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About

Editor-in-Chief,   Anatole Krattiger

Editorial Board

Concept Foundation

PIPRA

Fiocruz, Brazil

bioDevelopments-   Institute

CHAPTER NO. 12.4   IP Portfolio Management: Negotiating the Information Labyrinth
Editor's Summary, Implications and Best Practices

Krattiger A, RT Mahoney, L Nelsen, JA Thomson, AB Bennett, K Satyanarayana, GD Graff, C Fernandez and SP Kowalski. 2007. Editor’s Summary, Implications and Best Practices (Chapter 12.4). From the online version of Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practices. MIHR: Oxford, U.K., and PIPRA: Davis, U.S.A. Available online at www.ipHandbook.org.

© 2007. A Krattiger et al. Sharing the Art of IP Management: Photocopying and distribution through the Internet for noncommercial purposes is permitted and encouraged.

Editor's Summary

This chapter, written by a university technology manager, advocates an “integrated intellectual property management (integrated IPM)” approach for technology-based companies. An integrated IPM approach blends sophisticated IP data search-and-analysis techniques with continuous product improvement.

At the highest level, an integrated IPM approach is differentiated into “strategic” and “tactical” decision-making. Strategic decision-making is a broad analysis; tactical decision-making analyzes specific products or technologies in a known competitive landscape.

The chapter briefly describes the different types of data tools, searches, and analyses that are used to manage IP portfolios, ranging from very broad “technology scans” to very specific patent infringement or validity searches.

The focus of the chapter is on how data analysis can be integrated with the product innovation process. Ideally, up-to-date data analysis will identify new opportunities or problems that can be dealt with in a timely manner. For example, patent applications can be amended to enhance protection or clarify, expand or delineate claims. Licensing new patents or technologies that can improve protection or decrease costs are also opportunities that may pass quickly, such that up-to-date information will be vital for timely action.

There are two reasons why IPM is helpful for managers of IP portfolios: (1) IPM is a helpful tool in managing and marketing IP portfolios, and (2) IPM enhances understanding of the processes in which customers are engaged and how a licensed technology would support their endeavors.

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policymakers

  • IP management is complex and competitive. Public-sector research institutions can only participate in technology-based economic growth if they effectively market their inventions to the private sector.

For Senior Management (university president, R&D manager, etc)

  • For private-sector companies, the ultimate purpose of IP management is to reduce risk and enhance competitiveness. For public-sector institutions, the ultimate purpose of IP management is to serve the greater public interest.
  • Integrated IP management considers the critical role of IP management throughout the entire innovation life cycle. IPM allows managers to intervene, change course, amend or enhance patent applications, or in-license useful patents or technologies.
  • Integrated IP management draws on the fields of law, science, and business. Institutions should have access to experts in many fields.

For Scientists

  • If you work for a private-sector company, integrated IP management enhances the value of your efforts. It requires you to communicate with the business-management and legal teams of your company.
  • IP management techniques such as a technology scan may be very useful in brainstorming or research planning.
  • Keep an eye on newly published patents and patent applications. They provide important guidance in your R&D decisions (for example, who holds IP rights), as well as keeping you abreast of the latest technical developments in your field.

For Technology Transfer Officers

  • Integrated IP management will require you to work in with research teams and your organization’s management. Your role is to provide IP intelligence based on your access to IP data and based on a full range of IP searches and analyses conducted by your office. You are responsible for providing up-to-date information about the patents in your organization’s portfolio.
  • Patent landscapes or maps may provide information about potential markets, partners, or licensing opportunities.
  • You will need to seamlessly coordinate your institution’s business, scientific, and legal capabilities. Such coordination requires appropriate staff training, cooperation, and mutual respect.

Krattiger A, RT Mahoney, L Nelsen, JA Thomson, AB Bennett, K Satyanarayana, GD Graff, C Fernandez and SP Kowalski. 2007. Editor’s Summary, Implications and Best Practices (Chapter 12.4). From the online version of Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practices. MIHR: Oxford, U.K., and PIPRA: Davis, U.S.A. Available online at www.ipHandbook.org.

© 2007. A Krattiger et al. Sharing the Art of IP Management: Photocopying and distribution through the Internet for noncommercial purposes is permitted and encouraged.