Corporate Legal Operations – Implementing IP best practices to drive your organization

Since 2004, IP Checkups has worked with dozens of corporate IP departments. A few are very sophisticated and well-organized, implementing best practices around process, software and policies to support information sharing,  while many seem to be stuck in a reactive process, putting out fire after fire.

Due to the nature of how corporations are organized, typically into silos (legal, corporate development, and R&D), knowledge management and cross-disciplinary information sharing,  is an area in which many companies can improve.

Since its inception, IP Checkups has embraced the idea that the best way for corporations to reach their maximum potential is to share information across disciplines. This involves creating processes, supported by software and policies to manage and distribute critical data related to patent landscapes, competitive intelligence, market analysis and new innovations. Many of the methods used to derive this data are, by nature, overlapping and complimentary. Connecting people, ideas and data across IP, R&D, marketing and corporate development teams is an ideal way to turn disparate information into institutional knowledge enabling the organization to make informed, actionable and strategic decisions. Organizing, managing and sharing inter-disciplinary information results in:

• Informed R&D and M&A decisions
• Reduction of redundant research
• Speeding time to commercialization
• New revenue opportunities

Over the past several years, the role of the corporate legal operations professional has emerged to manage this information and connect people within the organization across-disciplines.

Legal software and service providers like IP Checkups have also emerged that support the gathering, sharing, and analysis of corporate knowledge. We developed PatentCAM™, a collaboration software platform to manage the results of patent searches and landscape analysis in a centralized, secure repository to collaborate across disciplines.

Although IP Checkups has been promoting the benefits of interdisciplinary knowledge management since 2004, until recently, there have been few organizations focused on establishing and publishing best practices and standards of operation related to managing corporate IP operations.

In 2019, the Corporate Legal Operations Consortium (CLOC) published resources defining best practices necessary to successfully manage operations, as it relates to an organization’s intellectual property.

The IP proficiency section of the CLOC website includes several resources and tools including IP proficiency matrices for in-house IP departments to assess their progress in meeting standards defined by industry, law firms, and consulting firms. There are three IP proficiency matrices available — one for patents, one for trademarks and one for litigation.

CLOC organized the IP proficiency matrices into the following categories:

• People
• Process
• Technology
• Policies
• Third Party Support
• Enforcement/Monetization

For each area there are several categories, divided into an evolving continuum of four assessment classifications:

Developing –> Foundational –> Advanced –>Mature

The core team that developed the CLOC IP proficiency standards consisted of a variety of experts from the legal industry, consulting firms and law firms, including thought leaders Jennifer Karr from Microsoft, Brent Harris from Roche, Stephanie Sanders from Kilpatrick Townsend, Sam Wiley from VALUENEX and Adam Jaffe from Duff and Phelps, among others.

Here, we will review the IP Proficiency Matrix for Patents with our overview of three standards related to the process proficiencies section (see pages 5-14). We selected subjects related to cross disciplinary information sharing, data driven decision making, and knowledge management — we also included subjective feedback based on our 15+ years of experience with in-house IP departments,  noting how IP Checkups services or software align with each of the standards.

Analytics

For the Developing and Foundational assessments, we have found that most in-house IP departments operating for more than 5 years, have some level of metrics they use to evaluate the quality of their own department, outside counsel and other vendors. It may be adhoc, but quality metrics are critical to establishing consistency within an organization. In addition, most of these companies either have developed, or are in the process of developing performance metrics that can be shared with management.

As for the Advanced assessment category, although it is common for organizations to have some level of bucketed technology taxonomies, it is rare to see companies with well thought out and deep categorization hierarchies (see example below). Although many companies have the resources and capability to develop more in-depth hierarchies, monitor metrics and identify industry trends, it’s uncommon to see substantial and repeatable programs in place.

Here are two category hierarchy examples from IP Checkups’ PatentCAM software. The two hierarchies, one for Dow Chemical and the other for BASF reflect the patents within the two companies portfolios that are relevant to the product areas in which each companies’ patents relate.

Although many companies have the resources and capability to develop more in-depth hierarchies, monitor metrics and identify industry trends, it is uncommon to see any substantial and repeatable programs in place.

Finally, the definitions associated with in-house IP departments operating in the Mature phase, appear to be in line with IP Checkups recommended best practices. The more that companies can encourage cross disciplinary thought leaders to discuss strategy based on measurable data and metrics from each department i.e. (R&D, business development, and legal) the more the organization will benefit. This includes for example, being prepared “to respond proactively to opportunities and challenges [as they occur] and new product launches.”

Asset Management

For the Asset Management category’s Developing stage, we often see in-house counsel relying on outside counsel to manage the IP assets of a company, particularly for companies with less than 3 in-house IP practitioners. The amount of reporting or tracking performed by outside counsel is minimal. Often, this is because the cost of performing these tasks is exorbitant and in-house counsel has higher priorities. By simply integrating IP tracking, analytics and patent management software tools within the firm, outside counsel would create significant advantages for clients over other firms that don’t offer those services and greatly improve their value proposition.

The features outlined in the Advanced section of the Asset Management category align closely with IP Checkups core service offerings. Through our patent landscape services and supporting PatentCAM software, IP Checkups routinely delivers reports that map IP to products, markets and previously filed patents (to avoid duplicative research). We often recommend developing a customized ranking system, and we promote data capture of inventor and attorney feedback related to the innovations your teams are working on. This is critical for assessing the strengths and weaknesses of your own portfolio and establishes a quantitative, yet qualified process for considering acquisition or divestiture of IP assets.

Knowledge Management

In one example, we led a patent landscape and market analysis to advise our client on how to move forward with a new product initiative. Our client’s marketing team gathered optimal technology and characteristics of successful products in the market. The R&D team researched specific ranges and qualities required to achieve success. The business development teams researched competitor technology and monitored potential start-ups to acquire. And the legal team assessed the strengths of the competitor IP portfolios. This cross disciplinary team worked together with our expert analysts to determine the following:The knowledge management category is an area where most of our customers can improve significantly. A lack of process, software and policy results in inconsistency and sharing across departments, redundant research, missed opportunities, and increased risk. Our PatentCAM interface provides a centralized repository, encouraging cross disciplinary input and balances the needs of attorneys to reduce risk while enabling researchers and engineers to safely explore technology frontiers.

1. What were the technical requirements necessary to avoid the prior art and limit freedom to operate risks?
2. Did it make more sense to acquire a competitor, build the product from scratch or some combination?
3. How likely was it that the product would be novel? Would there be infringers? If so, who and could the client generate or purchase IP to maintain or improve leverage with the other IP holders in the space.

Establishing a knowledge management process and deploying software to capture the results of our cross-disciplinary efforts saved our clients vast amounts of time and money. The process and resulting centralized repository reduced risks associated with litigation, accelerated time to commercialization and provided more revenue opportunities.

There are many more standards described in the CLOC IP Proficiency Matrix. IP Checkups is encouraged by CLOC’s efforts to attack this gap in the market – establishing best practices and standards related to process efficiencies that help corporate IP departments provide more value to the enterprise. Overall, this is a positive step to improving the value, we as IP practitioners bring to our respective organizations.

Interested in patent landscape analysis or patent management software? Contact us.