Building an Outstanding IP Portfolio

The value of an intellectual property (IP) portfolio can massively outweigh the cost of creating it. Early investment in creating the right IP portfolio yields valuable assets which can be sold or licensed-out, leading to outsized returns.

So, thinking about IP solely in terms of ‘building a protective moat’, and not laying the foundations for downstream patent sales and/or licensing businesses, risks leaving significant value on the table.

In many cases, creating a valuable IP portfolio can be done in under 1 year. This post gives an overview of how to go about it.

Setting Targets

Try to avoid taking a reactive approach to IP creation. It’s natural to want to keep your head down, focussed on building your tech and your business, and to periodically look over what you’ve been working on and to ‘call the IP lawyer’ when you spot something you want to protect. But that’s far from ideal.

Instead, it’s important to be focussed on overarching commercial objectives and to be proactive. What sort of licensing business do you want to enable? Who would buy your IP and why?

Do some benchmarking. Identify the types and sizes of IP portfolios associated with success stories that feel relatable to your tech. It’s fairly easy, using free tools, to have a look at companies that you’re aware of to see how many patents they filed and for what.

Following that, set some targets. At this stage it’s enough to set how many new patent applications you want to file and over what timeframe. Be ambitious here.

Cost projections are relatively easy once you have your targets set. The cost projections for the first year or two can be accurate, because the vast majority of the costs will be attributable to the preparation and official submission of new patent applications, which will be entirely within your control. A patent attorney can help you here.

The investment decision is then easy to take. You understand your big-picture objectives, you know broadly what size portfolio you want to create, and you know what it will cost.

Getting it Done

Having taken the investment decision to go ahead, it’s time to roll up your sleeves and get to work. Your mantra here is to create as much useful output as possible.

Keep your planning phase as short as you can… just enough so that everyone knows what they’re working towards. Take your target total number of patent applications and break it down into sub-targets covering different aspects of your solution. For instance, if your solution revolves around a novel wearable device and your target total number of patent applications is 15, you might have sub-targets along the lines of: 5 patent applications related to physical characteristics of the wearable device itself; 5 patent applications related to software control of the wearable device; and 5 patent application related to processing signals received from the wearable device. It’s not an exact science, and you may need to adjust the sub-targets as you go, which is fine — in the end the main aim is to diversify the assets in your IP portfolio and avoid ‘tunnel vision’ (more on that below).

Execution is where you want to spend most of your time, as this is what provides the useful output. My approach here is an iterative cycle of mining and then prioritising.

Mining can take the form of group brainstorming sessions or one-on-one sessions, probably both. It’s really just the relatively unstructured process of a facilitator working with an expert, exploring potential points of novelty and capturing them as efficiently as possible. In my experience it’s helpful to start out with more surface level sessions to identify interesting concepts, and then to follow up with deeper dives to tease out more details. The output is an inventions board that lists the ideas that came out of the mining sessions, giving each a reference number, a short but meaningful title, and a 2–3 paragraphs explanation of the idea.

Prioritisation sessions should start as soon as you’ve got your first ideas on the inventions board. I put these sessions in the calendar with a regular cadence and try not to move them, so that they become the drumbeat that keeps the project moving forward. At the prioritisation sessions you’re going to: rank the ideas on the inventions board; review your progress against the sub-targets and record action items to get you back on track where necessary; and pick the next invention (usually the one with the highest ranking) to proceed to patent drafting.

Patent drafting and filing is done in parallel with the mining-prioritising loop. The pre-work is to prepare an invention disclosure form (IDF) for the idea that was selected at the prioritisation session. Then provide the IDF to your selected patent attorney and schedule an invention disclosure meeting with her as soon as possible.

Avoiding Bottlenecks

The approach described above is relatively simple to roll out, but there are some common bottlenecks to mitigate.

Avoid process for process’s sake. IP portfolio creation shouldn’t feel like an exercise in filling out forms. Nor should it feel like meeting after meeting of blue-skies thinking (or even naval gazing) with too little tangible output. Beautiful dashboards and vanity KPIs are also not where it’s at.

Plan for alleviating the time burden on your technical experts. They’re already very busy. Realistically you can’t ask them to prepare detailed documentation for all their inventions, or to carefully reviews dozens of dense patent drafts from the patent attorney. Find someone else to write-up the output of the mining sessions. Each mining session might come up with anywhere between one and a dozen ideas, and each of those ideas needs to be captured in writing and added to the inventions board, in a form that can be communicated easily to others in the team. And then, for those ideas which finally progress into the preparation of a patent application, the reviewing of the documents prepared by a patent attorney can also be very time consuming. Identify people to shoulder some of the heavy lifting here, to avoid the project stalling due to unreviewed drafts piling up in your technical experts’ inboxes.

Also, it’s common for experts to dismiss a lot of what they’re coming up with as being just obvious or not something that can be protected, which is something the needs to be nipped in the bud. Your mining sessions need a facilitator who challenge the ‘it’s all obvious’ bias and to find and tease out those inventions that fits the overall objectives.

The flipside of that coin is a sort of ‘tunnel vision’ where many ideas are concentrated around one or two core concepts — usually the concepts that are most interesting or challenging to your technical experts. This will become evident in your prioritisation sessions, and it needs to be fed back to the mining sessions where it can be remedied.

Wrap Up

At successful completion of your IP creation project, you will have filed the target number of patent applications and they will have different technical focusses, to give the portfolio suitable diversification.

Here’s some things to do to wrap up the project:

- Prepare an overview of the patent applications you filed, using the information on your inventions board as a basis, with the aim of being able to communicate your IP portfolio in simple terms to a non-expert audience.

- Schedule a check in with your patent attorney, 6–9 months from when you filed the first patent application, to see how the patent applications are progressing and to confirm how you want to proceed.

- Review the inventions board and determine what to do with all the ideas that weren’t selected for patent drafting. Options include, on a case-by-case basis: keeping it confidential; publishing it defensively, so that competitors can patent it; flagging it for review at a later date, for a second tranche of patent filings.

Previously posted on LinkedIn