Q4 IP Strategy: Reviewing Your Intellectual Property Portfolio Before Year End
Introduction :
The last quarter of the calendar year is a good time for more than financial analysis and planning. It is a good time to see if your intellectual property aligns with your business.
For innovators, research teams and businesses, big or small, managing your IP portfolio can help align your business goals and patents, trademarks, copyrights, and other IP to your business strategy.
The end of the year presents an opportunity to identify valuable inventions that have not been protected, design over patent mismatches, address gaps in ownership and set deadlines for upcoming renewals, as well as opportunities for foreign filing.
The objective is not to have the most IP, but to have an IP portfolio that supports your products, your technology, your brand, and your business and market strategies, now and in the future.
WIPO advises businesses to do a review of their IP assets at least once a year. Changes in technology, markets, competitors, customers, and business models can impact the strategic value of an IP portfolio.
What Is IP Portfolio Management?
IP portfolio management is the management of a company’s intellectual property assets in a systematic way in order to identify, protect, maintain, review and administer those assets.
A portfolio may include:
- Patents (and patent applications)
- Trademarks (and brand assets)
- Copyrights (and software)
- Industrial designs
- Trade secrets
- Technology licenses
- Domain names
- Other IP assets related to research and development
Effective management considers more than the number of registrations. It asks whether each important asset supports the company’s current and future business goals.
Consider a situation where a technology company is faced with questions such as if its patents adequately cover its current generation product, if new inventions need to be disclosed, and if markets outside of the U.S. warrant broader patent protection.
Why Q4 Is the Best Time for an IP Review
The Q4 time period offers management the opportunity to pull together various teams such as legal, R&D, product, marketing, finance and business development along with a year-end planning session.
A Q4 review can identify the following:
Inventions disclosed and developed throughout the year
Pending applications and deadlines in the patent process
Renewals and maintenance for patents, trademarks, and designs
Trademark portfolio changes and defenses
New products, logos, and trademarks that need protection
Record keeping regarding the date an invention was conceived, invention disclosures, and the filing of applications
Potential legal IP gaps
Opposition and defense opportunities
Opportunities abroad due to the company’s underutilized IP
Priorities related to the company’s IP for the subsequent year
Intellectual Property audits can bring protection gaps, unused IP assets, and third party IP risks to the company’s attention.
For businesses in India, this review is particularly helpful when finalizing R&D and commercialization plans for the next year.
How to Perform a Q4 Intellectual Property Audit
- Prepare a PBCS IPAsst Audit
Creating an audit starts with the company preparing a spreadsheet listing each IP asset owned, developed, licensed, or used.
An example of information to be listed for a patent is the following:
Application or Patent number
Title of the Invention
Inventors
Filing and priority dates
Current status of the application
Jurisdictions and countries
Renewal requirements
Commercial importance of the patent
Do the same for trademarks, copyrights, design, domain names, licenses and confidential information.
WIPO states that the starting point of an IP audit should be an inventory of registered as well as unregistered intellectual assets.
- Review Ownership
It is costly to find out about ownership issues when your company decides to raise money, buy a company, license out, or sell a product/service.
Review whether IP ownership was/is assigned to the proper company for the employees, contractors, consultants, research collaborators, partners, etc.
Also review:
Employment agreements;
Assignment agreements;
Consultant contracts;
NDAs;
Research agreements;
Joint development agreements;
Licensing agreements;
A good corporate IP management process will indicate ownership responsibilities.
- Evaluate Your Patent Portfolio
Not every invention should be protected the same way.
Review each patent application or granted patent and evaluate the following:
Is this patent supporting an important product or technology?
Is the technology still important and or useful to competitors?
Is the competitor using similar technology?
Are we using the important technology?
Is the patent protection adequate for the commercially important technology?
Are additional patent applications needed?
Do we need protection for other markets?
Are continuous, divisional, or related patent applications needed?
The goal is to assess the quality of the patent portfolio, i.e. how well it is streamlined and prioritized, and where improvements are needed.
- Create a Q4 Patent Strategy for New Innovations
New and improved products and processes are likely to have been created by the R&D teams during the year.
Conduct an internal invention disclosure review prior to the end of the year.
Everyone should be encouraged to disclose:
Technology related to a product, improvement, or process
Engineering related to improvements
Technology related to a software or App
Research
New manufacturing technology
All processes and technical improvements
Improvements that create significant technical advantages
All potentially patentable inventions should be analyzed prior to public disclosure. A patentability search should be done to assess published technology and determine whether it is worth the time and effort to file a patent application.
- Review International Protection
If you are planning on operating in foreign countries, your IP protection has to reflect that.
WIPO advises organizations to consider:
The locations of prospective customers.
The territories of operation for the company and its competitors.
Where products and services will be offered for sale.
Where products and services will be manufactured.
The location of existing and potential competitors.
Where licensing opportunities are found.
The territories of commercially significant countries.
Existing foreign filing deadlines and filing priorities.
For Indian startups and businesses expanding abroad, these factors are important to consider when formulating a patent filing strategy.
The following documents should be prepared for a year-end IP review:
Organization of records will increase the efficiency of a review.
Patent and trademark portfolios.
Documents pertaining to patent applications and grants.
Records pertaining to inventions made.
Documentation pertaining to projects undertaken for research and development.
Documentation pertaining to inventors.
Documentation pertaining to authors/inventors.
Agreement and assignment documentation. Deeds of assignment.
Non-disclosure agreements (NDAs).
Travel documentation pertaining to partnerships and licensing arrangements.
Plans pertaining to international business.
Disputes pertaining to IP.
Documentation pertaining to renewals.
Documentation pertaining to filings.
The technology landscape.
The exact documentation will depend on the size, industry, jurisdictions, and objectives of the organization.
A Practical Step-by-Step IP Portfolio Management Process A Q4 review can follow this simple framework:
Step 1: Inventory
Identify all of the client’s IP including patents, trademarks, copyrights, designs, trade secrets, licences and other IP.
Step 2: Verify ownership
Confirm the existence of ownership and assignment agreements/ records.
Step 3: Assess protection
Identify the gaps in protection afforded by patents, trademarks, copyrights, designs, or confidentiality to IP.
Step 4: Evaluate commercial relevance
Associate major IP to the products, technologies, and business customers and market IP to the various revenue opportunities.
Step 5: Check deadlines
Review filing, prosecution, renewal, maintenance, and other deadlines that are applicable.
As an example, under the Indian Patent Rules, to keep a patent in force, renewal fees are required to be paid in accordance with the provisions of the relevant laws and extensions.
Step 6: Prioritize new filings
Identify inventions where an assessment of patentability and/or filing of a patent application may be necessary.
Step 7: Plan international protection
Determine potential countries of interest based on business and market considerations.
Step 8: Develop the next year’s plan
Develop an IP budget and patent filing plan based on the outcomes of the assessment.
Common Q4 IP Mistakes to Avoid
Treating the Number of Patents as the Main Criteria
While a larger portfolio may constitute a strong IP strategy, a thousand patents may also potentially have a negligible value if the relevant innovations are not strategically important to the business.
Ignoring New Inventions
The company may have missed an important innovation that was developed 6 months prior.
Missing Renewal Requirements
The failure to keep track of the maintenance and renewal obligations may result in the loss of valuable IP rights.
Filing Without Commercial Planning
When considering filing for a patent, the protection of the innovation should be assessed in the context of the development of the product, potential markets and competitors, potential licensing of the invention, and the business objectives.
Overlooking Third Party IP
Your company should assess whether company products, software, technologies, or processes rely on IP that is owned by others.
Keeping IP Information in Separate Silos
R&D, legal, product, finance, and leadership teams should have a coordinated approach to IP.
Who Needs a Q4 IP Review?
An annual IP review may be beneficial to:
Startups seeking investments
Innovations building technologies
Competitive advantage building MSMEs
Research organizations with potentially marketable discoveries
Products developing market solutions
Large patent managing enterprises
Technologies entering new markets
Bangalore and Indian based businesses developing portfolios of innovations
Preparing for licensing, partnership, investment, and acquisition transactions
WIPO also notes business strategy shifts or adjustments coupled with investment, partnership, cost reduction, licensing, or litigation preparation as circumstances warranting an IP audit.
Value of IP Professional Support
In situations where customers maintain IP records, professional support can assist with IP strategy and portfolio management.
IP professionals can provide a range of services including:
IP audits
Patentability searches
Drafting patents
Filing patents
Optimizing patent portfolios
Patent prosecution
Trademark and copyright protection
International filing
Review of IP ownership
Competitive IP analysis
Portfolio prioritization
Priorities and impacts of patent investing can be clearly articulated for management.
Why Choose MakeMyPatent?
The MakeMyPatent team draws on its 21 years of IP expertise to assist innovators, startup, researchers, MSMEs, and enterprises.
MakeMyPatent supports clients with:
Patent filing and drafting
Assisted patentability searches using AI
Responding to the patent office objections
Supporting patents during hearings
Trademark protection
Copyright protection
IP legal services
International filing of patents
Prioritizing the IP strategy of the business
Using confidentially protected, precision targeted IP strategies, AI enabled support, and expertise, MakeMyPatent enables businesses to manage their IP portfolios broader than the present.
Whether you are an innovator based in Bangalore or a startup from another location in India, or even if you are a business planning international expansion, an IP assessment would help turn innovative ideas into a strategic asset.
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Frequently Asked Questions
- What is IP portfolio management?
Answer: IP portfolio management consists of discovering, protecting, maintaining, assessing, and utilizing intellectual assets such as patent rights, trademarks, copyrights, designs, trade secrets, and related rights.
- What is an intellectual property audit?
Answer: An intellectual property audit is an evaluation of a business’s IP assets. It helps identify a gap in protection, issues related to ownership, unused IP assets, exposure to third parties and possibilities to create a better system for managing IP.
- Why should startups conduct an IP review before year-end?
Answer: Conducting a review during the last days of the year is useful for a startup to know about their inventions, to plan and organize the ownership of records, to determine important deadlines, to evaluate protection gaps, and to create an IP strategy to support funding and product launches and to prepare for the growth of the business with market expansion.
- What should be included in a Q4 patent strategy?
A Q4 patent strategy includes reviewing and assessing all patent applications and inventions respectively, determining patentability, assessing relative deadlines and priorities, focusing on international markets, and forming a plan for patent filing for the following year.
- Can an IP audit help reduce unnecessary IP costs?
Yes. An IP audit helps determine if an asset is underused or if it is no longer important and helps a business focus its resources in other important areas. However, the final decision on whether to protect, abandon, or even defend a particular right should only be made based on the applicable law and commerce.
🚀Book Free Consultation for an IP Audit :
Intellectual property should support the business’ focus and plans for the future and not just its past.
An organized review at the end of the year can help a business plan gap-free protection and prioritization of new inventions, assessment and maintenance of existing portfolios, and formulate a practical plan for the next year.
If the innovation you have is not straightforward to define as a patentable idea, or if you are not certain whether it would be better protected as a trade secret, schedule a Free Consultation with us to help you develop a more informed IP Strategy.
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Disclaimer: This blog provides general educational information only and does not serve as formal legal counsel. Please address your specific invention or IP requirements directly with a registered patent professional.