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Intellectual Property Rights Explained 

Intellectual Property Strategy: Optimization Opportunities for Generating Business Value

IP Strategies

Just like their counterparts throughout the legal department, intellectual property(IP) teams and their outside counsel are being asked to align their strategies with larger business outcomes. They face increased budgetary pressure both in terms of spending and in delivering value to the business. Traditionally, IP infrastructure is costly, with the largest expenditures going toward people, process, and technology, but there are easy-to-implement, proven processes for optimizing intellectual property strategies including stretching budgets, creating capacity, and driving value, all while managing risk.

These practical strategies can help teams optimize intellectual property by surfacing cost savings and creating business value from any IP program:

Assess IP operations and investment

  • Dedicate time for a thorough review of IP operations and prosecution workflows.
  • Assess and optimize the mix of people, process, and technology by determining opportunities for automated workflows and where expert review is required.
  • Establish a budget allocation for IP filing and renewals by examining historic spend levels compared to coming opportunities and deadlines.
  • Confirm that IP investment aligns with the company’s product roadmap and growth strategy, including determining standard essential patents (SEP), licensing opportunities, lapsing opportunities, and prosecution strategies.

Examine and adjust IP workflows

  • Examine current workflows to identify bottlenecks and friction points across the prosecution lifecycle. 
  • Determine what activities drain precious IP resources, and consider whether these can be addressed by outsourcing to experts for faster resolution, including application preparation and filing, proofreading and correction requests, docketing support, foreign filing support, and more.  
  • Eliminate redundancies, burdensome tasks, and non-billable activities within the organization to ensure lawyers can focus on the matters for which they were educated and trained.
  • Apply business process review methodologies to the IP practice to mitigate operational risks, ensure data accuracy and consistency, and deliver cost visibility and predictability.

Analyze IP portfolio through the lens of financial strategy

  • Examine the IP portfolio, filings, and renewal strategy against business goals to justify spend. 
  • Understand the value of the portfolio by capturing immediate and high-value revenue opportunities to ensure ongoing profitability and considering divestiture strategies for low-performing and non-strategic patents that no longer align with broader business goals.
  • Identify which portion of the portfolio can be commercialized through licensing opportunities by using patent valuation models. Be sure to mine the portfolio for high-potential patents that may be sitting dormant
  • Implement an intentional lapse strategy to identify cost savings and reallocate IP patent spend, by determining whether patents due for renewal are worth the continued investment, especially as costs increase at later renewal gates.

Monitor competitors 

  • Competitors’ filings, renewals, sales, and purchases can provide valuable insight into their IP strategy. Competitive benchmarking compares portfolios across an industry or vertical, and delivers insights into current and future business plans.
  • Conduct a patent landscape analysis to help identify gaps in an IP portfolio, as well as opportunities and threats which should be addressed.
  • Consider Freedom to Operate and Validity and Invalidity analyses to assess infringement risk and challenge the validity of any competing patents before cutoff dates.

Modernize IP prosecution

  • Consider investments in IP management technology to streamline trademark prosecution workflows. Data analytics tools can automate tasks for faster, data-driven decisions. 
  • Carefully select external support to manage trademark prosecution workloads and ensure IP teams are not overstretched. Many specialty IP service providers offer support in areas that do not require the expertise (nor the cost) of an experienced attorney.
  • Hire internal IP experts and allow them to focus on what they do best, including understanding and anticipating changes in regulatory environments, studying competitor movements, adjusting licensing tactics for maximizing value to the business, etc.

The pressures brought on by budget cuts and staffing challenges offer an opportunity for IP and legal teams to optimize their intellectual property strategy. Teams should reflect on the shortcomings of “it’s always been done this way” operations, instead focusing on optimizing the people, process, and technology mix. 

An optimized intellectual property strategy accounts for the scope of work of an IP team, tracks competitive IP, and archives institutional knowledge for future reference. It also offloads repetitive tasks, reducing non-billable hours, and deploys automation so team members can focus on the more valuable, higher-level work for which they were trained.

To assist in intellectual property strategy optimization, many organizations turn to IP Managed Services providers which offer a smart, scalable, budget-conscious approach. These best-of-breed companies rely on a mix of proven technology and IP experts to reduce administrative burden and backlogs, mitigate operational risks inherent in IP management and prosecution, quickly scale, and respond to spikes in workload with experience and flexibility.

By utilizing proven processes and workflows for data accuracy and consistency, IP Managed Services providers help law firms and legal teams identify opportunities and boost efficiencies.

Whether organizations keep these efforts internal or contract an IP Managed Services provider, they should not let the intellectual property strategy optimization opportunity pass them by. Those that do, put their companies at risk by missing valuable financial and operational opportunities and relying on outdated cost-cutting strategies like layoffs that create extended, expensive cycles of depleting valuable institutional knowledge that can be difficult to recover from. Legal teams, including intellectual property experts, were traditionally accepted as cost centers that offered brand protection, but as business modernizes, legal is no longer exempt from the imperative to contribute to the production of positive business outcomes. Optimizing the organization’s intellectual property strategy can help meet the legal modernization mandate, helping transform legal from a cost center to a revenue driver.

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