An IP portfolio is one of the most valuable assets a business can have.  It needs to be managed in a way so that IP rights are not degraded or lost, that the rights acquired are aligned with the direction of the business, and resources are not squandered.

Selecting the right individuals to manage IP rights is an important part of IP portfolio management. Various factors in addition to their core expertise should be considered, and this article explores some of these.

Managing large IP portfolios

Established organisations often have large and complicated IP portfolios which take considerable effort to manage. This role is usually assumed by an internal team or individual, sometimes in addition to their main role.  Support is usually provided by several IP attorneys external to the organisation, who work solely in their speciality fields in relation to the portfolio.  For example, the CTO may instruct a patent attorney to draft a patent specification, a trade mark attorney to file trade mark applications, and a commercial lawyer to draft a copyright licence.

Adding to the complexities of the portfolio itself, instructing multiple individuals across multiple organisations can add further complications and inefficiencies.

A new product often has multiple IP rights associated with it. Work on some aspects of IP can impact others, for example drawing up an offer for sale, or filing a design registration, may affect applying for patent protection.

If a project is put on hold, multiple parties need to be notified to avoid unnecessary expenditure, for example, delaying paying renewal fees, or delaying steps in the examination of an application.

Alternatively, a product may be launched into other markets.  If so, each IP specialist for each set of rights will need to know this and coordinate with the other specialists to make sure that appropriate coverage is obtained.

IP portfolio managers

These complications can be eased by instructing an experienced IP portfolio manager as a single point-of-contact. The appropriate person is often an experienced IP strategist, and is usually a senior registered patent or trade mark attorney, who instinctively taps into the collective expertise within an IP firm.

The IP portfolio manager gains a deep understanding of the client and can liaise with specialist attorneys as needed in relation to the portfolio.  They understand the big picture from a business perspective and can translate the details relevant to individual IP rights.

Managing an IP portfolio well takes more than just remembering to meet certain deadlines. It requires relationship management, alignment, and integration with the businesses, along with management tools to streamline the process.

Although there are some fundamental pillars in IP portfolio management, a successful approach is one that tailors the service to the client and considers more than just the IP itself. From taking the time to know a client well, the portfolio manager can then carefully select the IP experts with the skills that match the needs of the business.

A portfolio manager may not necessarily be the person that performs the IP work for a client, and the primary contact on the client side is not necessarily the one directly involved in IP creation.

Relationship factors

The overriding factor when designing the approach to managing a client’s IP portfolio is to ensure that the team involved has the requisite legal and technical expertise suitable for the work. However, other factors should also be considered, and four examples are given here based on my experience in managing the portfolios of diverse clients.

• Risk level

A client’s appetite for risk impacts on the options it is willing to explore and the decisions it will make. The degree of risk taking may be driven by several factors, including the risk appetite of shareholders. In my experience, privately owned companies tend to be bolder, and public organisations (such as research organisations, government, or industry groups) tend to be more risk averse.

Bolder companies are often focussed on speed-to-market; they tend to prefer agility over an approach that mitigates all risk. They may favour a portfolio manager who is able to offer creative options to meet these aims, whilst ensuring the level of risk is acceptable. The portfolio manager will also be able to supply professional guidance in such a way that the client understands that the advice given is enabling rather than obstructive. Often, advice is needed at short notice, and is given at a high level with the risks of doing so duly noted.

More risk averse entities are often accountable to a larger number of shareholders and stakeholders. This requires them to show that due process has been followed in a thorough and methodical manner. They may favour working with a portfolio manager with a measured personality and who is good at meticulously examining all the information before supplying prudent advice.  The pace may be slower, but the comfort level higher.

• Access

Communication lines and the level of access a portfolio manager has to the team within an organisation can affect the effectiveness of information and decision making.

It is well accepted by IP strategists that IP considerations should be part of the top tier of organisations. Since 2007, IAM magazine has advocated for the role of Chief Intellectual Property Officer (CIPO) as part of an organisation’s C-suite.

If the portfolio manager has access to the C-suite, then often good intel is available – making it easier for them to provide strategic IP advice aligned with the client’s business. Therefore, the best match should have extensive experience, may be in a position of seniority, and understands key business drivers.

If access within the organisation is at a less-senior level, the portfolio manager’s role may be less strategic. In this situation, a less experienced attorney may be well suited to being the main relationship manager. However, this arm’s-length distance from the C-suite can lead to disconnect between the IP and business strategies. To counter this, it is important to have occasional, more senior level catch-ups between leadership teams on each side of the primary relationship.

• IP culture and education

The development and protection of valuable IP and the effectiveness of those rights depends upon the IP culture within a business. Management of a client’s IP portfolio should include assisting in the development of an IP culture appropriate to the client organisation.

IP culture varies across organisational types and their evolutionary stage.

Start-ups often have a strong IP culture, as the value of their IP is the main driver of their business, and they need to capitalise on it to attract investment for the next stage. The culture can be developed further by educating start-ups on how to develop and showcase their IP in such a way that investors see its relevance to the growth of the start-up.

Some research organisations and industry cooperatives are less focussed on IP and, in a few cases, IP and its associated commercialisation may be seen as being against the founding principles of these organisations. Often the development of IP culture includes education on the identification and value of the IP they are developing, along with how handling that IP correctly can help the organisation reach its aims.

It needs to be noted that, whilst IP protections (such as patents) are mostly used for commercial purposes, they can also be licensed (even royalty free) to selected licensees who will use the rights for specified altruistic purposes.

Established commercial organisations can have their IP culture enhanced by encouraging the development of commercially valuable IP, and enabling those contributions to be communicated to the right parties. Often, innovators do not recognise how clever they are, and promising ideas can be lost before they can be capitalised upon. Refresher courses in identifying valuable IP can help, and a portfolio manager is often able to provide these.

• Industry and market

Every industry has different quirks, and the portfolio manager should understand both the technology and the market. Understanding the technology is particularly important for research organisations, and knowing the market is particularly important for commercial organisations.

Realistically, the portfolio manager may not have the requisite knowledge at the start of the client relationship. In that situation, the portfolio manager should be upfront about their need to learn, and should spend time with the organisation learning from R&D and marketing. This establishes and deepens bonds, adding to the health of the relationship.

As outlined above, the portfolio manager may not always be the attorney doing all the required IP work. Instead, this work may be done by others, namely those attorneys with a deeper understanding of the technology or branding issues. It is up to the portfolio manager to understand the organisation, market, and technology enough to know what resources from within their firm will provide exactly what the client needs.

Why does the human touch matter?

It is well understood that IP contributes significantly to the value of a business, and therefore the portfolio manager could be handling the largest asset of the business. To engender trust and demonstrate the relevance of their recommendations to an organisation, the portfolio manager first needs to look at the human touch, before diving into the mechanics of IP management.