Tuesday, December 2, 2008

Reacting to the Recession

For most companies, the official recognition of the U.S. recession by the National Bureau of Economic Research on December 1st was merely validation for what all understood was a definite, significant downturn in the economy. While certain industries bore the brunt of the initial slow down and have been impacted to a greater extent, by now all companies are taking measures to help them navigate this cycle. For those of us focused on Intellectual Property, we have seen active discussion about how companies might leverage their IP and adjust their IP practices. Challenging times always provide corollary opportunity, and we see many IP professionals emphasizing patents, brands and other intellectual assets as untapped sources of value. We can expect that IP-rich companies will increasingly turn to their intellectual assets as both sources of capital (sale, securitization, in kind contribution), and income (sale, licensing, damage awards.) With the increased recognition of intellectual assets in the last decade, we can expect that failing or failed companies (their creditors and shareholders), will have a newfound appreciation for the value that can be recaptured from the IP portfolio. Also, as we have seen in past slowdowns, the volume of legal disputes increases during difficult economic times and it can be expected that IP litigation will be one important value channel pursued by IP owners.

Another area where we have seen increased attention is in IP operations and administration. With the IP area often considered a cost center – or even if it is net income generating—expenses are particularly scrutinized for potential areas of savings. With already lean operations, many IP practices are challenged to further tighten their belts, while maintaining their level of service and protecting their companies “most valuable assets.” One area ripe for cost review is the use of outside counsel. Over the years we have seen the pendulum swing between the use of outside counsel and in-house legal work. In the last few months we have received increased interest in how technology – such as ANAQUA – can be used to actively manage work load between outside counsel and in-house staff. Assignment workflow, task automation and detailed workload reports are examples of the capabilities needed to precisely manage the outside counsel / in-house balance. Also with significant innovation in IP services over the last few years – such as “global” IP law firms and offshore outsourced services—companies are looking to more finely disaggregate the prep and prosecution process to optimize service costs.

Portfolio administration – patent maintenance fees and trademark renewals – are also key opportunities for savings. While most companies are using outside services, the high service fees and currency rates are causing many companies to consider bringing some or all of this work back in-house, or to actively evaluate and negotiate better rates from their service providers.

With increasingly “computerized” operations, systems are clearly seen as a required enabler of these efficiency improvements and cost savings. Unfortunately many IP groups are living with older systems and tools which are not well equipped to support needed process changes. In working with our clients, we have been fortunate to help companies achieve a positive ROI, generally within the first year of implementation. And whether good times or bad, these improvements will provide welcomed value for the long term.

If you are interested in this subject feel free to view the Anaqua webinar on "Managing IP in an Economic Downturn" featuring Bruce Story.

Saturday, October 25, 2008

Report from the 2008 LES Annual Meeting

In this edition of IAM Perspectives we cover the 2008 Annual Meeting of the Licensing Executives Society, held on October 19 – 23, in Orlando FL. Hosted at the lovely Gaylord Palms Resort, the LES once again provided an excellent learning and networking experience for all attendees. While unofficial reports indicated lower attendance than previous years, the energy level was as high as ever.

A number of notable themes – official and unofficial – dominated this year’s meeting. As could be expected, there was significant discussion about the last few week’s global financial turmoil and the impact on – well – everything. Many expressed the perspective that radical shifts in financial markets would drive changes in intellectual property and licensing, with the effect being an increased focus in how IP owners could derive greater sell-side or buy-side value. On the one hand, technology sellers will increasingly focus on identifying and scrutinizing under-leveraged assets to generate near term revenue (and cost savings from reduced portfolio volumes); on the other hand, technology buyers will look for bargains to build and strengthen their portfolios. Under financial stress, the IP opportunity will gain greater senior visibility as a great source of corporate value. In addition to buy/sell opportunities, some identified opportunities for investors to enter the IP assets market in a large way; this being evidenced by a number of new IP investment funds and private equity activities. Interestingly, the “troll” issue—or the newly coined term Non Practicing Entities (NPE)—seemed to be somewhat less at the forefront of discussions, though certainly relevant to this discussion of asset value extraction and IP investment funds.

Open Innovation was clearly a predominant theme. Technology licensing is a foundational element of Open Innovation, and LES members and licensing professional have clearly joined the Open Innovation movement. There were a number of excellent presentations focused on all aspects of Open Innovation. John Cronin, Managing Director of ipCapital Group, along with Bruce Story (ipCapital Group), Ben DuPont (yet2.com), Phyl Speser (Foresight Science) and Chris Arena (Woodcock), gave an excellent talk on approaches, issues and challenges of Open Innovation, and collaborative, global R&D. Sue Jacobson (General Mills) and Ed Levine (Cargill), provided insight to how corporations look to partnerships as rich sources of new products and technologies.

There were a number of presentations related to tools, and the use of databases to aid the license management process. With perspectives from both the “new school” and “old school” camps, all agreed that the use of tools and databases are an important resource but not a replacement for the skills of a well trained and experienced licensing professional. A number of royalty databases and valuation tools were presented and discussed. The team of Andy Gibbs (Patent CafĂ©), Michael Lasinski (Ocean Tomo), Robert Lopes (Thinkfire), Hoo-Min Toong (IPVision), Matthew Troyer (Taeus), and Stephen Weeks (First Principles), presented a very interesting, two-part course on Patent Rating Systems.

A highlight of every LES annual meeting –especially for Anaqua—is the Tech Fair. Always an excellent venue for discovering the latest in IP and licensing related products and services, this year’s Tech Fair had over 50 exhibitors. As you would expect, the exhibitors’ offerings were well aligned with current industry trends. A number of vendors were offering software tools and professional services related to Open Innovation, partnering and technology sourcing—particularly in the biopharmaceutical space.

We also noted a seeming re-emergence of e-business or web-based licensing exchanges. At their peak in 1999-2000, various studies identified some 60+ “IP exchanges”. By 2002-03, there were less than a handful of survivors (with yet2.com a notable pioneer and survivor.) As represented at the TechFair, we saw a number of new license exchange offerings—but with various twists on the business model. While all are intriguing (either in their innovation or back-to-the 90’s approaches), a few we found particularly interesting included Taeus International’s “Global Patent Syndicate” (a simple, Google AdWord-like service that shares revenue with listing companies – www.taeus.com) and SparkIP (which uses an advanced analytical frontend to help identify and categorize listings, and match to needs – www.sparkip.com). Building on its Patent Auction franchise, Ocean Tomo has continued to innovate in the area of structured license markets, with enhancements to its Dean’s List exchange and Bid/Ask system. Highlighting many of these emerging new models, Matthew Troyer (Taeus), Stephen Chow (Burns & Levinson), and Laura Paglione (iBridge), presented an interesting session entitled Towards IP Liquidity: Progress on E-Markets.

As always, there were a number of interesting analytical tools. Of particular note was the offering from Innography (http://www.innography.com/), a comprehensive tool for managing and analyzing patents for strategic advantage. The suite of visualization tools provide a number of unique presentation approaches that increases the efficiency of analysis projects.Finally, we would be remiss if we didn’t mention Anaqua’s new License Management Solution, which was announced in conjunction with the LES annual meeting. Built on the industry leading Anaqua platform, the License Management Solution provides tools for managing all aspects of licensing, from asset review, opportunity pursuit, negotiation and agreement management. We were very encouraged by the many conversations we had with both corporate licensing and university tech transfer professionals, who are very interested in more robust, capable software systems (see our License Management press release at http://www.anaqua.com/)


____________________________________
For additional information, please contact Ralph Schroeder at rschroeder@anaqua.com or (617) 375-5808.

Thursday, September 11, 2008

Building an IAM Capability for Small and Medium Enterprises

Effectively managing intellectual assets is a critical imperative for companies of all sizes. While leading “large portfolio” IP companies often garner the bulk of best practice discussions around how they create, manage and exploit their assets, Small and Medium Enterprises (SME) share the same IAM imperative, albeit driven from different business needs and realities. For SMEs, implementing an IAM program requires a thorough understanding of a company’s business drivers, operational processes and organizational culture.

In this issue of IAM Perspectives, we discuss some of the key IAM considerations for SMEs and how the recently announced ANAQUA Express solution addresses these needs. With the introduction of ANAQUA Express, we are excited to bring a highly differentiated solution to the SME market that delivers true end-to-end IAM.

Docketing and Beyond: Providing a Complete IAM Solution
Patent and trademark docketing are critical aspects of the IAM process—particularly from the perspective of the IP legal team. In our conversations with SME clients, however, we often find that they are frustrated with traditional docketing systems because of their limited ability to provide needed functionality beyond docketing. SMEs are increasingly looking to go beyond docketing by expanding their IAM capabilities to include a more multi-disciplinary, cross-functional capability.

In designing ANAQUA Express, we started with a broader view of the needs of SMEs. While providing leading docketing capabilities, ANAQUA Express provides additional functionality to manage all aspects of the process—from invention disclosure through portfolio management.

Make Participating in the Patent Process Easy—and Rewarding

A successful patent program is focused on creating high quality, valuable patents that support the business. This process starts with identifying important ideas and submitting invention disclosures. However, for many companies – particularly fast moving, entrepreneurial organizations – we find that would-be inventors sometimes lack the incentive to participate in the patent process. In fact, inventors can be discouraged from submitting inventions because of the time burden imposed by the company’s patent process.

ANAQUA Express overcomes these barriers, by providing an online electronic disclosure submission system. Starting with a simple web form, ANAQUA Express provides an easy way for inventors to submit new ideas, helped by instructions, minimal required fields, and the ability to easily collaborate with co-inventors. The invention workflow includes automated email notifications to managers and the legal team, as well as a structured patent review board process. Importantly, the feed-back loop is complete by allowing inventors to check the status of their inventions through the online system.

In addition, patent awards can also be a key part of a successful invention program. ANAQUA Express enables companies to create and manage patent award plans that can include both financial and non-financial awards.

Align Trademark Processes to Marketing and Product Management

Well structured trademark management is a critical need for brand intensive SMEs. While this is generally considered from a trademark registration perspective, we find that SMEs can derive significant benefit from having a more formalized link to new product development or marketing which includes managing searches, brand / mark families and portfolio management.

To meet the needs of SMEs, ANAQUA Express provides a suite of brand and trademark tools (including national registrations, common law marks, convention / treaty filings and internet domains.) Starting with an optional online trademark request process, ANAQUA Express can automate and archive searches, with search decisions flowing directly in to the application drafting, filing and registration process. ANAQUA Express also provides an automated global renewal process that allows the coordination of foreign agents via both fax and email correspondence in a batch mode.

Collaboration: Working with Outside Counsel

Outside counsel (and foreign associates and agents) are a critical member of the IP team. As the relationship between the company and their outside counsel become more closely integrated, we find the opportunity – indeed, the need—for the IAM system to allow outside counsel to more directly work within the system.

ANAQUA Express has been designed to allow SME clients to easily setup access to their system using a highly structured security model that provides outside counsel restricted access only to their assigned cases. With ANAQUA Express, clients provide a collaborative environment that allows direct sharing of prosecution tasks and other prosecution related information. Document collaboration—through electronic documents—is fully enabled in ANAQUA, allowing outside counsel to access documents, upload documents and manage work product directly with the client.

IP Portfolio Management: Understanding the Value of Your Assets

We consistently find that the best IAM practitioners institute a well-structured portfolio management process that organizes their assets according to products, technologies and other key business indicators. For SMEs, we similarly find the need for tools that can help the IP legal team deliver insight and counsel to R&D and business managers about their intellectual assets.

ANAQUA Express provides a suite of portfolio management tools that allow SMEs to efficiently categorize, report and analyze their assets. The use of classifications, searching and analysis tools cover a range of purposes including freedom-to-operate (including both patent and trademark availability), competitive landscape / intelligence and operational performance metrics. These resources can be directly accessed by all IAM stakeholders.

Best of Both Worlds: Off the Shelf + Business Configuration

Large scale IAM deployments – tens of thousands of records and hundreds of users—require a complex implementation process, including work on business configuration, system interfaces and data conversion. For SME clients, we have found that they are looking for a more balanced approach, with more highly-defined, standard “off the shelf” setup templates, but with the ability to configure certain areas of the system.

The Express StartUp program provides a more streamlined setup and rollout. Starting with the ANAQUA Express core modules, clients start with standard settings including navigation, user interface, docketing rules, workflows and security roles. Clients can then identify particular areas where their business processes or procedures necessitate configuration changes. For data conversion, simplified upload tools and templates are available to provide for more efficient data transfer from legacy systems, spreadsheets or other sources.

The goal for ANAQUA Express is to provide the power of ANAQUA in a simpler, more streamlined version for the SME user. We look forward to your feedback as we work with you and others with similar needs.

Thursday, June 12, 2008

Building a World Class Patent Prosecution Capability

Effective patent management operations require a proactive, holistic approach that coordinates all stages of the patent life cycle. While docketing applications are often considered the primary tool for managing prosecution activities, we find that many companies are frustrated by the limited capabilities of their existing systems; they require a more sophisticated set of tools that can increase the efficiency and quality of their prosecution work processes. Unfortunately for these companies the solution has been the heavy customization of off the shelf docketing products and custom built tools—solving some issues, while creating a whole new set of issues caused by a disjointed and difficult to manage IT environment.

In this edition of IAM Perspectives we review the core components of a more advanced system for managing all aspects of patent operations, in an integrated, unified IT environment that is both more efficient and easier to manage.

Docketing – Managing the Three Dimensions of Effective Docketing

The center point of the patent prosecution process is generally considered docketing. Docketing involves the capture of critical dates, managing the deadlines and assignments of tasks, and coordinating other activities related to the prosecution process. The key to a successful docketing function is the ability to efficiently and accurately capture the breadth of information that is received from the patent offices, outside counsel and foreign agents—and track the status and completion of all tasks in a manner that minimizes the risk of missed assignments.

In working with our clients, we have found that the biggest challenge facing an effective docketing system is the inability to address what we call the three dimension of docketing – the country laws, client-specific procedures and ad hoc task management. Docketing products have generally addressed one or two of these dimensions; however the lack of all three dimensions results in docketing inefficiency, and significant risk.

Anaqua has been purposefully designed to enable clients to address all three dimensions by providing a comprehensive docketing toolset. At the core is the proprietary Anaqua Law Engine. The Anaqua Law Engine provides the workflow, rules and notifications components. Clients are provided country law and industry best practice docketing procedures, as well as having the flexibility to easily define their own policies and procedures. Based on a powerful, yet easy to use “condition / action” model, Anaqua continuously monitors every aspect of the case, reacting to changes in status, upcoming due dates and other critical aspects of the docket.

In addition to the core Anaqua Law Engine, Anaqua provides docket entry quality control and data integrity controls, as well as the ability to compare internal docket data with patent office file wrapper data (e.g., USPTO private PAIR).


Diary Management – Calendaring and Tasks …And the Docket Report!

Closely associated with the core docketing functions, diary management is the process by which attorneys (both in-house counsel and outside counsel), paralegals and other professional staff, manage their day-to-day work. Generally the most important aspect of diary management is the flexibility to provide information in an easy to use format. The challenge is providing individualized diary information that meets the way each person works—either as an online calendar or a printable report.

Anaqua provides integrated calendaring capability that provides each user a personalized calendar of all assigned tasks, with a set of tools to manage status, completion, assignments and other aspects of their docket. Importantly, the calendaring features include the ability to manage multiple calendars simultaneously. For due dates, Anaqua provides notifications and alerting—directly tied to the docket workflow and rules engine—that can delivery automated messages via email, including to both in-house and outside counsel.

Another critical aspect of Anaqua’s diary management capabilities is reporting. Users are able to access standard “one click” diary reports directly from their home page, as well as access a complete library of reports including personal ad hoc and custom reports. Also popular is the use of automated “batch delivery” of reports which can be setup to provide reports on a defined schedule, directly to users, via email.

Record Creation – Managing Complex Patent Families

Managing the complete family of all related applications and patents is critical to effective portfolio management. As the complexity of both international filing strategy and patent procedures increases, the docketing function requires greater capabilities in how records are created. While other docketing systems allow simple family relationships to be entered or created, these generally lack the ability to build more complex associations between related patents which reflect the filing strategy and prosecution process.

Anaqua has addressed this increased complexity by building a number of features that provide greater capabilities in managing the record creation and family tracking process. Anaqua’s filing strategy tool allows clients to define standard filing plans (e.g., “filing tiers”), as well as construct specific filing plans based on a given invention’s requirements. Records can then be easily created with a “one click” create process that automatically copies data and structures the family relationships. Importantly, underlying convention or country specific filing rules are built in to the process.

For convention based filings (e.g., EP or PCT), Anaqua also provides an internationals creation and record management process. All related national stage cases can be easily viewed and tracked, and managed in a unified manner.

Other important capabilities include the ability to set multiple priority records, create links to associated applications, and to view the family tree diagram and navigate across the complete family through a single interface.

Electronic Document Management – Automating Prosecution and Going Paperless

Historically a paper-intensive process, the era of paperless patent prosecution is quickly becoming a core requirement of leading IP groups. The trend towards a fully electronic process is being driven by both organization structure—increasingly global—and changes within the patent offices—moving toward electronic filing and online case management.

While company policy may differ in regard to the need for certain hard copy records, most companies have embraced the paperless movement. Unfortunately, companies find their existing docketing systems were not designed for the paperless world, and they are forced to rely on simple shared file directories or separate document management systems that are disconnected from docketing.

Anaqua provides a full set of electronic document management features designed specifically to provide IP groups with a fully paperless work environment. Documents can be easily uploaded to records, as well as shared amongst related records (“one to many”), with the ability to both restrict access and lock records when checked-out. Teams are able to use Anaqua as a central repository to collaborate on documents throughout the prosecution process, including applications, office actions and other correspondences. Anaqua also provides automated templates to improve the efficiency of correspondences, as well as electronic filing packets which can be used with patent office e-business / e-filing programs.

In addition to documents, Anaqua also captures emails—both outgoing and incoming emails. These can include standard template emails created for specialized purposes, as well as attachments, URL record links and other automated merged data.

Prosecution Collaboration – Teaming with Outside Counsel

Outside counsel (and foreign associates or agents) are a critical member of the IP team. Historically the docketing process—and particularly the docketing systems—have been separate both in terms of organization and systems. This disconnection has largely been borne from process and technology limitations, rather than the lack of a value proposition. Accordingly, we see a high level of interest in having a more collaborative environment that allows direct sharing of prosecution tasks, documents and other prosecution related information.

Anaqua provides a platform that has been designed to enable outside counsel collaboration across all aspects of the prosecution process, providing a unified environment for companies and their outside counsel to work more efficiently and effectively. Starting with defined security, Anaqua allows access control at the record and functional level so that outside counsel can only view and work on their assigned cases. This allows outside counsel to use Anaqua’s docketing and prosecution function directly—entering dates, documents and other information right in to Anaqua.

For docketing tasks, Anaqua provides the unique capability to setup distinct outside counsel rule sets, which will assign and monitor the docket based on what has been defined for the law firm—distinct from in-house related tasks. The Anaqua Law Engine can assign tasks directly to outside counsel, including notifications and escalation rules to manage due dates and assignments.

Document collaboration—through electronic documents—is fully enabled in Anaqua. Outside counsel is able to access documents, upload documents and manage work product directly with the client, including the ability to lock records. Automated email messages can be sent to assigned resources when documents are added to the case.

For additional information, please contact Ralph Schroeder at rschroeder@anaqua.com or (617) 375-5808

Friday, April 4, 2008

The Anaqua Client Community and ACE

From the beginning, Anaqua and its clients have placed great emphasis on building an active, collaborative community of IAM leaders to share ideas and experiences and provide direction for Anaqua’s IAM solution. Last week we held the third annual gathering of this community at the Anaqua User Conference in Delray Beach, Florida. Every client sent multiple delegates including Heads of IP, patent and trademark attorneys, portfolio managers, IT and operations staff and paralegals. The program included client presentations on best practices in IAM strategy and operations and a series of workshops and tutorials.

At last year’s conference, there was a strong desire for a collaborative, open forum for sharing best practices in all aspects of IAM— both related to their use of the Anaqua system, as well as more broadly to share information about strategy, organization and process . This year we were able to unveil Anaqua’s new IAM best practices resource, the Anaqua Community Exchange (ACE).

The Anaqua Community Exchange is a “private” collaboration environment provided to Anaqua clients. The ACE system was initially conceived by our Executive Council, a special group of senior IAM executives who provide both industry insight and guidance to Anaqua’s business. The objective of ACE was to provide a robust, active resource that would enable clients to both contribute and receive IAM best practices amongst and between their fellow Anaqua users. While other IAM related sites were available through the web, the Executive Council felt that a dedicated, client directed system would provide a much higher value resource. Importantly, the Council felt that the ACE environment must provide a flexible structure, and support for both peer-to-peer collaboration, as well as providing a conduit for Anaqua training and support materials.

Over the last few years we’ve seen a plethora of new technologies and resources emerge that are aimed at helping companies share “best practices” information – online forums, discussion boards, blogs, wikis, to name a few. In designing the ACE system, Anaqua worked closely with its clients to understand their expectations and requirements. Having past experience with various online forums, the team was committed to providing a resource that would be truly valuable—and therefore would flourish with evergreen content driven by active use and participation. In implementing ACE, the following are some of the key components have been provided:

A robust wiki infrastructure that allows shared content to evolve through community exchange of revisions. This is particularly useful for user guides and training materials, which can be collaboratively revised and updated by the Anaqua user community, and shared by all;

  • A document sharing function where presentations, white papers, best practice guides and other materials can be posted and shared;
  • Discussion rooms where users can contribute ideas, documents and other information;
  • A Resources area where ANAQUA document and email templates and user-written reports can be posted and shared;
  • Postings of upcoming events including user conferences, webinars and industry meetings;
  • Notifications and RSS subscriptions to allow users to automatically receive updates from their topics of interest—pushed directly to their email or browser

Content has included new versions of the Anaqua training materials (for the new ANAQUA6 release), case studies (including the recent IAM article by Amy Achter (Kimberly Clark) and Paul DiGiammarino (Anaqua), and the presentation materials from our recent Anaqua User Conference.

So what are the implications for Anaqua’s current and future clients? We are excited about the added value that ACE delivers by providing a unique environment and eco-system for our leading client companies. Anaqua sees the opportunity to go far beyond providing the industry’s best IAM system “features and functions”. ACE is a critical component in Anaqua’s overall customer experience, providing an incredible resource to derive substantial benefit from the collaboration and sharing of ideas across the full set of clients – the Anaqua Community Exchange!

Tuesday, February 12, 2008

Harvesting Ideas: Enterprise Invention Management

Invention Management is a critical component of enterprise Intellectual Asset Management. Invention management is a multi-step process that requires active coordination across various functional areas, including R&D, product management and the legal department. Increasingly, companies are finding that their past-practices of ad hoc invention management are failing to provide the quality or quantity of ideas necessary to build a world-class, strategically aligned patent portfolio. And with the expanding globalization of businesses, the ability to reach inventors is a logistical and information management challenge. The solution for many organizations is the implementation of enterprise Invention Management systems that enable an electronic, paperless process that fits within the end-to-end IAM process.

While the specific steps may differ from company to company, we find that leading IP companies generally use a common approach that coordinates the people, process and information needed for efficient and effective invention management. In this edition of Anaqua IAM Perspectives, we discuss the essential components of an enterprise Invention Management solution.

Paperless, Electronic Invention Disclosure Form

The use of standard electronic invention disclosure forms (IDF) is a common feature of an automated invention process. Replacing paper-based or emailed forms, the process begins with submission of an IDF through a full featured web form, which helps guide inventors through the process of describing the subject matter and merits of their idea. In addition to the electronic IDF form, these systems often also provide the following additional features:

  • Easily select co-inventors including contact and employee information pulled from the company directory;
  • Upload documents that provide supporting information to the IDF;
  • Identify and list related inventions or patents which may be useful references;
  • Ability for inventors to “self rate” the technical and business value of the idea;
  • Identify critical dates which may affect the time period or urgency of application filing;
  • Support active collaboration between co-inventors;
  • Indicate the invention’s technology, R&D project, product, market position and any other related classifications;
  • “Lock” the disclosure to preserve the invention date of the idea;
  • Provide electronic signatures for the IDF;
  • Validate submission with an auto generated email to the inventors providing the disclosure number, date and other explanation of the process;

Invention Evaluation and Patent Review Boards

Increasingly, most organizations are using some form of a structured review process to evaluate their invention disclosures. A common approach is to organize incoming inventions by business units and technology, and route a new IDF to a list of designated reviewers. Often a Patent Review Board (PRB) will be periodically scheduled which brings together both inventors and subject matter experts as well as business and legal representatives . The PRB will provide a forum for inventors to present the merits of their ideas and an evaluation process that rates the technical, business and legal value of the idea. In supporting these processes, the system should provide the following capabilities:

  • Ability to automatically organize new disclosures by business unit, technology or other classification based on information provided in the IDF;
  • Enable a centralized department to manage and report on all incoming IDFs across the entire company;
  • A way to easily schedule the PRB meeting, including the agenda of new disclosures to be reviewed and supporting documents;
  • Provide a defined rating system that scores ideas in a consistent manner, and which can vary by technology or business unit;
  • A system that captures the technical, business and legal merits of the invention;
  • A way to facilitate the “file” / “no file” decision from the PRB meeting, and to automatically notify the inventors;

Foreign Filing Plan and Budgeting

The need for global patent coverage and the high cost of foreign filing requires a structured filing plan and budgeting process. Based on an approved disclosure’s rating, as well as the related product’s market profile, a company will identify the countries in which patent applications will likely be filed. Often the filing plan will be based on a set of pre-defined “tiers” which correspond to a group of countries. The filing plan should also provide a budget estimate calculated from both the official fees and the company’s typical professional fees. To support this process, the system should provide the following capabilities:

  • Ability to set up and name geographic areas containing multiple countries/jurisdictions;
  • Ability to set up and apply pre-defined filing plans showing priority and secondary filings;
  • Ability to apply filing plans automatically based on product/technology or other classification and the evaluation ranking of the invention;
  • Ability to project budget costs of a proposed filing plan

Inventor Recognition and Awards

Creating a corporate culture that values participation in the invention process is an important responsibility of the IP organization. Inventor recognition programs and inventor awards are common ways for companies to incent their would-be inventors to participate, and to compensate them for the time spent on creating high value IP. In addition, some countries—such as Germany and Japan—have inventor remuneration laws which require structured payments to inventors. To help manage these processes, the system should provide the following features:

  • An invention award scheme that allows awards to be paid at defined milestones, such as disclosure, application filing or grant;
  • An automated process to calculate the award based on such factors as historical number of disclosures, number of inventors and quality rating;
  • An interface to financial systems to automate the payment and receipt tracking of awards;
  • A way for inventors to easily check on the status of their inventions through an Inventor Portal;

Conclusion

Effective, high quality invention management is the critical first step in a world-class patent process. Providing a structured, automated system to coordinate the myriad of functional and information aspects is an increasingly common solution for companies that are leaders in IP management. In working with some of the world’s most highly regarded IP owners, Anaqua has developed a full suite of tools that enable companies to implement complete end-to-end invention management—integrated within the broader IAM process.