with IP information available in-house.

The necessary cross-sectional technical and legal skills can, however, be found in the growing number of larger IP boutiques operating in most of the major IP jurisdictions, which provide services ranging from strategic IP portfolio management covering the preparation and prosecution of all kinds of IP applications, to transactional work as well as infringement support.

Even though it might appear expensive to rely fully on outside counsel for managing an IP portfolio, it should be remembered that an IP boutique of the appropriate size can provide very broad technical competence and access to a great variety of technical and legal expertise, sometimes even in different countries, which will be used only as the specific case requires, minimising the time and cost needed to produce the required information.

IP boutiques are also able and willing to work within the strict budgets dictated by the current climate, in order to meet the needs of an industry that is in constant movement.

What makes the IP boutique the perfect choice for the job is that it can provide the necessary range of skills with a clear focus on IP and maintain a direct line of contact with the client company’s IP management. It is time to reinvent the IP management set-up.

Christian Fortmann is a German patent and trademark attorney and founding partner of 24IP Law Group. He can be contacted at: fortmann@24ip.com

Sebastian Tegethoff is a German patent and trademark attorney at 24IP Law Group. He can be contacted at: tegethoff@24ip.com

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