In the world of intellectual property, attempts to save
money in the short term can lead to serious long-term
losses. Smart IP managers will look instead to simple
measures that focus resources where they are really
needed, protecting valuable assets that are crucial to
the company’s current and future success. Thoughtful,
targeted spending using the strategies outlined below
might save a lot more money than false economies
ever can.
Effective and efficient invention disclosure
reports: Disclosure reports should be clear and com-
prehensive, including all needed drawings, descrip-
tions and models. Careful preparation by the inventor
helps ensure efficient processing of the report by the
drafting attorney, thereby minimizing costs.
Abandoning non-performing patents: The rel-
evance and rates of return of each asset should be
assessed to see if it is still needed. Some companies
are hesitant to abandon an unneeded patent for fear
that it is later found necessary to protect an impor-
tant product or technology. If so, a thorough and
blame-free identification process can be established,
whereby patents identified as unneeded are reviewed
and signed off by the legal, technical and business
groups within the company before being abandoned.
Jurisdiction-specific maintenance of IP: While the
protection of a patent or a trademark may have made
sense at the time of filing in a particular jurisdiction, it
need only be maintained there as it continues to return
value to the company. Using objective standards to
eliminate unnecessary coverage reduces maintenance
fees.
Making only the claims that are really needed:
During patent prosecution, attorneys usually include
claims with the broadest possible scope. However,
claims are often very difficult and expensive to procure
as well as unnecessary to achieve the company’s busi-
ness goals. A more cost-effective approach is to focus
on narrow claims that specifically cover the company’s
technology and its most important applications.
Using trade secrecy: A novel cost-saving meth-
odology has recently become more common: divid-
ing inventions into various parts and filing only one
of these as a patent, while keeping the others as
trade secrets. Under this approach, follow-on inven-
tions may also be kept as trade secrets. However,
this method is advisable only if the company has a
sound secrecy programme in place, and is confident
that competitors will not be able to arrive at the same
invention independently.
Benefiting from IP office delays: The lengthy
processing delays at IP offices can be used to appli-
cants’ advantage: while the upfront drafting and filing
costs of patent or trademark applications cannot be
avoided, the significant costs incurred during prosecu-
tion can be deferred until the economy stabilizes.
Besides these strategies to reduce IP-related costs,
there are also opportunities to enhance the value of an
IP portfolio:
Licensing strategies: These are now widely accepted
as key instruments for achieving corporate goals. Once
it is determined where licensing fits best into a compa-
ny’s overall business strategies, a licensing programme
can be developed to meet the identified aims.
Acquiring cut-price IP: The current economic envi-
ronment offers opportunities to acquire IP at favour-
able prices: cash-strapped investors, and small or
start-up companies that have lost funding, may well
be ready to sell IP reduced rates. It is important to
identify what the purchaser really needs, and to use an
effective valuation process before commencing with
negotiations over prospective purchases.
Audit existing IP agreements: A second look at a
company’s existing assets may reveal valuable back-
royalties that are owed and ready to be collected.
Many companies fail to carry out adequate accounting
of their various IP agreements, often because they are
hidden away in various internal factions of the com-
pany, making them difficult to track.
The cost of IP protection is a small but vital part of
a company’s total R&D investment; registering brands
and trademarks is the easiest and cheapest way for a
company to safeguard the whole process. Although
financial managers are now placing unrelenting pres-
sure on IP professionals to contain or reduce costs,
protection of assets is vital to assure long-term busi-
ness goals. The best answer to the dilemma lies in
auditing, assessing and streamlining IP portfolios.