Making intellectual property work for business - World Intellectual ...

Setting up IP services | Providing consultancy services
Patent and trademark
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38 Making intellectual property work for business
and checklists designed to allow companies to make an initial appraisal of their IP assets.
In most cases, the format is a self-scoring questionnaire, which may provide the option
of using a consultant to assist with the process. Online diagnostic services assist companies
in identifying which types of IP assets are most important for them at present and for
the future. The online method also indicates where gaps in IP assets management may
exist and where the company should dedicate most management effort.
One-to-one diagnosis
In one-to-one diagnostic services, an experienced IP professional provides personalized
consulting to a particular company. The IP professional introduces the company to
the concept of IP and the different tools of IP protection and discusses the company’s
situation in order to identify its IP needs, wants and expectations. In this situation, the
IP expert may make an initial assessment of the value of the company’s IP assets
and advise on how to design an IP strategy for the specific company. The final report
outlines the different options for the company to protect and use its IP. A standardized
guidebook is usually designed and tested for this purpose.
Patent portfolio analysis
The management of patents is closely related with a company’s profits. Therefore, the
company’s patent portfolio is increasingly regarded as a major interest for strategic
business development decisions. SMEs in particular are mostly unable to analyse their
patent portfolio within a reasonable time and budget. Some business membership
organizations have developed tools to help companies conduct this analysis.
Patent or trademark research services provide various benefits, ranging from avoiding
duplication and obtaining valuable technological information, to stimulating R&D and
preventing the commission of IPR infringement. Finally, patent and trademark research
avoids the inefficient use of time and company resources.
Patent research provides a comprehensive overview of a technological area and
information on patented technologies within that area. Innovative companies unaware
of the IP system may invest in reinventing the wheel trying to develop “new” products
and services that have already been invented and protected by others. Thus, an active
use of the technological information contained in patent documents could save companies
time and resources, and enable them to be at the cutting edge of innovation in
their technical field and to start research at a higher level.
Patent information can also facilitate the following: 19
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Gaining technical information;
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Determining whether an invention is patentable;
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Positioning competitively within the market;
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Monitoring for patent infringement;
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Finding new areas to get into/ and opportunities for licensing-in;
■■“Inventing
around” other patents;
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Obtaining costing/pricing intelligence, where information on production and/or
operating costs can be derived from the patent filings;
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Solving problems;
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Obtaining information about manufacturing processes;
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Improving the success rate; and
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Finding R&D and business partners.
19 Matthew Hall, Charles Oppenheim and Margaret Sheen, 2003.