Silicon Valley GCs focus on IP Management and Strategy

By Damian Durrant

At the recent 27th Annual All Hands Meeting organized by the Silicon Valley Association of General Counsel (SVAGC), intellectual property matters were forefront, and particularly IP strategy, litigation and portfolio management.

Over three hundred counsel and representatives of the dynamic Silicon Valley technology community attended the conference, which also addressed pressing corporate regulatory, ecommerce, privacy, data transfer and data security issues.

The IP portfolio management strategy session was particularly well attended. Presenters recommended an analytic and holistic approach to the portfolio, which can then drive a related patent prosecution strategy.

The presentation began by using a matrix to assess the portfolio to determine a patent strategy. One dimension is business value: is the asset defensive, offensive, aimed at partnerships, driving portfolio growth, or filling portfolio gaps. Cross reference that to second axis of the level of technical advancement: is it revolutionary, evolutionary, an upgrade of older technology, an entire system or component of a system and how does it compare to key competitors’ portfolios.

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Assets can be evaluated and ranked against this matrix. Strategic considerations include how you will use the patent, where and when do you need protection (timing) and which internal stakeholders need to be part of discussion. Vital is an analysis of the competitors products and IP. From this a visual map can be a powerful tool for determining strategy.

A freedom to operate (FTO) analysis involves identifying and analyzing the patents of others that may subject your company to patent-infringement liability.  Complex multi jurisdiction analysis and mapping is necessary, for which you need a clear picture of the portfolio, product families and status of IP rights. Given there are no unlimited resources, it is vital to focus on primary competitors and patent features without which the company cannot survive.

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Fundamental to IP portfolio management is “filling gaps” in the range, the speakers used a visual to show the present product and IP portfolio. There are two dimensions, first can you fill the portfolio gaps internally by product development? The rate of internal innovation, the level of engineering expertise in specific fields, the bandwidth of engineering team, budget and timing should all be evaluated.

Second, should you fill the portfolio gaps via external sources? This might include patent acquisition, company acquisition, or acquiring exclusive licenses. Sometimes overlooked, the company must pare the existing portfolio to focus efforts and manage costs. Many inventions are overtaken and substitute products appear that eliminate the original business case.

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The objective is to “right size” the portfolio to determine how many patents are enough. Bearing in mind what’s achievable, the rate of technological evolution in the field, the number and type competitors, types of patent needed and strengths of patents. IP budgets are never unlimited, so business and technical leaders must constantly evaluate risks and prioritize.  This requires evaluating risks of reducing areas of focus and the number of patents and number of foreign filings.

Additionally, portfolio management and patent litigation strategy must build in flexibility to be agile in face of constant changes in the law, funding, the market and technology evolution.

Overall, intelligent portfolio management must answer the question “why are we making these investments?” Portfolio management must reflect and to some degree influence business goals. The portfolio should allow intelligent resource management. In the end, the company’s business and technical leaders must understand the current portfolio, strategy, and commitments.

All of the above requires a robust tool portfolio management tools that allows you to track assets, report, schedule, visualize and budget.

All illustrations are from the presentation materials, with friendly permission from of Kevin McLintock at Logitech and Craig Largent at Kilpatrick Townsend.

[This post originally appeared at IP Folio.]

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