Once the IP plan has been identified, a management team including business, technology and legal expertease should review the business objectives, review and discuss the plan, and pressure test the plan against identified opportunities and challenges that the intellectual property will present to achieving those objectives. Being dynamic, the plan will be consistently and constantly assessed, revised, and reassesed as new objectives are identified, new opportunities are presented or new challenges arise.
A coherent IP strategy will include IP landscaping to identify and analyze existing IP rights and players in the relevant technology space. The white space opportunities will be identified during the landscaping process, allowing for an evaluation of the coherence between the IP plan and the white space analysis. With the landscape defined, IP forecasting may be undertaken to predict, based upon a third party’s prior IP behavior, what are the likely IP protection pathways a third party will be pursuing with their IP portfolio. Additionally, licensing and collaborative research and development opportunities may be undertaken, “blue sky” evaluation for next generation products and/or superseding technology and opportunities for developing IP in those areas, freedom-to-operate issues relevant to the pre-commercial products under development to minimize the risk of material liability in litigation should be undertaken and processes for dynamic and real time IP tracking within the technology space, may be implemented.
In patent landscaping, issued patents and published patent applications relevant to the inquiry are identified and analyzed. The nature, breadth and quality of those issued patents is assessed, as is the likelihood of pending patent applications issuing and the anticipated nature, breadth and quality of a patent issuing from the pending application is forecast. Where relevant to the business objectives, both domestic and foreign patents and patent applications are examined as part of the landscape analysis.
A coherent IP strategy will address the at least the following factors:
- Identify and define the nature and extent of existing patent coverage;
- Evaluate and define the relative strength or weakness of the existing patent coverage within the technology space;
- Identify competitor patent coverage and understand how it is evolving in real time;
- Identify white space within the relevant technology area where there is insubstantial patenting activity and determine whether occupying that white space is consistent with your business objectives;
- Identify and explore licensing opportunities;
- Identify and explore collaborative research or development agreements with potential partners;
- Undertake “blue sky” evaluations for next generation products and/or superceding technology and opportunities for developing IP in those areas;
- Identify and evaluate freedom-to-operate issues relevant to the pre-commercial products under development to minimize the risk of material liability in litigation; and
- Maintain processes for dynamic and real time IP tracking within the technology space.
With this intelligence fully in mind, the management team will have sufficient and actionable information upon which it can deploy the IP strategy to achieve the identified business objectives for the intellectual property.