This article is written by Priyadarshini Sinha, pursuing Diploma in Intellectual property, Media and Entertainment Law from LawSikho. She is an LL.B graduate from GLC, Mumbai.
Intellectual property is used to describe intangible assets. These assets are increasingly making up a significant proportion of a company’s net worth. It makes commercial sense to protect and manage these assets and hence Intellectual Property Management enters the picture.
What is IP management?
Effectively managing an enterprise’s IP portfolio helps protect that company’s data, decreases risk, and enhances compliance with global legislation. It is not enough to simply obtain formal IP rights. Patents and trademark rights need to be exploited adequately. If an enterprise wishes to obtain maximum value from their IP, it should take effective steps to come up with an IP strategy for their business. An IP strategy should include the following:
- A policy on IP Acquisition
- A policy on IP Exploitation
- A policy on IP Monitoring
- A policy on IP Enforcement
Policy on IP Acquisition
Enterprises must consider the optimal protection package and ascertain that all the rights are acquired as early as possible. In case of patents, enterprises must keep in mind that there is considerable investment involved in creating a comprehensive IP portfolio. As a result, enterprises must carefully examine the costs and benefits of patenting and formulate a strategy on patent acquisition which is sensible given their budget.
Policy on IP Exploitation
IP assets may be exploited in numerous ways. These include:
-Commercialization of IP-protected products and services.
-Entering into licensing or franchising agreements
-Selling IP assets to other entities
-Creating joint ventures
-Using IP to get access to another company’s technology via cross-licensing agreements
-Using IP to get business finance
In each case, enterprises need to consider how to most optimally exploit and identify their IP-related assets.
Policy on IP Monitoring
It is crucial to consult patent and trademark databases in order to uncover new technologies and technical developments, zero in on new licensing partners or suppliers, monitor competitors’ activities, identify infringers and stay away from infringing the rights of competitors.
Policy on IP Enforcement
It is very important to have a policy on IP enforcement to avoid losses incurred by the presence of counterfeited goods and the high costs involved in some IP disputes.
What are the skills required for IP Management?
The following skills are needed for IP Management:
- Strategic portfolio management skills
- Prosecution skills
- Litigation skills
- License-negotiation skills
- IP valuation skills
- Strategic portfolio management skills
Skills in this area involves identifying what the portfolio contains, what it requires and how to grow the portfolio. This includes deciding in the case of a new invention, whether it is better to patent or employ it as a trade secret.
It is rare for organizations to patent all their inventive ideas as it is an expensive process. Therefore, if a candidate for patent comes up, the logical step is to rank it among other inventions to see which should be patented.
Portfolio strategy skills also include the ability to understand when to acquire external patents. It includes having the ability to understand what IP is needed more of and if the IP possessed by an entity is enough.
Prosecution skills
Prosecution refers to the process of obtaining patents and trademarks. It involves drafting applications and arguing for the patent to be allowed. Some of the most complex tasks involve drafting utility patent applications which are patents on how new inventions function. These tend to be pricey and time-consuming. As a result, skilled lawyers who are proficient in such functions are needed. Skills needed for arguing are required.
Litigation skills
IP litigation includes both offensive and defensive litigation which are each complex and demand specific skill sets. Patent litigation is quite complicated and needs skilled lawyers who can argue well.
License-negotiation skills
There are various licensing scenarios: cross-licensing, inbound licensing, out-bound licensing and so on. Skill and experience is needed by the person negotiating the license.
IP valuation skills
Skills in IP valuation are required in various situations. For example, it comes into play when acquiring a company in which IP takes up an important part of the acquisition price, purchasing individual patents and so on.
The following are some other generic skills needed for effective intellectual property management.
Communication skills
An IP lawyer needs both excellent oral and written communication skills. It is required for the lawyer to be proficient with words in a variety of situations. A lawyer needs to be persuasive. He needs to communicate with scientists, engineers, business people and so on.
The ability to work alone
An IP lawyer frequently works alone. He needs to take care of his workload and be motivated and critical of his work. Private research and study is required and long hours are spent on analysing and writing documents.
Technical skills
An IP lawyer needs to be technically proficient, especially patent lawyers. The invention needs to be understood and comprehended well by the lawyer.
Analytical skills
IP lawyers need to go through huge amounts of information and arrive at logical conclusions. Clear thinking and critical thinking is required. Legal, commercial, and scientific knowledge needs to be processed.
An eye for detail
Details are important in this profession. The lawyers need to be critical and accurate at the same time.
Time management
A lawyer may have several pieces of work happening at once. Deadlines are common and urgent matters will also be present. Organizational skills are essential and work must be carried out swiftly. A lawyer needs to prioritise his work efficiently.
Stress management
A lawyer needs to cope well under pressure and give quality work.
Some important steps to consider when developing an IP strategy
-Trademark databases should be checked to stay away from using an existing trademark before launching a fresh product or service.
-Identify patentable subject matter and ensure it is patented early enough to avoid losing out to competitors.
-Ensure that patentable inventions are not shared or published before filing a patent application.
-Early disclosure of invention might compromise the chances of the invention being considered fresh, and therefore, worthy of a patent.
-Ensure that trade secrets are kept within the entity and prepare confidentiality agreements when negotiating information with business associates in order to protect trade secrets.
-For export firms, ensure that IP is protected in all markets.
-IP portfolio can be used as leverage when looking for sources to finance business.
-Patent database should be used to develop business strategies.
-Monitor market to ensure that patent rights are not being infringed.
-In order to develop an IP strategy, a good step is identify the company’s information to develop an IP strategy.
IP is used to describe intangible assets. These assets are increasingly making up a significant proportion of a company’s net worth. It makes commercial sense to protect and manage these assets and hence Intellectual Property Management enters the picture.
As can be seen, effectively managing an enterprise’s IP portfolio helps protect that company’s data, decreases risk, and enhances compliance with global legislation. It is not enough to simply obtain formal IP rights. Patents and trademark rights need to be exploited adequately. If an enterprise wishes to obtain maximum value from their IP, it should take effective steps to come up with an IP strategy for their business. An IP strategy should include a policy on IP Acquisition, a policy on IP exploitation, a policy on IP Monitoring and policy on IP enforcement.
Also, the skills needed include strategic portfolio management skills, prosecution skills, litigation skills, license-negotiation skills and IP valuation skills.
Also, communication skills, the ability to work alone, technical skills, analytical skills, an eye for detail, time management and stress management are needed for this demanding profession.
Proper IP management is needed to prevent copying of assets, counterfeiting, theft of intellectual property, abusive use and so on.
Enterprises must consider the optimal protection package and ascertain that all the rights are acquired as early as possible. In the case of patents, enterprises must keep in mind that there is considerable investment involved in creating a comprehensive IP portfolio. As a result, enterprises must carefully examine the costs and benefits of patenting and formulate a strategy on patent acquisition which is sensible given their budget.
It is crucial to consult patent and trademark databases in order to uncover new technologies and technical developments, zero in on new licensing partners or suppliers, monitor competitors’ activities, identify infringers and stay away from infringing the rights of competitors.
IP is used to describe intangible assets. These assets are increasingly making up a significant proportion of a company’s net worth. It makes commercial sense to protect and manage these assets and hence Intellectual Property Management enters the picture.
Effectively managing an enterprise’s IP portfolio helps protect that company’s data, decreases risk, and enhances compliance with global legislation. It is not enough to simply obtain formal IP rights. Patents and trademark rights need to be exploited adequately. If an enterprise wishes to obtain maximum value from their IP, it should take effective steps to come up with an IP strategy for their business.
Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skill.
