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

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

 

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

IP manager

12+ years

IP manager – financial services unit

Consultant

Lead IP consultant

10+ years

Lead IP consultant – legal and compliance

IP consultant

8+ years

IP consultant – research and mining

Analyst

Lead IP analyst

4+ years

Lead IP analyst – search and analytics

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

Get unlimited access to all IAM content