The Four Steps of IP

When discussing strategies for managing intellectual property (IP), many technologists within companies interchange their use of the strategy term to refer to a patent filing strategy and a holistic IP strategy. A patent filing strategy should refer to a strategy specific to one invention or a patent family, while an IP strategy is more holistic and should include the patent itself, as well as incorporate how the firm intends to manage its logos, trademarks, registration marks, and how to manage trade secrets.

IP strategy is a key part of the overall business strategy, especially with regards to defending the company’s brand equity as well as maintaining a lead in the chosen industrial areas it would like to ideally play in. Having an IP strategy in place is essential for a company to manage its R&D allocations, its operating costs, and strategic innovation pipeline partners. If the IP strategy were placed within a hierarchy, it would probably be fall in line like the following:

corporate strategy > technology strategy > IP strategy

A clear IP strategy would describe how the company will manage its IP assets  once it has developed strategies for Where to Play and How to Win with an outlook towards future technological advances and possibilities. The strategy should also describe what offensive and defensive measures the company should take, also in addition to what IP might be most advantageous for acquisition and cross licensing.

Having an IP strategy has served many large companies well. Those who think through their objectives and develop a strategy before taking any action towards filing can save costs and protect their valuable assets. Here’s how to get started:

1. Ask the right questions
IP should be used to drive business results and revenue streams. R&D managers, inventors, legal team, and other supporting functions should be aligned to the business strategy and the supporting IP strategy so that allocation of the company’s resources is maximized to deliver against the hierarchy of strategies mentioned earlier.

2. Research the market
You need to know the area that you are responsible for broadly and deeply and where it fits to the business objective of the company. Research the white spaces available within your industry to decide where to make your IP investments.

3. Incorporate legal perspectives
Treat the patent examiner as your advocate and the attorney as your coach. Working with the legal department will help you further refine your approach and gain clarity on the protection strength (current vs. desired) to allow you to know where to put your future efforts.

4. Put it down in writing
Create a document that includes: overview, objective, innovation approaches, inventions made or needed, assessment of existing art & competitive landscape, cost and budget, freedom to practice summary…etc.  This document can be updated and modified as needed.

In the case of Apple vs. Samsung in their legal dispute regarding the design of smart phones and tablets computers, litigation took place in 10 countries with multiple cases filed. This complex litigation process did not take place without each party having a strategy that fit within their respective company’s objectives. Protecting core assets, design, and inventions does not only pertain to large companies, but small companies would also be well served to develop an IP strategy around its most valuable IP.

Here at 4iNNO we not only recommend clients to have an IP strategy in place to protect the enterprise’s intangible assets, but we also view IP strategy as a cornerstone in supporting the company’s overall commercial objectives. Feel free to contact to further discuss this very complex but important business subject.

When it comes to developing an IP strategy, spend the time, spend the money—it’s a wise investment

Kemal Catalan, PhD


Sarah Tsai