Sustainable patent management in enterprises

Patents are increasingly important in the information and communication technology sector, prompting some of the leading players to develop innovative strategies to maximise their value

Stating that a company should create sustainable patents is synonymous with stating that it should harmonise its patents with its business. However, despite established principles and best practices, such harmonisation remains merely a concept for many enterprises. Turning the concept into a reality requires a thoughtfully designed system which takes account of the entire chain from business objectives to patent services to enterprise capabilities (required for running such services) to activities (required to achieve the objectives) to staff roles (ie, who performs the activities). It also calls for effective measurement parameters, so that objectives can be measured and monitored, as well as for a reliable way to assess the maturity of the patent initiative.

The rapid advancement of information and communication technology over the last two decades has made intellectual property core to organisational growth in this sector. An enterprise needs to bring managerial, legal and economic capabilities to its IP development in order to strengthen its business footprint. This means that it must not only promote a culture of invention and innovation, but also build the capabilities and services necessary to create a patent portfolio that synergises with its initiatives.

This involves the following challenges:

aligning inventions – and their economic leverage – with business initiatives;
obtaining technology landscaping insights and using them to focus and shape business initiatives;
creating a sustainable, consistent and high-quality invention pipeline; and
providing incentives and recognition for inventors.

This article presents a novel, efficient, scalable and sustainable approach which enterprises can use to design and implement their patent management systems (PMS) and thus ensure the effectiveness of their IP initiatives.

Key tenets of PMS

The approach starts with defining the enterprise services (ES) for patents required by the business initiatives and the enterprise capabilities (EC) required to run those services. The enterprise-level objectives for these are then defined and detailed to obtain the granular objectives for each (ECxES) pair at each maturity level (ML) of the IP initiative. The granular objectives thus obtained for each triplet (ECxESxML) are then implemented using a delivery model role, activity and measurement (RAM), which defines the activities to be performed, as well as the roles and skills necessary for them to be successfully carried out. This delivers the objective at a given maturity level for an (ECxES) pair. The defined, established, excel and pioneer (DEEP) maturity model defines the four maturity levels of enterprise capabilities required to deliver the enterprise services. DEEP is used to systematically mature enterprise capabilities and enterprise services for managing patents. The PMS comprises a rule-based assessment framework which assesses the patent management system’s maturity for enterprise capabilities or enterprise services at a business unit or enterprise level. A reporting module can be designed and configured to publish measures and data analysis results as required by the enterprise.

3Px3P strategy

The 3Px3P strategy is at the heart of the proposed PMS. It comprises a set of enterprise capabilities – promote, protect and profit (3Ps) – to deliver a set of enterprise services. The set of enterprise services comprises portfolio, process and programme (another 3Ps). Each of the enterprise service and enterprise capability pair is associated with an objective. An objective matrix of nine enterprise level objectives for three enterprise services run with the help of the three enterprise capabilities is referred to as a 3Px3P strategy and is illustrated in Table 1.

Table 1. 3Px3P strategy

Enterprise capabilities	Enterprise services
Enterprise capabilities	Portfolio	Process	Programme
Promote	Stratified inventions	Idea to invention disclosure to filing	Competency and incentives
Protect	Business-aligned clusters	Zero-litigation footprint	Landscaping and mining
Profit	Patent-led offerings	Investment to return on investment	Valuation and monetisation

In order to build and sustain long-term differentiation in the marketplace, enterprises must adopt a model-based approach to drive their patent initiatives. With this in mind, we have designed, developed and digitised a 3Px3P strategy-based model to manage patents in an enterprise.

Orchestrating a 3Px3P strategy

Every enterprise must build three classes of enterprise services: portfolio services, process services and programme services. The portfolio services are primarily the design services through which the enterprise strategises its patent initiatives for long-term sustainability. For every portfolio service, there is at least one process service which details the process of performing that portfolio service. Similarly, for every portfolio service, there is at least one programme service which ensures that the service is driven and institutionalised across the enterprise.

An enterprise must build certain enterprise capabilities in order to deliver enterprise services effectively. In the context of patent management, we have identified three classes of enterprise capabilities: promote capabilities, protect capabilities and profit capabilities. The promote capabilities identify the capabilities needed to make all relevant stakeholders interested in performing a set of services. The protect capabilities identify the capabilities which enable an enterprise to protect its patent assets and inventors. The profit capabilities identify the capabilities that need to be built into the enterprise to justify the economics of the patent management initiatives as per the business strategy.

The genesis of a 3Px3P strategy is the interaction of these classes of enterprise services and enterprise capabilities.

Executing a 3Px3P strategy using role activity measure (RAM) framework

To build capabilities and deliver services relating to patent management in an enterprise, one must identify the organisational roles for ownership and drive. The association of a pair of enterprise services and enterprise capabilities with an organisational role is a many-to-one relationship. The enterprise needs to identify a set of activities which must be carried out so that capabilities can be built and services delivered. Finally, an enterprise needs to identify a set of measures to measure the progress and achievement. The role activity measure (RAM) framework acts as a vehicle for executing a 3Px3P strategy.

Figure 1. Patent management system model

3Px3P strategy matures using DEEP framework

An enterprise needs to achieve higher capabilities and a higher quality of services in a systematic and planned manner. This requires a step-by-step approach to gradually mature the enterprise strategy and its execution. We have defined a four-stage DEEP maturity model, as illustrated in Figure 1.

Implementing PMS model

Deriving granular objectives

Table 1 provides objective mapping between enterprise services and enterprise capabilities – the former can be realised only through the latter.

Subsequent discussions and tables focus on further detailing the enterprise services. To begin, we need to detail the maturity level interpretation of each enterprise service – the portfolio, the process and the programme. Table 2 sets out maturity progression statements.

The objectives for each (ECxES) pair in Table 1 and each (ESxML) pair in Table 2 are combined to derive the granular objectives for each triplet (ECxESxML). The derivation of all the granular objectives in this manner is depicted in Tables 3(a), (b) and (c).

All the granular objectives thus derived for the 36 (ECxESxML) triplets in Table 3(a), (b) and (c) are listed in Table 4 for convenient viewing.

Table 2. Detailing maturity progression objectives for enterprise services

Enterprise services	Maturity progression
Enterprise services	Defined	Established	Excel	Pioneer
Portfolio	Enterprise defines and plans intellectual property aligned with business initiatives	Enterprise matures to build IP clusters around its business initiatives	IP clusters are packaged under products, services and processes	IP strategy is an integral part of an enterprise’s business strategy and plan
Process	IP policy, guidelines, processes and systems are defined and released	IP processes are automated through systems to facilitate IP promotion, protection and valuation	Measures are tracked for audit, compliance and optimisation	Matured processes leading to optimised idea-to-filing, zero litigation and higher return on investment
Programme	IP competency and incentive programmes are defined and executed	Enterprise performs IP mining and landscaping to support business initiatives	Enterprise performs standalone and cluster valuation of intellectual property and its monetisation	Matured IP programme running as a business unit with direct and joint profit and loss targets

Table 3(a). Derivation of granular-level (ECxESxML) objectives for promote capability

ECxES	ES x ML	ECxESxML
Promote x portfolio	Portfolio x defined	Promote x portfolio x defined
Stratified inventions	Enterprise defines and plans intellectual property aligned to business initiatives	Planning stratified intellectual property aligned to business initiatives
Promote x portfolio	Portfolio x established	Promote x portfolio x established
Stratified inventions	Enterprise matures to build IP clusters around its business initiatives	Creating IP clusters aligned to business initiatives
Promote x portfolio	Portfolio x excel	Promote x portfolio x excel
Stratified inventions	IP clusters are packaged under products, services and processes	Leveraging an IP portfolio through a business portfolio
Promote x portfolio	Portfolio x pioneer	Promote x portfolio x pioneer
Stratified inventions	IP strategy is an integral part of enterprise’s business strategy and plan	Optimising business results through an IP-led business strategy

Promote x process	Process x defined	Promote x process x defined
Idea to invention disclosure to filing	IP policy, guidelines, processes and systems are defined and released	Defining processes for business-aligned IP creation
Promote x process	Process x established	Promote x process x established
Idea to invention disclosure to filing	IP processes are automated through systems to facilitate IP promotion, protection and valuation	Executing processes for business-aligned IP creation
Promote x process	Process x excel	Promote x process x excel
Idea to invention disclosure to filing	Measures are tracked for audit, compliance and optimisation	Measurements, reporting and trend analysis for IP portfolio improvement
Promote x process	Process x pioneer	Promote x process x pioneer
Idea to invention disclosure to filing	Matured processes leading to optimised idea to filing, zero litigation and higher return on investment	Process-driven matured IP portfolio aligned to business initiatives

Promote x programme	Programme x defined	Promote x programme x defined
Competencies and incentives	IP competencies and incentive programmes are defined and executed	Competencies and incentives for promoting invention
Promote x programme	Programme x established	Promote x programme x established
Competencies and incentives	Enterprise performs IP mining and landscaping to support business initiatives	Competencies and incentives for promoting inventions in business-aligned clusters
Promote x programme	Programme x excel	Promote x programme x excel
Competencies and incentives	Enterprise performs standalone and cluster valuation of intellectual property and its monetisation	Competencies and incentives for IP valuation and realisation
Promote x programme	Programme x pioneer	Promote x programme x pioneer
Competencies and incentives	Matured IP programme running as a business unit with direct and joint profit and loss targets	Competencies and incentives for integrating intellectual property with business strategy

Table 3(b). Derivation of granular-level (ECxESxML) objectives for protect capability

ECxES	ESxML	ECxESxML
Protect x portfolio	Portfolio x defined	Protect x portfolio x defined
Business-aligned clusters	Enterprise defines and plans intellectual property aligned to business initiatives	Protection plan for stratified intellectual property aligned with business initiatives
Protect x portfolio	Portfolio x established	Protect x portfolio x established
Business-aligned clusters	Enterprise matures to build IP clusters around its business initiatives	Practising protection for IP clusters aligned to business initiatives
Protect x portfolio	Portfolio x excel	Protect x portfolio x excel
Business-aligned clusters	IP clusters are packaged under products, services and processes	Protecting IP-led products, services and processes
Protect x portfolio	Portfolio x pioneer	Protect x portfolio x pioneer
Business-aligned clusters	IP strategy is an integral part of enterprise’s business strategy and plan	Advisory on protection strategy supporting business strategy

Protect x process	Process x defined	Protect x process x defined
Zero-litigation footprint	IP policy, guidelines, processes and systems are defined and released	Defining processes for zero-litigation footprint
Protect x process	Process x established	Protect x process x established
Zero-litigation footprint	IP processes automated through systems to facilitate IP promotion, protection and valuation	Executing processes for zero-litigation footprint
Protect x process	Process x excel	Protect x process x excel
Zero-litigation footprint	Measures are tracked for audit, compliance and optimisation	Measurements, reporting and trend analysis on zero-litigation footprint
Protect x process	Process x pioneer	Protect x process x pioneer
Zero-litigation footprint	Matured processes leading to optimised idea to filing, zero litigation and higher return on investment	Matured and predictable IP processes which minimise litigation

Protect x programme	Programme x defined	Protect x programme x defined
Landscaping and mining	IP competency and incentive programme defined and under execution	Landscaping and mining on intellectual property related to business initiative
Protect x programme	Programme x established	Protect x programme x established
Landscaping and mining	Enterprise performs IP mining and landscaping to support business initiatives	Building fencing capabilities with initiative-aligned IP clusters
Protect x programme	Programme x excel	Protect x programme x excel
Landscaping and mining	Enterprise performs standalone and cluster valuations of intellectual property and its monetisation	Factoring landscaping and mining input into valuation of intellectual property and IP clusters to optimise valuation
Protect x programme	Programme x pioneer	Protect x programme x pioneer
Landscaping and mining	Matured IP programme running as a business unit with direct and joint profit and loss targets	Landscaping and mining as key differentiators for business-driven IP programme

Table 3(c). Derivation of granular-level (ECxESxML) objectives for profit capability

ECxES	ESxML	ECxESxML
Profit x portfolio	Portfolio x defined	Profit x portfolio x defined
Patent-led offerings	Enterprise defines and plans intellectual property aligned to business initiatives	Aligning stratified intellectual property to offerings
Profit x portfolio	Portfolio x established	Profit x portfolio x established
Patent-led offerings	Enterprise matures to build IP clusters around its business initiatives	Aligning IP clusters to offerings
Profit x portfolio	Portfolio x excel	Profit x portfolio x excel
Patent-led offerings	IP clusters are packaged under products, services and processes	Realising differentiated economic value through patent-led offerings
Profit x portfolio	Portfolio x pioneer	Profit x portfolio x pioneer
Patent-led offerings	IP strategy is an integral part of enterprise’s business strategy and plan	Optimising economic value through IP-led business strategy

Profit x process	Process x defined	Profit x process x defined
Investment to return on investment	IP policy, guidelines, processes and system are defined and released	Investment to return-on-investment process defined
Profit x process	Process x established	Profit x process x established
Investment to return on investment	IP processes are automated through systems to facilitate IP promotion, protection and valuation	Investment to return-on-investment process adopted
Profit x process	Process x excel	Profit x process x excel
Investment to return on investment	Measures are tracked for audit, compliance and optimisation	Measurements, reporting and trend analysis on investment and return on investment
Profit x process	Process x pioneer	Profit x process x pioneer
Investment to return on investment	Matured processes leading to optimised idea to filing, zero litigation and higher return on investment	Optimising the investment and return on investment throughout the investment to return-on-investment process cycle

Profit x programme	Programme x defined	Profit x programme x defined
Valuation and monetisation	IP competency and incentive programme are defined and executed	Competency and incentive plan for effective valuation and monetisation of intellectual property
Profit x programme	Programme x established	Profit x programme x established
Valuation and monetisation	Enterprise performs IP mining and landscaping to support business initiatives	Lift in valuation and monetisation through landscape analysis and IP mining
Profit x programme	Programme x excel	Profit x programme x excel
Valuation and monetisation	Enterprise performs standalone and cluster valuations of intellectual property and its monetisation	Lift in valuation and monetisation through landscape analysis and IP mining with cluster-based strategy
Profit x programme	Programme x pioneer	Profit x programme x pioneer
Valuation and monetisation	Mature IP programme running as a business unit with direct and joint profit and loss targets	Lift in profit and loss which is attributed to IP-based business strategy

Table 4. Composite list of granular-level objectives for triplets (ECxESxML)

Capability x service x maturity	Objective
Promote x portfolio x defined	Planning stratified intellectual property aligned to business initiatives
Promote x portfolio x established	Practising IP cluster creation aligned to business initiatives
Promote x portfolio x excel	Leveraging IP portfolio through business portfolio
Promote x portfolio x pioneer	Optimising business results through IP-led business strategy
Promote x process x defined	Defining processes for business-aligned IP creation
Promote x process x established	Executing processes for business-aligned IP creation
Promote x process x excel	Measurements, reporting and trend analysis for IP portfolio improvement
Promote x process x pioneer	Process-driven matured IP portfolio aligned to business initiative
Promote x programme x defined	Competencies and incentives for promoting invention
Promote x programme x established	Competencies and incentives for promoting inventions in business-aligned clusters
Promote x programme x excel	Competencies and incentives for IP valuation and realisation
Promote x programme x pioneer	Competencies and incentives for integrating intellectual property with business strategy
Protect x portfolio x defined	Protection plan for stratified intellectual property aligned to business initiatives
Protect x portfolio x established	Practising protection for IP clusters aligned to business initiatives
Protect x portfolio x excel	Protecting IP-led products, services and processes
Protect x portfolio x pioneer	Advisory on protection strategy supporting business strategy
Protect x process x defined	Defining processes for zero-litigation footprint
Protect x process x established	Executing processes for zero-litigation footprint
Protect x process x excel	Measurements, reporting and trend analysis on zero-litigation footprint
Protect x process x pioneer	Mature and predictable IP processes which minimise litigation
Protect x programme x defined	Landscaping and mining on intellectual property related to business initiatives
Protect x programme x established	Building fencing capability with initiative-aligned IP clusters
Protect x programme x excel	Factoring landscaping and mining input into IP valuation and clustering intellectual property to optimise valuation
Protect x programme x pioneer	Landscaping and mining as key differentiators for a business-driven IP programme
Profit x portfolio x defined	Aligning stratified intellectual property with offerings
Profit x portfolio x established	Aligning clustered intellectual property with offerings
Profit x portfolio x excel	Realising differentiated economic value through patent-led offerings
Profit x portfolio x pioneer	Optimising economic value through IP-led business strategy
Profit x process x defined	Investment to return-on-investment process defined
Profit x process x established	Investment to return-on-investment process adopted
Profit x process x excel	Measurements, reporting and trend analysis on investment and return on investment
Profit x process x pioneer	Optimising the investment and return on investment throughout the investment to return-on-investment process cycle
Profit x programme x defined	Competency and incentive plan for effective valuation and monetisation of intellectual property
Profit x programme x established	Lift in valuation and monetisation through landscape analysis and IP mining
Profit x programme x excel	Lift in valuation and monetisation through landscape analysis and IP mining with cluster-based strategy
Profit x programme x pioneer	Lift in profit and loss which is attributed to IP-based business strategy

Activities, roles and measurements

A master list of activities which need to be executed to build capability and deliver services should be identified and detailed. The activities are functionally categorised as:

common activities (CA);
legal and compliance (LC);
search and analytics (SA); and
research and mining (RM).

‘Common activities’ include IP learning, IP protection, IP consulting, IP administration, IP processes, IP systems, IP policies and guidelines, marketing and branding, planning and execution, IP data and reports, process reviews and process alerts. Each categorised activity is tagged to an enterprise service, a functional category, a role profile and a measurement type.

The role profile is hierarchical and is based on functional expertise, experience level and domain expertise. The more experienced the person carrying out a particular role, the higher the maturity level. Each person carrying out a particular role must be competent and will also be expected to carry out common activities based on what an enterprise needs. Table 5 provides examples of hierarchical role profiles.

Table 5. Examples of hierarchical role profiles

Role level	Generic designation	Experience	Specific role designation (examples only)
Head	IP programme head	18+ years	IP programme head – new product initiative
Manager	Lead IP manager	15+ years	Lead IP manager – life sciences unit
Manager	IP manager	12+ years	IP manager – financial services unit
Consultant	Lead IP consultant	10+ years	Lead IP consultant – legal and compliance
Consultant	IP consultant	8+ years	IP consultant – research and mining
Analyst	Lead IP analyst	4+ years	Lead IP analyst – search and analytics
Analyst	IP analyst	1+ years	IP analyst – search and analytics

We have conceptualised and defined a set of metrics, as well as a list of measures associated with these and influencing dimensions for each one. This design provides deeper analytical insights for maturing enterprise capabilities and enterprise services through various technical features, which include drill-down, roll-up, drill-through and spotlights. Table 6 shows a dimensional model for these metrics and a list of associated measures.

Table 6. Examples of hierarchical role profiles

The services derived from enterprise services at each maturity progression are delivered through the RAM framework, meeting derivative objectives through role-based ownership, the list of activities to be performed and a set of measures to track progress. Table 7 illustrates the activities that need to be executed in order to fulfil the derivative objective of aligning intellectual property to an enterprise’s business initiatives.

Table 7. Examples of activities

List of activities	Category	Role
Training on patent search and analytics	SA	Analyst
Training on patent claims understanding and drafting	LC	Analyst
Basic training on landscape analysis and freedom to operate	RM	Consultant
Defining the IP need for each business initiative	CA	Head
Studying the enterprise’s intellectual property and mapping it against business initiatives	RM	Consultant
Studying the IP practices and IP assets of key players	RM	Consultant
Planning the desired IP clusters to strengthen business initiatives	CA	Manager
Initiating idea-to-filing processes for new IP creation	CA	Analyst
Initiating positioning of existing intellectual property which is mapped to business initiatives	CA	Consultant
Initiating a licensing-in and freedom-to-operate discussion	LC	Head
Measures – all of these activities contribute across all metric types defined under a dimensional model

Maturity assessment module

We also designed an assessment module that assesses the maturity of enterprise capabilities and enterprise services associated with a business unit or with the enterprise. Table 8 shows the colour code for a maturity level assessment of each ordered pair (ECxES). Red, amber and green indicate ‘objective not achieved’, ‘objective achieved’ and ‘objective strongly achieved’ respectively.

Table 8. Colour codes to indicate maturity level

Table 9 sets out the rules for overall assessment at each maturity level. An objective is treated as ‘not achieved’ if at least one cell in this or a previous maturity level is red. An objective is treated as ‘achieved’ if no cell in this or a previous maturity level is red. The objective is treated as ‘strongly achieved’ if all cells in this and previous maturity levels are green.

Table 9. Rules for overall assessment at each maturity level

Table 10 depicts a representative assessment dashboard of a business unit ‘XYZ’.

Table 10. Representative assessment dashboard of business unit XYZ

PMS development

A PMS deploying a 3Px3P strategy using the model-based approach presented here can be implemented for an enterprise.

A brief discussion of each module in the meta view of the PMS – illustrated in Figure 2 – is set out below.

Figure 2. Metaview of the patent management system with various modules

User privilege module

This module provides online information on user types, profiles for each user type and access privileges. The system is accessible by employees of an enterprise, as well as by its legal partners. General access to the site is as a visitor, validated through employee ID or partner ID. User types for this system are:

IP legal partner;
employee;
inventor,
IP analyst;
IP consultant;
IP manager;
IP programme head; and
senior management.

In addition, there should be a system administrator.

Feature description module

This module provides information relating to the PMS. The access to information is based on user access privilege.

Patent administration module

This module facilitates the digitisation of idea to invention disclosure to filing, filing to grant, litigation management, expense management, competency management, incentive management and attorney interaction management.

Patent portfolio module

This module provides a workflow for patent profiling that comprises business initiative alignment, landscaping analysis, cluster formation, traces with offerings and mapping to business planning.

Patent valuation module

This module performs the patent valuation based on input from portfolio modules, analyses scenarios for value optimisation, tracks monetisation and analyses the valuation-to-monetisation gap.

Report module

This module publishes all dashboards, reports and trends based on the measures listed under Table 6. All dashboards and reports under this module are canned.

Assessment module

This module provides a rule-based workflow for assessing the maturity of patent management specific to a business unit or for a whole enterprise. The assessment dashboard is published through the report module.

System administration module

This module comprises the standard administration activities and publishes system administration related reports.

Action plan

Designing and developing a good patent management system is key to de-risking an enterprise’s business. An enterprise must therefore strategise creation, protection and usage of its inventions in a sustainable manner:

The first step towards building a PMS is to systematically define the nine IP objectives according to the enterprise business initiatives and the 3Px3P strategy.
Envisage four levels of maturity progression (as in the defined, established, excel and pioneer maturity model) for the enterprise’s patent initiative. The IP objectives derived for each enterprise service should be detailed along with each of the maturity progressions, as per the maturity model. Such detailing should lead to the derivation of the 36 granular objectives.
Find roles, activities, skills and measurements for each of the granular objectives as per the role activity measure delivery model.
Finally, design various modules of PMS as discussed and implement them.

The core model-based PMS development must be supported with efficient invention mining, portfolio, valuation, administration and reporting functionalities which are not detailed in this article.

Such model-based development of PMS has proved robust in scaling up patent initiatives and managing them efficiently.

Santosh K Mohanty is vice president and Akhilesh C Srivastava leads IP deployment and support for corporate R&D at Tata Consultancy Services, Mumbai, India