Key Strategies for Successful Intellectual Property Asset Management

Jan. 25, 2011 - PRLog -- Innovolve Partners                   Jan  2011
Key Strategies for Successful Intellectual Property Asset Management
By Amol v Ghadge and Uma A. Junnarkar


Introduction
Intellectual property has become a key factor in the global economy. While in the relatively recent past, economic power resided in entities that controlled tangible assets, today economic power often coalesces with entities that control intangible intellectual property assets (“IP Assets”). Furthermore, the value of intellectual property is not limited to a particular sector of the economy. Rather, IP Assets are of central importance in many industries.
In addition to being a significant force in the global economy, intellectual property is also very important to the economic health of individual entities. The current economy, coupled with recent events, has prompted a renewed interest in companies’ balance sheets. In light of this scrutiny, many companies are looking for new ways to bolster their revenues. One such way many companies are looking to enhance revenues is through the acquisition and leveraging of IP Assets. Access to and control of IP Assets can be achieved through internal research and development efforts, the acquisition of a company with attractive intellectual property, licensing arrangements, or through collaborative efforts such as joint ventures and strategic alliances.
Companies of all industries and sizes are rapidly learning that IP Assets can be a tool for generating income and investment in difficult markets. While the significance of IP Assets in the technology sector cannot be denied, the importance of IP Assets is certainly not limited to companies in a single sector of the economy. Even companies engaged in traditional “bricks & mortar” enterprises own and rely upon IP Assets as an integral component of their business. Examples range from the ingredients and manufacturing process for Coke, a closely guarded trade secret, to the many domestic and international trademarks owned by multinational corporations such as Nike.

Effectively managing IP Assets requires the implementation of a comprehensive asset management plan. In the past, many enterprises viewed the protection of IP Assets as a cost of doing business. Today, however, many companies have begun, quite properly, to view IP Assets as commodities that should be protected carefully, managed strategically, and licensed aggressively.

Developing an Asset Management Plan
While enterprises that choose to engage in strategic IP Asset management have much to gain from their initiative, they also face significant challenges. Maximizing the value of powerful portfolios of IP Assets will require (i) managing the processes of creating innovation and inventions; (ii) protecting developed intellectual property; (iii) using IP Assets to produce revenue and profits through the direct and indirect sale of products and services; and (iv) capitalizing on the value of IP Assets through the implementation of licensing programs. Developing and following an asset management plan will help to ensure that the steps involved with successful IP Asset management will be undertaken in a strategic manner consistent with the business goals of the enterprise.
Conduct a Review of IP Assets:
One of the most important steps in developing a plan for IP Asset management will be reviewing existing IP Assets. An initial goal of the IP Asset review will be to identify and locate the enterprise’s key IP Assets. Just as the size and nature of companies vary considerably, the techniques to be undertaken when reviewing IP Assets will differ depending on the nature of the company and the role that intangible assets play in the business of the company. The list of IP Assets may be incredibly varied depending on the nature of the business, but could include patents and/or patentable subject matter, copyrights, trademarks, domain names, trade secrets, mask works, inventions, works of authorship, hardware and devices. Of course, some IP Assets require closer evaluation and analysis than others due to various factors including complexity, competition and foreign registration of IP Assets.
Once IP Assets are identified, it will be important to determine the nature and scope of the company’s rights in the IP assets. The company’s rights could range from outright ownership to a license in the IP Assets, with many gradiations in between, including contingent rights in intellectual property to be developed in the future.
Maximizing the Value of IP Assets:
Maximizing the results of the IP Asset examination will necessitate determining the most constructive approach to take in order to capitalize on the IP Assets. This will require examining specific issues, including the particular type of IP Asset at issue, the type of business claiming ownership of the IP Asset, the organization’s short and long-term business goals and the intended or possible uses of the IP Asset. Some steps that can be taken to maximize the value of IP Assets generally include:
• Establish a Clear Chain of Title. Companies that own IP Assets should confirm that all steps in the chain of ownership are firmly established and documented. The inventor or prior owner, as the case may be, should have executed appropriate transfer documents and all necessary assignments should have been filed in the appropriate public offices.
• Protect IP Assets. In order to maximize the potential value of any IP Asset a company will need to develop a system to reduce the risk of unintentional disclosure of trade secrets and other proprietary information.
• Monitor and Enforce IP Rights. Companies should monitor potential infringements by others and enforce their intellectual property rights through, for example, cease and desist letters or litigation, or face the risk that their IP rights may be weakened or lost.
• Evaluate Ways to Commercialize the IP Assets. Companies should perform a business assessment to determine the most productive way to utilize IP Assets. For example, companies could (i) use their IP Assets to become the exclusive provider in the field, (ii) license their IP Assets to other companies for a licensing fee and/or royalties, or (iii) look for synergies with other companies and contribute their IP Assets to a collaborative effort.

Conclusion and Future Issues
The current economic times have underscored the obvious: intangible assets can play an extremely important role in the health of the economic growth and development of many firms. Accordingly, it is an opportune time for many companies to develop comprehensive asset management plans in order to maximize the value of IP Assets.
The significance of the issues discussed herein has prompted us to prepare a three-part article series on IP Asset management. Having discussed key issues applicable to IP Asset management in this Part 1, in Part 2 of this brief article series, we will focus upon trademarks and brand management strategies. In the final part of this series, we will examine IP rights designed to protect processes. Specifically, in this third part, we will focus upon the management of patent rights and trade secrets.


Amol Ghadge is a Partner in Innovolve Partners Mumbai Office and can be reached at amol.g@innovolve.in. Uma Junnarkar is a Partner in Innovolve Partners Mumbai Office and can be reached at uma.j@innovolve.in
 
©Innovolve Partners, Jan 2010. Reprinted with permission. All rights reserved.

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