Managing Your Technology Enterprise’s IP Assets

Editor’s Note: This is part eight of a series entitled “Building an IP Aligned Enterprise: A Guide for Corporate and Technology Leaders.”

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As your innovation-driven technology enterprise grows, one of the most important pieces of corporate cultural infrastructure you need to foster is company-wide IP awareness as a foundational element to a well-defined overall IP alignment strategy. Without a continuing emphasis on this vital aspect of your alignment strategy, awareness entropy will edge its way in, putting the value of your IP assets at risk.

In your enterprise’s journey toward a fully aligned IP strategy, you’ve put in the work to establish the infrastructure necessary to the protection of your valuable intangible assets, including your intellectual property. These assets are the primary differentiators in creating your brand identity and represent the most vital piece in your company’s overall viability. Therefore, a central focus of your IP-aligned business strategy will be the management of your IP assets through the stages of innovation.

Well-protected IP assets guard against piracy, counterfeiting of ideas or brand identity, and copycats who look to cash in on products that mimic the ones in which you’ve invested. These assets give you the freedom to innovate and commercialize your products, and can be a means of generating licensing revenue. In other words, if your IP is protected and expertly managed, then your market position, reputation, and revenue streams are also on safe ground.

Throughout your innovation pipeline, the management of your IP from its inception to its capitalization and ongoing use by your enterprise is an important element of your overall IP strategy. Once you’ve established your Innovation Committee – the governing body that oversees your ongoing IP education curriculum and the processes and protocols regarding IP asset development and protection, as well as incentivizing your inventors –  the stakeholders therein will also be tasked with the management of your IP at every stage.

 

Three aspects of capturing and protecting your IP assets

An integral part of executing a cohesive IP strategy is defining the daily work of your IP stakeholders. Of particular importance are the decision-making processes around what innovations need protection, and how to effectively capture those innovations as they emerge from your development teams. 

Your Innovation Committee should decide on a set of rubrics and benchmarks for your developers to follow when evaluating what innovations need to move into the IP pipeline. Those rubrics will then be disseminated from your committee through development stakeholders into the R&D department. Once implemented, your R&D teams will have a clear set of protocols to capture any valuable IP as it’s formed.

Embedded within the decision structure around the identification and capture of IP is another important aspect of your Innovation Committee’s role in managing your IP: deciding what to patent and what to protect as a trade secret. These distinctions are important to make as early as possible and will ensure your assets are protected using the right legal frameworks and physical security protocols in the case of trade secrets.

Following are three necessary pieces of IP management infrastructure that your Innovation Committee will establish. Further, the Innovation Committee will also be responsible for ongoing training in the proper use and security of these IP management infrastructure elements by the teams and individuals who engage with them. 

 

Invention Disclosures

An Invention Disclosure is a simple document prepared by your developers and inventors to demonstrate to department leads and executives that their innovation is worth the investment to pursue into further development and the patent application process. A strongly drafted, researched, and documented disclosure is vital to the strength of your future IP and becomes the basis from which your patent counsel will draft your patent application.

Because Invention Disclosures are so important to capturing and protecting your company’s intellectual property from the earliest inception points, they should be a regular focus for your Innovation Committee on a few levels. 

They will want to implement standardized forms for use by your inventors that allow for flexibility given the unique circumstances of the new technology. Standardizing the disclosure documentation process will make it easier for your inventors to stay on top of their role in IP protection at the earliest stages, and will streamline the evaluation of burgeoning IP.

Some key elements of a solid Invention Disclosure document include:

  • A thorough description of the invention being disclosed in terms of its composition, process, and manufacturing requirements.
  • Detailed research into comparable examples to the invention that demonstrate differentiators and improvements to known technology.
  • A complete explanation of the ways in which the invention will be put into practical use.
  • Justification from a business and fiduciary standpoint for the further development and patenting of the invention.
  • A clear list identifying all participating parties in the development of the invention, and their respective roles and contributions.

While a well-designed Invention Disclosure should itself be a relatively straightforward form to complete and evaluate, these crucial documents are often where some of the widest gaps in IP capture and protection occur. 

At the drafting stage, R&D teams often aren’t aware of all the opportunities to capture their inventions. They will assume that an invention which, to them, is obvious or “easy” must already be patented and in use elsewhere. When they fail to document their ideas, valuable assets can be lost. 

Drafting a disclosure form often presents challenges to developers, as well. Invention Disclosures are notorious for being submitted incomplete, leaving out critical elements of the invention process, descriptions of technologies used or innovated, and the other team members who participated in the invention process. 

Without a thoroughly drafted disclosure, the teams who are tasked with assessing the viability of an invention — namely legal counsel and later, executive leadership and the Innovation Committee as a whole — won’t have the necessary tools to make informed decisions or to draft a strong patent, therefore endangering the potential value of the invention. 

 

IP Asset Database

Managing your IP assets in an organized and secure fashion is one of the most important pieces to your overall IP strategy. Among the protocols your Innovation Committee defines, the use, function, and security of a formalized IP Asset Database should be at the top of their priorities. 

Your asset database does not need to be drafted using sophisticated software. A functional, password-protected spreadsheet can suffice, though more advanced solutions can help optimize functionality and provide deeper insight into what you own and its value to your organization.  

An IP asset database will allow your enterprise to share important data and research across teams and departments and optimize the methods by which you conduct your market and whitespace research when exploring new avenues of innovation. 

The advent of intuitive software, AI, and machine learning solutions have added further value to IP asset databases, allowing users to save time, increase development productivity, and provide analytics data that can boost the efficacy of your overall IP strategy with a relatively low investment threshold. 

While IP asset databases are completely necessary to the success of any innovation-forward company, they also represent a central point of vulnerability. Cyber-attacks and intellectual property theft have only become more prevalent, so protecting your databases is vitally important to the long-term viability of your business. 

Your Innovation Committee should partner with your cybersecurity team to implement and maintain security software and the protocols every employee needs to follow to maintain a culture and practice of IP protection. As part of their ongoing professional development curriculum, they should also include units on protecting trade secrets using both cybersecurity and real-world, physical security protocols. 

 

Contract Database

When faced with the challenge of IP theft or patent or trademark infringement, the strength of your contracts is integral in the defense and enforcement of your various IP protections. A fundamental tool you should use to achieve solid IP protection is a well-maintained Contract Database.

One of the steps your legal team needs to take in your journey toward full IP alignment is a regular audit of existing employment, contractor, vendor, and client contracts by your legal team to certify the validity and enforceability of all IP-related clauses and ownership rights. The audit and assessment process, as defined and overseen by your Innovation Committee, is the ultimate step in the management and protection of your valuable IP assets and is necessary to the execution of a cogent IP alignment strategy. 

 

Conclusion

As your company evolves ever closer to a state of full IP alignment, the detailed daily management of your IP in a codified and ongoing process will prove imminently valuable to your overall market position and bottom-line revenue. 

Capture innovation as it flows out of your development teams by creating a tightly woven net supported by thorough and rigorous Invention Disclosures. Stay on top of your assets at every stage of their development with a secure and optimized IP asset database. Protect your valuable IP with a contract database that ensures your employee, contractor, and customer contracts are solidly written and up to date. 

As you move closer to a completely IP aligned enterprise, you will move beyond the management of your current and emerging IP and begin to task your Innovation Committee with outward facing initiatives. The next article in this series will explore the important role of IP landscape monitoring and analysis, and how your Innovation Committee also acts as the enforcement arm of your IP protection strategy.

 

                       

Michael Dilworth

This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. The opinions expressed in this article are those of the author only and are not necessarily shared by Dilworth IP, its other attorneys, agents, or staff, or its clients.