The keys to successful IP asset management

15 Feb 2006 | News | Update from University of Warwick
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It is one thing to recognise the need to manage intellectual property like any other strategic resource. But it is quite another to install the systems and devise the processes for doing it.

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It is one thing to recognise the need to manage intellectual property like any other strategic resource. But it is quite another to install the systems and devise the processes for doing it.

Traditional approaches to handling IP have fragmented the process across departments and across disciplines, using disparate and labour intensive methods, and relying crude tools such as assorted spread sheets, records management systems and paper records.

The solution to the problem for Ford Motor Company and British American Tobacco (BAT) was to set up a $10 million joint venture – Anaqua – to develop software for automating IP management, from invention discovery through to licensing and royalty collection.

“The designers of Anaqua started with a blank sheet. They saw that IP was a fragmented application with eight to ten different functions, each with their own way of doing things,” says Paul DiGiammarino, Anaqua’s chief executive officer. “You have teams of people from lots of different disciplines – R&D, legal, risk management, business leaders, marketing, business partners.”

“Anaqua's designers realised they had to build a centralised application with associated analytical tools so companies could ensure they are investing in the right areas.”

While Ford has 15,000 active patents and files 1,000 new ones each year, BAT has a massive 100,000 active patents in its portfolio. But industry lore has it that between 5 and 8 per cent of an organisation's IP generate 70 per cent of its revenue. “You must be able to identify where that value is, and you can only do this if the data is integrated and departments collaborate with each other,” says DiGiammarino.

Applications shift

Integrated applications

Some suppliers of IP management software - the focus of Inteum’s application is technology transfer, and the company has 250-plus users involved in corporate and academic IP licensing activities. The system tracks all licensing transactions and agreements, and includes a module for tracking progress of patent applications at different patent office. European users include Strathclyde, Nottingham, Aston and Sussex universities in the UK. - perhaps best recognised as an IP services provider, the company offers outsourced patent management, trademark renewals and brand management services. Its software application DIAM-XE is a web services-based application providing the ability to link in legacy systems, along with end users across the enterprise, and outside clients and partners. - Computer Patents Annuities Ltd is a partnership set up by patent attorneys from different law firms, initially to provide patent and trademark management services. The firm also sells two software packages, CPA inprotech for IP attorney firms and CPA memotech for corporate users. - the main product Petros, described as a virtual patent attorney, was developed around experience in data management projects for pharmaceutical and biotechnology companies. As well as recognising the huge volume of data that can be generated around a single patent, the system also addresses questions such as IP costs versus investment in R&D. Petros’s roots are reflected in the user base, which includes Serono, Centocor and Teva. There are university users in UTEkip’s home market of Israel also. - the company claims its IAM (Intellectual Asset Management) application accelerates all aspects of IP asset management from the initial cataloguing and classification of an idea that might become an invention, to final decisions on how to dispose of it at the end of the life cycle. The overall aim is to enable users to align tactical decisions with corporate strategy. The software consists of a number of modules, allowing for a gradual implementation rather than a big bang approach. - provides a patent portfolio management system for keeping track of case details, diary of upcoming actions, reports and simulations. It gives an overview of the process from innovation to patent. Users include companies in the telecommunications, biotechnology, pharmaceutical and medical equipment sectors. - the company’s product MyIP is tailored for technology transfer offices of universities and research institutions. Technology transfer staff can see the relationship between inventors, patents, licensing and spin-outs. MyIP users include the Wellcome Trust, and Cardiff, East Anglia and Newcastle universities. - the company’s product IP Portfolio is slanted towards the management of existing IP, focusing on the technology licensing process. At the core is workflow for tracking actions and notifying of key events. IP Portfolio has a browser interface allowing access from any computer, making it easy to link multiple offices together, work away from an office and directly involve third party such as collaborators and licensees. There is a built-in website that can be used for marketing IP. - KSS Tech Tracs is promoted as a productivity tool for all knowledge workers engaged in the technology communication process. The product’s remit runs from when a researcher is awarded funding, through invention reporting, IP protection and managing agreements. Tech Tracs was developed for use by NASA, and is used across the agency’s ten laboratories. Other clients include the US National Institutes of Health and Imperial College London. Although it is used mainly by universities and government research institutions, there are corporate customers. - the company’s product InfoOffice is targeted at research administration, including modules for managing grants and contracts and clinical trials. There is a technology transfer module also that tracks inventions, patents, key dates, expenses and royalties. - Anaqua IAM is a web-based application said to be suitable for large corporate users and for smaller users. At the core of the system is a database that can be accessed by inventors, law firms and external collaborators via a web browser. Internally the system can be linked to other corporate applications including enterprise resource planning systems. Anaqua also provides consultancy and benchmarking services.

The shift towards integrated applications for IP management began in the mid-1990s. There are now a number of suppliers, including Cognocys, CPA, UTEKip, Inteum, InfoOffice, Anaqua, Dennemeyer, Knowligent, KSS Tech, Easydatabase, and NetsPat. (see box, right)

Full IP asset management systems cover five areas: creation, portfolio management, realisation, licence compliance and recognition.

The creation or discovery phase concentrates on identifying IP assets - either from monitoring research and development activity or from acquiring relevant patents. Some applications that are tailored for academic users go one stage further back in the process, to the awarding of research grants.

Portfolio management supports the tracking and analysis of the IP inventory. Realisation covers the process of turning IP assets into commercial licences. And licence compliance provides tools for royalty collection and accounting.

Finally, recognition ties IP investment to its impact on business performance by identifying the benefits it brings. Indicators such as stock price improvements, increased access to R&D funding and production cost savings, can be factored in to enable companies to see the market value of their IP assets.

DiGiammarino says the emergence of integrated IP management systems is long overdue: “The more you look at it, the more you realise these valuable assets are being managed the same way as physical assets were 20 years ago.”

There is an increasing demand for integrated IP management tools, agrees Andrea Cook, marketing director at Dennemeyer. “We specialise in technology to manage licences and contract interactions for Fortune 500 companies, and have seen a growing requirement for higher levels of sophistication in IP management. The market is moving fast and full of innovation.”

Dennemeyer's integrated DIAMS-XE application supports the IP life cycle from planning through to market, enabling users across a company to participate and contribute to the IP process. It also makes it possible to collaborate with external partners.

While the Anaqua and Dennemeyer systems are aimed at corporate users, the UK company Easy Database system MyIP is tailored to public sector research. Jeremy Kirkpatrick, managing director says, “Universities and research institutions want a one-stop shop to handle their IP management. We have concentrated on ease of use and have put in workflow processing to help in collaboration and project tracking.”

The system can track attributes including technology-readiness level and time to market, allowing organisations to review the status of their IP portfolios instantly.

Many of the applications on the market solve the problem of making information available to staff in different disciplines and departments by setting up a central repository of IP data, and providing access via web browsers.

Two-edged sword

Meanwhile, the Internet has become a double-edged sword in the world of IP management. On one hand it facilitates infringements such as music piracy, misappropriation of domain names and copyright theft, on the other, the web is awash with IP management tools and services.

Source code 'probes' can prowl the web tracking down unlicensed software usage, while web-hosted contract management and payment collection services can help companies exploit IP portfolios more effectively. According to market research company Research and Consultancy Outsourcing Services the worldwide demand for digital rights management software alone is expected to touch a peak of $3.6 billion by 2008.

Harry Gwinnell, vice president and chief IP counsel at US law firm Cargill, accepts that software tools are useful, but cautions companies to look beyond automated methods for handling and processing IP. “You need to encourage a culture where IP is seen as a central issue and a key wealth generator.”

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