Micheline Kelly Johnson

Micheline Kelly Johnson

Are your organisation's creative, strategy and legal functions integrated? If not, you may be missing market-critical opportunities to create or exploit fully the value of your intellectual property. Facilitate communication among your creatives, lawyers and business executives and you will counteract functional silos and better manage your IP assets. 

Integrating IP management and strategic planning at the outset maximises your options for gaining market advantage. The usual route of simply obtaining patent, copyright and trademark protection as a means of closing markets to others and thereby raising prices is not your only choice. In fact, assuming that suppressing competition is the best way to use IP rights can result in suboptimal long-term effects. A skilled IP attorney with both scientific and business skills or a consultant can help to set out your options, as explored below (for an in-depth exploration of these ideas see "Strategic Management of Intellectual Property: An Integrated Approach"William W Fisher III and Felix Oberholzer-Gee, California Management Review, Vol 55, No 4, Summer 2013).

The best way to manage intellectual property for your organisation depends on:

  • its overall strategy;
  • the competitive and regulatory context in which it operates; and
  • rapidly evolving global IP laws.

If you design products first and then look for ways to protect them, your options will be a limited subset of the choices that might have been available. Perhaps counterintuitively, at times even sharing the value of intellectual property can strategically be in your company's best interest.

IP holders using an integrated approach can choose among many options in order to maximise the value of their intellectual property, including:

  • exercising the market power gained through patents, trademarks, copyrights and trade secrets;
  • selling certain IP rights if they would be more valuable in the hands of a new owner;
  • licensing, which presents opportunities to increase capacity, increase demand, reduce inventing around and reinforce IP rights;
  • collaborating with competitors, customers or developers of complementary products or services; and
  • donating intellectual property to the public domain or otherwise in order to promote faster scientific progress and thereby:
    • make your company's marketing and sales capabilities more valuable;
    • reduce the risk of rival firms patenting research that is important to your company's efforts; or
    • signal your company's value to capital markets and potential employees.

However, cross-functional companies in a defensive IP posture can effectively evaluate other options, including:

  • asserting a legal privilege by challenging the validity of the IP right or defending the legality of IP use;
  • developing an alternative product, if practical in view of the strength of the competitor's IP right as well as the costs of inventing around and any mandatory regulatory compliance;
  • getting permission using patent pools, collecting societies, extended collective licensing or otherwise;
  • assembling a large patent portfolio to use offensively or in cross-licensing; or
  • quickly saturating a market with putatively infringing technology in a gamble for either favorable judicial resolution or licensing.

Collaboration among creators, managers and lawyers during the research, development and design phases allows a company to evaluate its principal choices systematically in order to maximise the value of novel technologies and products. Moreover, small changes in product design can significantly affect the available legal protection. Guidance from a skilled IP attorney or consultant conversant with the scientific, creative, legal and business frames of reference can set the process in motion to establish optimal performance and results.

For further information please contact:

Micheline Kelly Johnson
Baker Donelson
www.bakerdonelson.com
Email: mjohnson@bakerdonelson.com
Tel: +1 423 756 2010