(By P. Krishna Mohan) Date : April 10th,2019
In the first of two articles on this subject published in March 2019, we discussed the basics of an IP strategy; what it is, why every business should have one and some of the key elements that need to be considered in developing a robust IP strategy. In this second article, we will detail the remaining elements that, in my opinion should be considered to complete formulating the IP strategy. The main reasons for having an IP strategy are to gain the competitive advantage needed in the marketplace to ensure long-term business profitability.
As we discussed in the first article, an IP strategy is all about understanding what the company wants to do with its IP. What are its strengths and weaknesses? What are the gaps in its internal technical capabilities and can licensing technology from an external source help close those gaps? What IP is worth protecting and what can and should be monetized through licensing and sales? What mechanism should there be in place to find the infringers?
The following are the remaining elements that should be considered to complete developing the IP strategy.
- Test the vulnerabilities of the business’ and its competitor’s patents to “design-around” challenges and identify the gaps in protection.
- Do the patent claims cover the product and/or process?
- What about second-best and not-in-kind alternatives developed by others? These product alternatives can erode market share by satisfying many of the market’s needs, especially if they are coupled with lower prices.
- Is there a roadmap to get to the next-generation solutions to stay ahead of the competition?
- Do the competitors’ patents create any freedom-to-operate issues for the business? If so, what are the options?
- Establish a foreign filing profile taking into consideration patent strength, market opportunity, country IP law assessments and costs involved.
- It may be possible to embargo the import of product made by an infringer, therefore having IP protection in the destination or largest market can be more important than filing IP where it is being infringed.
- Stay alert to competitive initiatives by using on line patent alerts.
- Commit resources to analyzing and organizing the information obtained.
- Freedom-to-Operate and competitive advantage positions can change quickly as new patents are issued and new information becomes available.
- Document the IP Strategy.
- Recognize that it is an evergreen document that needs to be periodically updated.
- Be honest in assessing the business’ weaknesses and how they will be addressed.
An IP strategy is ultimately judged by the value it creates for the organization. A well-developed strategy allows an organization to identify IP that is most critical to its operations, identify IP that can be licensed or sold, identify gaps in its internal technical capabilities, and helps identify potential infringers. In short, a strong IP strategy helps to ensure a stable, sustainable long term market position for the business.
This discussion is provided in the interest of building awareness of Intellectual Property and its impact on a business’ performance.
P. Krishna Mohan recently retired as Global Director of Licensing, E.I. DuPont de Nemours and Co., Wilmington, DE, USA. He consults with individuals and companies on Business Management and Intellectual Property matters and can be reached at kitmohan@gmail.com.