When Is the Right Time to Review the IP Portfolio?

Green TreeWhen it comes to managing the innovation and intellectual property (IP) portfolio, technology transfer offices need to be able to see the forest and the trees. TTOs have to evaluate each innovation individually, but they also need to consider its strategic value relative to other IP in the portfolio. Therefore, periodically examining the technologies as a collective — whether it is the entire IP portfolio or just a specific selection of innovations — should be part of the TTO’s itinerary.

Of course, “periodically” has two meanings: (1) at regular intervals of time and (2) from time to time. So when is the right time to do a whole/partial IP portfolio review? Here’s my advice.

1. The Dreaded Backlog

One of our first jobs when Fuentek was founded 14 years ago was to process a university client’s backlog of more than 700 patents and invention disclosures. This was the first, very big step in a very successful effort to transform that office.

We have since released a white paper that gives several examples of the value that can be achieved when processing a backlogged IP portfolio. (Actually, I’ve blogged about this too.)

Of course, once the backlog is eliminated and invention disclosure processing occurs on an ongoing basis, review of the IP portfolio still is needed. Consider this…

2. Rebalancing Assets

Just like an investment adviser rebalances your financial portfolio to maintain your asset allocation as the value changes over time, TTOs do the same thing with their IP portfolio.

Ideally, you are avoiding a backlog. But this can lead to a potential blind spot — that is, opportunities to gather technologies into a cohesive suite or sub-portfolio. Grouping related technologies together enables more efficient marketing and could generate more interest from a potential R&D partner or licensee.

Keep in mind that these types of reviews should cross the “artificial” divisions of their assigned Technology Managers. We have seen several situations where inventions that had synergies were assigned to multiple Tech Managers.

3. The Destination Has Changed

The TTO reorg (or reboot or transformation or whatever you call it) has been in the news often in the last year. For some TTOs, the “Higher Ups” changing to new goals is a regular occurrence. (When’s the next election? ) But the reason for or frequency of the changes are beside the point.

When the larger organization (university, government agency, etc.) refocuses what it wants to achieve with its IP, it is wise to take a step back to consider how current plans for the IP portfolio should be changed.

Perhaps innovations previously considered low priority now are ideal candidates for achieving a new goal or metric (e.g., launching startups, supporting local/regional industries). And vice versa. The point is: When the organizational landscape has changed, take a look at the IP portfolio to see how it overlaps with that new landscape, and shift plans accordingly. (See this post for more advice about how to successfully reboot a tech transfer office.)

4. Welcome Aboard

Whether you’re a new director of the office or you’ve taken on a new section of the IP portfolio, reviewing all of what you have helps you get a handle on what you’re responsible for and how those innovations compare to what’s already out there. The results of this analysis outline your next steps going forward in this new job.

For example, we had a client who felt that a particular technology area may have been overlooked (or under-managed?) in the past and now wasn’t sure what to do with it. Since that part of the portfolio was substantial, we recommended the cost-efficient approach of reviewing only a section of it. So we bit off a chunk containing an appropriate number of technologies to analyze whether the past strategy (or lack thereof) was still appropriate or what the new approach should be.

5. The Cat Came Back

One of our university clients had a technology come back to the TTO after the company realized it couldn’t do what it had planned when it licensed the innovation about 5 years earlier. This return created an opportunity to reexamine not only that technology but also about 30 related inventions that had been shelved when the original license had been executed.

When the TTO asked us to help identify where to go next, we reviewed that batch of technologies as its own portfolio. Our efforts found a few new market areas that future efforts could focus on to secure new licensee(s).

We also identified some patents whose maintenance fees should no longer be paid (either because the window into the market had closed or it had never really been strong to begin with). This freed up resources for the marketing efforts of the technologies with greater potential.

The lesson in this case: Scenarios and opportunities change over time, so review the IP portfolio to ensure your strategies are in line with the current environment. Note: How often you should review a particular section of the IP portfolio depends on how fast the target market moves.

6. Gotta Pay the Bills

Even if only one patent’s maintenance fee is due, it’s important to consider how that patent fits into the portfolio. Sometimes a single patent’s fee schedule might trigger a review of multiple technologies — particularly those disclosures that came into the TTO after that patent was put on the back burner.

The Gains to Be Had

In closing, I’d like to reiterate that reviewing the IP portfolio is not just about the cost savings associated with not patenting or releasing patented technologies that do not have commercial potential. Fuentek has found time and again that effective IP portfolio reviews identify:

  • Technologies where market interest looks promising and a strategic analysis is warranted to develop an effective marketing strategy
  • Technologies with medium-low potential now but that might have greater potential should technology development progress sufficiently in the relatively near future
  • Areas of research with significant market sector activity, warranting both marketing efforts for the current IP and continued research support leading to future IP
  • Technologies that can be packaged together to maximize their value to potential licensees and enhance the efficiency of marketing efforts

The goal is to complement the tech-by-tech analysis that is the trees and consider the strategic value of the whole IP portfolio forest. This is part of what we do at Fuentek. Contact us today to  learn more about how we can help your organization optimize your IP portfolio.

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Posted by Danielle McCulloch

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