Updated: Nov 30, 2019
I was sitting in a Cafe in Boston with Jed, having breakfast. A friendly waitress approached to take our order for drinks.
"What would you like to drink?"
"Can I please have an Americano?", asked Jed.
"We don't have it. What is it?"
Rather amusing. There is no Americano in America?! Well, Americano in America is just called a black coffee. The Italians call it Americano because that's how they have it in America, but they forgot to let the originators know.
IP strategy sometimes actually reminds that conversation:
"Do you have an IP strategy?"
"We don't have it, what is it?"
Companies have IP, but few have a clear IP strategy, and those who do have one - mean different things.
We are helping companies with IP strategy quite a lot, and here is what we typically look at when we are putting one together.
First, we start with #ipreview, which includes the following aspects:
- Mapping : finding out which IP assets the company already has and understanding what the company's filing strategy is.
- Formalities : checking that all the paperwork is in good order, employment and consultancy agreements have all the right language, assignments were filed, etc.
- Operations : understanding how the IP is managed, what is done internally, what is done externally, and how does in-house interact with outside counsel.
- Tech : what software does the company use.
*** Clue: excel is a common but a bad answer ;)
- Competition : what IP do competitors have? Is it tracked?
- Budget : how much is the company spending?
Once the review is completed, the next step is having a conversation with the company about its objectives and what it wants to achieve.
We try to understand together which markets are strategic for the company and why, which IP protection should be accelerated and why, which competitors are a threat and why, etc.
We then produce a Strategy report, which typically includes the following chapters:
- Existing IP assets
- Defensive IP strategy, including filing strategy
- Offensive IP strategy and Competition monitoring
- Operations & Tech
- Staff training
- Targets and outcomes
Hopefully you will find this to be a useful outline!