Craig's Corner For Counsel: Thomson IPManagement Services

Saturday, August 1, 2009 - 00:00

A company's IP portfolio is among its most valuable assets, but tracking a wide range of patents, trademarks, licenses and conflicts can also cost the organization millions in litigation and lost opportunity if not managed properly. And, even in the current cost-cutting environment, corporations must continue to innovate, identify new revenue streams and create the foundation for long-term growth.

I recently discussed these seemingly conflicting issues and the risks involved with Adam Kenney, the product manager for Thomson IP Management Services, part of the IP Solutions business of Thomson Reuters.

Craig Miller : What are some of the biggest risks an organization faces around its intellectual property?

Adam Kenney : IP has become the primary asset of organizations today. Yet given the size and range of the typical portfolio, it can be difficult to manage. And missing just a single, critical date can lead to a devastating loss of rights. Even in our troubled economy, the need to continue to innovate is critical to future success of the organization. The inability to capitalize on new ideas - and the related R&D expenditures - can quickly ruin a company.

Craig Miller : What could cause organizations to lose their rights and how can an organization make sure that doesn't happen?

Adam Kenney : Companies may be juggling thousands or even tens of thousands of IP assets of varying importance and at varying stages of the IP lifecycle. Some of these assets are critical to their corporate strategy and others have licensing value. Further, each asset has its own globalization strategy, and each country will have different rules and due dates. A strong IP portfolio management solution is critical to tracking all of this information and responding in a timely manner so that rights are maintained.

The solution needs to include a current, accurate database of IP rules that helps the organization automatically calculate due dates and when they must take action, as well as pinpoint any data that was entered incorrectly - which could result in failure to take appropriate action.

Craig Miller : What kinds of risks are associated with the inability to capitalize on innovations, and how can those risks be mitigated?

Adam Kenney : It can take years to develop an idea, get it patented and develop a successful brand. Companies require a steady flow of ideas to ensure that they have a sufficient base for future success. Companies routinely invest millions of R&D dollars on a single idea before it ever makes it to market, and their ROI depends upon the continued protection of these assets.

Organizations with sizable R&D efforts also risk failing to identify and pursue valuable new ideas due to the sheer volume of activity in a large engineering team. Of course, there are also great opportunities for organizations that can effectively manage their innovation pipeline and focus their investments on the innovations and brands with the most commercial potential.

The right IP management solutions are integrated into the organization, highly configurable and can grow with the business. Likewise, they should provide strong IP collaboration tools with unmatched rules content and vital professional services, allowing clients to manage their innovation pipeline, ensure that critical dates are met, protect their existing IP assets and promote collaboration across the entire IP lifecycle. As corporations around the world work to drive growth through innovation, these services are vital.

Craig Miller is the newly appointed vice president of sales for Thomson IP Management Services, a Thomson Reuters business. After 44 editions of the Westlaw column, this will be his last. Thank you for your time and interest.

Adam Kenney is the product manager for Thomson IP Management Services, part of the IP Solutions business of Thomson Reuters. Adam has spent the last 20 years designing tailored collaboration solutions to support the IP industry.

Thomson IP Management Services helps IP Counsel and other individuals involved in all stages of the creation, management and enforcement of intellectual property to collaborate and work within a secure, common platform with Thomson IP Manager ® , an enterprise-level intellectual asset management solution. Thomson IP Management Services can be reached at (248) 352-5810.


For additional insight on patents, the following resources are also available on Westlaw:

Corporate Compliance Series: Intellectual Property (CORPC-IP)

Intellectual Property Law for Business Lawyers (IPLBL)

Intellectual Property in Commerce (IPCOMMERCE)

Intellectual Property Due Diligence in Corporate Transactions (IPDD)

Copyright Law in Business and Practice (COPYLBP)

Information Law (INFORLAW)

Westlaw Patents: In addition to U.S. Patents (US-PAT-ALL), Westlaw has Patent Family Trees showing complex relationships between patents. For example, go to US PAT 6976533 and click Patent Family Tree in the left frame. Also check out searchable U.S. Patent File Histories (US-PAT-HISTORY) and Markman Orders (MARKMAN-ORDERS).