Managing Patents in the Information
~Andy Gibbs, Excerpt Essentials
of Patents (John Wiley)
Intellectual property management “tools”
are the software solutions used to create, search, manage, license,
or analyze IP – or more specifically, inventions and patents.
Most Fortune 100 companies have, over the recent past, created home
grown solutions designed to meet their immediate requirements. The
process of creating in-house software is expensive, time consuming,
and generally a poor use of programmer’s time.
As dedicated software publishers continue to stream
out new solutions designed on the latest operating systems, continued
investment in in-house legacy system upgrades returns a diminishing
ROI. More importantly, the competitive advantage could easily be
lost to faster, more flexible third party solutions. The IT manager
therefore, should have a working knowledge of patent management
systems in order to assess the “make vs. buy” decisions
within the enterprise.
Why should the CTO or IT manager care about patents?
The functional titles that will be worn by the new generation of
IT manager will include protector of the organization’s digital
and intellectual property, and creator of new intellectual property.
In fact, smart IT managers will soon find themselves being called
on to select, install, and maintain an emerging new breed of software:
intellectual property and asset management solutions, or IPAMs.
Types of IPAM Systems
What is an IPAM system? It is an enterprise-level
software solution for managing intellectual property. Intellectual
Property and Asset Management (IPAM) systems are in their early
adolescent phase of development and are experiencing the same trying
metamorphosis period that integrated accounting systems went through
a quarter of a century ago. An integrated accounting system could
mean anything from time-shared access to your centralized database
stored on a third-party mainframe to small, fairly customized accounting
applications that would allow the accounting department to tie issued
invoices to purchase orders and accounts receivable history.
When more than 90 percent of a corporation’s
share value was attributable to tangible assets, accounting systems
were critical management tools. Today, when intangible assets contribute
more than 80 percent of the shareholder worth in technology-driven
companies, it only makes sense to manage those intangible assets
with the same vigor.
IPAM: Intellectual Property and Asset Management
The word management, when used in relation to intellectual
property, usually means money. It makes sense that such a management
solution keeps track of maintenance fees and licensing payments,
royalty payments or valuation. Many of these management tasks have
historically been outsourced to intellectual property management
One critical value component to managing intellectual
property is the timely payment of periodic maintenance fees to keep
each patent or trademark in force.
Serious solutions are meant for large numbers of patents acquired
domestically and/or abroad, allowing also patent or trademark database
searching, tracking transaction histories, or any number of other
function-specific add-on or plug-in modules.
While full integration within an IPAM solution is
not quite here, certain functional modules developed and supported
by emerging publishers can certainly be integrated to help companies
reduce the maintenance fees currently being paid to outside firms
and realize some level of increased efficiency within the organization.
Although it is impossible to predict what future functionality
will find its way into an IPAM system, I can at least give a quick
listing of the functionality, as a standalone product or as part
of an integrated IPAM solution. This list may provide a starting
point to begin your assessment:
- Patent search engine
- Trademark search engine
- Patent analytics/patent mapping and visualization
- Trademark mapping or analysis tools
- Licensing royalty/annuity tracking systems
- Intellectual property maintenance fees payment
- Legal docketing system
- Electronic patent or trademark filing system
- Portal services
- Web-distributed application: patent work flow
- Knowledge management/IA: user knowledge base/transaction
- Patent, trademark, or intangible asset valuation
- Web-distributed application: patent drawing system
- Technical journal/nonpatent database search or
meta search modules
- Patent/technology licensing module
- Applications that may use a client/server configuration
Using this short list, the
IT and IP managers can engage in a comprehensive internal audit
on in-place tools, as well as needed tools – and the ROI analysis
that accompanies future IPAM investments.
Patents Changing the IT Landscape
It is vitally important that IT managers become patent
proficient. Patents may be a foreign concept to many IT managers
in non-technical businesses such as multilevel marketing and commodity
manufacturers, but they loom large as a business tool that could
lead to a changing landscape of the industry sector or business
type. Together with proper legal and business counsel, the IT manager
can begin crafting a patent software policy.
Corporate counsel can advise IT managers of the legal
nuances of software patents. From a business perspective, software
patents help to establish either a defensive or offensive patent
posture of a company.
A defensive posture is one in which the IT manager
takes care to search, then has the corporate patent counsel search,
for issued patents related to the software programs that the IT
manager is planning on developing.
This defensive posture may include searching patents
related to Website features, if the IT manager is attempting to
develop a unique way customers can conduct e-commerce transactions.
Making the entire programming department more aware
of software patents will not only help a company avoid possible
patent infringement issues, but software patents that teach various
solutions can often spur on the development of the next evolution
of software functionality.
An offensive posture is one in which the IT manager
determines that a new program may indeed be novel, functional, and
not obvious, and therefore elects to obtain a patent on it. When
the IT manager believes that a certain program could be awarded
a patent, the PQM Team must convene and determine the potential
benefit the program could bring to the company.
IT managers should keep in mind not only that company
processes or software products may qualify for patent protection,
but also that even inventive processes arbitrarily developed (such
as the use of advertising logos and a screen saver) may become important
and valuable additions to the company’s intellectual property
A final consideration is the added value that a patent
may have as a defensive tool. If your company has a valuable software
patent, in the event that a company claims infringement on its patent,
you have created a bargaining chip for licensing negotiations, in
addition to the other obvious patent ownership benefits we’ve
Internet Access to Corporate Licensable Technology
Because Website development often falls under the
purview of the IT department, it may be the IT department that drives
the initiative. Although someone other than the IT manager will
make the determination to promote licensable technology via the
Web, there are a few things the IT manager can bring to the discussion:
Marketing and promotion.
It is true that the Internet can be an incredibly
cost-effective marketing channel through which to promote licensable
technology, but the fact remains that unless that Website is properly
promoted, listed, and placed well in the major search engines, it
will do little good in getting the technology in front of interested
Listing the technology on Websites that are
already getting very high traffic – Websites designed specifically
to promote licensing intellectual property.
Listing on commercial tech transfer Web sites can be advantageous,
but it sometimes involves a contract that provides the Web site
owner with a commission or transaction fee of up to $50,000 if a
patent is licensed through that brokerage, so review the fine print.
- Obtaining a branded front end to a technology transfer
Web site that is seeing high traffic numbers.
- Make versus Buy. Given the pros and cons of building
a corporate patent licensing Web site versus having a tech transfer
host build and maintain the system.