PRN: Stronger Focus on IP Brings More Opportunities to Maximise Asset Value

16/apr/2012 03:01:30 PR Newswire Turismo Contatta l'autore

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Stronger Focus on IP Brings More Opportunities to Maximise Asset Value


HONG KONG, April 16, 2012 /PRNewswire/ --


Experts offer top tips on generating revenue

and cost efficiencies in IP management


The increasing global recognition of the importance of intellectual property (IP) is providing corporate IP departments with greater opportunities to maximise the value of their organisations' IP assets. Faced with ongoing budgetary constraints, innovative IP professionals are not just looking to control costs, but actually to transform their departments from cost centres into revenue centres.

That is the view of IP experts Haydn Evans, European head of IP Outsourcing for the world's leading IP management specialist, CPA Global; and Donal O'Connell, a former Director of IP at Nokia, who now heads up his own IP consultancy, Chawton Innovation Services.

Speaking to IP leaders at a recent international conference in Sweden, Evans said: "IP is taking centre stage in business strategy with revenues generated by patents and brands soaring. Senior management are more interested than ever before, asking how their companies can be more strategic in their R&D efforts, and how they can maximise value and revenues from their IP portfolios."

Evans comments were backed up by findings in the latest State of the IP Industry Survey in which 77% of corporate IP professionals said there was a greater awareness in their organisations of the importance of IP valuation, and an increased understanding of IP strength and quality. However, they also acknowledged that budgetary constraints remained a primary influence over IP strategy, with the unsettled economic outlook continuing to affect the way IP is managed.

Former Nokia IP head O'Connell told the audience that IP departments can help relieve budgetary pressure by thinking strategically, and creating positive change in the work they do and the value they create. "Even the biggest, most innovative hi-tech companies can lack the internal resources to manage their IP needs quickly and efficiently," he said. "That can result in major backlogs in key technology areas.

"Enlisting third-party service providers to handle much of the IP administration enables the IP department to operate more efficiently and frees up the limited internal resource to focus on higher-value in-depth work, creating an environment that's more conducive to developing a more strategic and valuable IP portfolio."

O'Connell added that large technology companies are increasingly embracing open collaboration as a route to competitive advantage. However, this trend puts further pressure on IP departments, which not only have to deal with and evaluate ideas from inside the organisation, but also from external third parties. Should such external ideas be taken forward, it means additional work for the internal teams in educating third-party collaborators on IP matters and handling administrative aspects of the collaboration, such as contracts and terms and conditions.  

"We all know how important it is to get great commercial ideas to market as soon as possible," O'Connell said. "The switch to outsourcing routine IP work like patent searching, docketing and annuity payments means that the IP department can make quicker, better assessments of invention ideas and keep ahead of the competition."

Going beyond this, Evans said that, in addition to IP departments becoming more cost-efficient and delivering greater value in the work they do, the current environment is also providing better opportunities for them to become revenue generators in their own right.

"Effective portfolio management is central to achieving revenue generation," Evans emphasised. "IP departments need to be aligning their IP strategy with their organisation's broader business strategy right throughout the IP lifecycle - from generation of ideas at the R&D stage to patent filings to the optimisation and monetisation of patent portfolios."

In order to do this, Evans said there were three steps IP departments should be undertaking on a regular basis:

Step One: Portfolio Review

The first step is to identify what IP you have. A portfolio review provides a more detailed understanding of the patent assets within your IP portfolio and how those patents are categorised in terms of the 'real-world' products and technologies that drive your market sector.

Step Two: Portfolio Analysis

The second step is to identify where the value is. This requires a comprehensive analysis of how well your portfolio is aligned with your strategic business goals, as well as the relative strength of all patents within the portfolio, both from a strategic and competitive perspective. Patent analytical tools can help identify 'traditional' and 'non-traditional competitors'; current gaps in a company's portfolio and what these may be in five years' time; as well as new, untapped technology areas which could compliment existing portfolios. This enables IP departments to segment their patent portfolios into core and non-core patents, and map these against patent strength and, therefore, potential patent value.

Step Three: Portfolio Management and Optimisation

Realising value from a properly segmented and managed patent portfolio can take a number of different forms.  It could be realised by the identification and protection of key patent assets, the "crown jewels" of the portfolio; it could be in the form of monetising strong patent assets that have significant market value, but are no longer core to the corporation's business objectives; or it could take the form of realising cost savings through the abandonment of underperforming assets that no longer have value to the organisation or the wider market.

"By following these three steps," Evans concluded, "corporations can help ensure that their most valuable intellectual assets are identified and properly protected; that their competitive position in the market is strengthened; and that they maximise the return on their investment in innovation."

O'Connell agreed, saying these three steps should be implemented in conjunction with a number of fundamental best practice IP portfolio management measures. including:

  • Establishing clear ownership of the IP management process, while, at the same time, engaging other key stakeholders from the business;
  • Developing clearly defined processes in terms of inputs, outputs, tasks, data fields, systems and tools to be utilised;
  • Ensuring data integrity so that decisions are based on reliable information;
  • Adopting a rating or scoring scheme to appraise IP options;
  • Providing graphical representation of findings to facilitate presentation to non-IP personnel; and
  • Creating an integrated process that includes other key business activities that impact on the IP department such as mergers and acquisition, risk mitigation, and IP exploitation.

"With these best practice measures in place, IP professionals have a solid foundation from which to develop their strategies and make informed decisions," added O'Connell.

About CPA Global

CPA Global is the world's top intellectual property (IP) management and IP software specialist, and a leading provider of legal services outsourcing (LSO).  With offices across Europe, the United States, and Asia Pacific, CPA Global supports many of the world's best known corporations and law firms with a range of IP and broader legal services, helping them to manage risk, cost and capacity, and realise greater value for their businesses and their IP assets. For more information, please visit:

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