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  • Writer's pictureWinston Schultze

5 TOP Practices for better IP Portfolio Management

It has become increasingly important for companies to keep track of the extent, quality, and use of their IP Assets. As a legal representative of the company, you must conquer this arena. Successfully managing an intellectual property portfolio requires more than just unleashing analysts and lawyers on public patent databases.

Advanced patent portfolio management involves more than that. As an IP professional, you have to efficiently develop and manage the appropriate intellectual property protection that your clients need domestically and worldwide. So here are the top 5 best practices that you can use to improve your portfolio management.

Educate employees

It is essential to promote a company-wide awareness of the importance of intellectual property assets and educate them that every employee must protect them. For example, you can give presentations to employee groups that are central to innovation and creation. In addition, employees need to familiarize themselves with the basic IP map of their industry.

In addition, you can also educate management about IP related matters, such as IP strategic planning, docket management, trade secret protection, escrow agreements, valuation of IP assets, IP-derived revenue streams, employment agreements affecting IP rights, IP purchase and sale agreements, due diligence reviews, licensing, acquisitions and divestitures, and conflict resolution. You can also give them high qualified training followed by a quiz so you can analyze their performance, our partner Chawton Innovation Services provides the best in IP e-learning.

Establish comprehensive strategies

Whether your client's business is large or small, and no matter what industry they are in, a well-considered intellectual property strategy is a 21st-century business necessity. Either you want to go defensive or offensive with your client's IP, the strategy must support the business's overall domestic and global goals.

Successful implementation of the IP strategy depends heavily on skilled monitoring, managing, and event reporting for each national and international IP asset in the portfolio. Even if there are only a few intellectual property assets to be managed, a clear understanding of each case's legal deadlines and procedures is required and the ability to balance the costs, risks, and benefits associated with each management decision.

IP Audits

An IP Audit is a systematic review of the intellectual properties owned, used, or acquired by your clients so you can assess and manage risk and remedy problems.

IP audits will vary depending on the need. Still, it is instructive to understand the output of a comprehensive audit. With such an understanding, you can go for a full audit or in phases. Phases can be asset-specific. For example, some types of companies, such as those in the creative arts, may be more heavily copyright-driven and thus may wish to narrow the scope of an audit to copyrights and related issues.

The key is the alignment of expectations and constant communication to ensure a successful outcome. For most intellectual property audits, a written plan should be prepared in advance. Beyond schedule and cost, the project should define the objectives and scope of the audit, areas of inquiry, and responsible parties. It does not have to be complex - Just remember, technology is your best friend for better efficiency.

You should perform IP audits regularly and periodically. An annual audit is reasonable, but there are other circumstances where a supplementary audit should be performed, for example;

● Before a merger or acquisition

● Before an initial public offering (IPO) or other stock offerings

● When seeking major financing

● When changing IP counsellor to evaluate an IP portfolio for possible acquisition or licensing

A full audit includes all forms of IP: patents, trademarks, product get-up, copyright (and moral rights if applicable), designs (both registered and unregistered) and database rights, as well as pseudo-IP rights such as trade secrets/confidential information and domain names.

Ideally, when performing an IP Audit, you should analyze your client's IP assets and the rights of its primary competitors. This will allow your client to make well-informed business decisions.

The main steps in an IP audit are:

● Scrutinize registered IP rights.

● Scrutinize unregistered IP rights.

● Scrutinize IP rights licensed from third parties (including the terms, registration requirements and transferability of any licenses).

● Scrutinize IP rights licensed to third parties (including the review of existing arrangements for profitability and potential competition law issues).

● Scrutinize infringements.

● Scrutinize all agreements and contracts relating to IP rights (for example, ensure any contractual warranties are appropriately drafted to maximize the chance of success of any eventual claim, ensure contract clauses allow registration of transfer of ownership).

● Finally, assess opportunities for exploitation and licensing of rights.

Enforce IP

As a legal representative of your client's company - the burden of enforcing IP rights is mainly on you. In other words, it's up to you as an IP lawyer to identify any infringement of their IP and to decide what measures to take.

Of course, your client's IP assets are of little value if they cannot be enforced. So, to enforce IP, you should develop an effective and efficient process for identifying patients that are likely to be infringed and finding potential infringers. The best way to create a perfect system is to use technology and digitalization of the processes. Our partner QK Innovations can provide smart solutions and help you in this regard.

If you suspect that an infringement has occurred, several tools are available for enforcing IP rights, and the exact procedures and rights differ across countries.

Use Technology

Technology has significant effects when it comes to IP operations. No matter the size of your client, technology has both tangible and intangible benefits that will help you make money, speed up the processes, and produce the results your customer's demand. In addition, technological infrastructure affects the culture, efficiency, and relationships of a business.

Digitalization is necessary, so our partner QK Innovations provides smart solutions and helps you through the complexities of digitalization, focused on digital business development, custom software, and the creation of professional websites. Their commitment is you: your IP firm, your needs, and your requirements.

Build an understanding and trust

While the point is obvious, this takes a bit of effort to implement well. Trust is vital because clients need to know that their attorney has their best interests at heart.

There's no one-size-fits-all answer for how to build trust with clients, but here are some helpful tips and tricks for building a solid relationship.

● Always remember that communication is key. Building trust begins with communication. Clients want their lawyers to be reachable and available whenever they feel their need.

● It's important to remember that communication is a two-way street. So, listen, don't just talk.

● When your clients do ask questions, make it a priority to respond promptly.

● You have to understand the client's technology and business objectives. This will help you deliver the best possible service.

● You also have to manage expectations. Of course, you want to provide the best possible service to your clients, but not every outcome will be favourable. So it's essential to be honest with your clients and not over-promise on results you know you can't deliver.

● Clients also still want to know that highly skilled professionals are representing them. So, it's crucial to stay on top of the latest legal changes and industry developments, so you can be sure you're always offering the best client service and most up-to-date advice possible. To do that, you should join communities and platforms where you can hone your skills.

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