Introduction to Services
In addition to legal services and strategic advice related to IP issues, I also offer consulting services to help organizations build internal expertise and systems that help them better manage and exploit potential IP rights, as well as manage risk.
NOT SURE IF YOU NEED CONSULTING SERVICES TO HELP YOUR ORGANIZATION MANAGE IP?
TAKE MY LITMUS TESTS.
Technical managers and senior executives chartered with asset management and creating shareholder value should take these litmus tests to determine if their organization are missing opportunities to identify, protect and exploit valuable rights, or jeopardizing intellectual property rights even before management has the opportunity to make strategic decisions.
An IP audit looks at both existing assets and practices used to identify and manage intellectual property. Involving both the technical and marketing functions in the audit process establishes a foundation to develop an IP strategy that is aligned with the overall business objectives, taking into account business competition and disruptive technology.
Consulting Services and Benefits
The objective of my consulting services is to improve your organizations competancy in managing its intellectual property, empowering individuals to deploy their skills collectively to build a valuable portfolio in a cost effective manner.
An IP Strategy starts with the approach of the SWOT model; strengths, weaknesses, opportunities and threats. However, unlike a market driven assessment the IP strategy must take into account the leverage patent, trade secret, copyright and trademark protection can provide in your industry, on a world wide basis. As Intellectual Property rights can provide a shield as well as a sword, a quantitative assessment of the patent portfolios of actual and potential competitors can identify critical gaps to be closed. Working with your technical and market experts, we can provide this analysis using a variety of patent database mining and analysis techniques, as well as benchmarking metrics that are industry specific. Ultimately, tangible objectives are defined, and communicated throughout the organization.
IP Management System
The best intellectual property strategy is irrelevant unless the organization has a system to identify and manage resources and assets in accordance with the strategy. We have developed a system that brings information and input from the business/market, technical and finance functions together on a regular basis so that intellectual property counsel can provide meaningful legal advice to help executives make informed business decisions in a timely manner. Corporations with extensive patent portfolios are likely to benefit by cutting costs, by limiting investment in protecting unproductive assets, yet position themselves to exploit future opportunities that would otherwise be lost.
IP Litmus Tests
- A key technical employee is going to a competitor and HR can’t explain what his trade secret obligations are
- You don’t have IP metrics for R & D management performance
- Marketing picks trademarks based on their own search of the Patent and Trademark Records
- Marketing interacts with an attorney for trademarks, but doesn’t know the patent attorney
- Engineers that work with customers don’t know the difference between a non-disclosure, engineering sample (or material transfer agreement) and a joint development agreement
- You have a patent committee whose members are mostly engineers and scientists, spend considerable time arguing over what is patentable, or is primarily focused on cost control
Ultimately, training is necessary to enable individuals to appreciate and act in accordance with a new IP strategy. Many organizations pass up opportunities to secure valuable intellectual rights because scientists and engineers are overly critical of their contributons, believing them to be unpatentable, despite the time, effort and business value. Communicating a business focused IP strategy and providing incentives for patent disclosures creates a receptive audience; ready to unlearn old paradigms and myths about patents and trade secrets.
Having found that customizing training materials to the clients technology provides the best learning experience, Edward Sherman has developed a parallel training approach for marketing personnel, technical managers and executives. Potential clients are invited to sample the curriculum through internet based training currently being offered by the Society for Plastics Engineers:
March 6, 2003
Part 1 – Intellectual Property Principles for Product Development Personnel in the Plastics Industry
April 17, 2003
Part 2 – Understanding and Protecting Intellectual Property for Managers and Executives in the Plastics Industry