Five often overlooked IP gaps that can derail your innovation strategy

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Five often overlooked IP gaps that can derail your innovation strategy

Sponsored by

Logo 22.07.22.png
Cover image.jpg

CAS explains the five high-risk areas of IP for R&D organisations and identifies how companies can protect their innovations and safeguard their growth potential

Robust IP strategies underpin the success of innovation-focused organizations. Gaps in critical IP information or management can put years of product development in jeopardy and lead to potential legal risks. For example, you might miss a competitor infringing on a patent of yours, underestimate the value of your existing assets, or let a promising commercial opportunity pass you by.

Below are five common gaps in IP strategy, and how to ensure they do not compromise your organization.

1. Proactively monitoring your IP assets and the relevant landscape

The first step towards building a robust IP strategy is to take stock of your organisation’s existing IP assets. Many IP stakeholders lack sufficient information on their own IP portfolios to fully support valuation and monetization.

Meanwhile, companies report that they have not fully utilized IP information across their organizations, even in such critical areas as R&D. Companies might monitor patent publications from known competitors, but miss new market entrants and tangential technology areas.

Many companies are turning to more powerful tools and services – in-house or outsourced – to ensure they don’t miss important developments.

2. Are you missing IP disclosed beyond patents?

Growth in patent and non-patent publications and media makes it increasingly difficult to find every possible source of prior art that can threaten patentability. These include journal articles, dissertations, presentations, and much more.

Companies are using IP search solutions that provide a holistic review of the dynamic IP landscape, covering both patents and a wide variety of non-patent references to reduce the chance of missing important information.

3. Do you have a knowledge transfer and succession plan?

The number of people involved in searching and using IP information in organisations is increasing, particularly at the early stages of innovation. Unfortunately, this can create knowledge gaps, because not everyone has the depth of expertise to design effective search strategies and use the right tools properly.

IP stakeholders should be properly trained on searching and assessing IP information. To ensure this, some organisations find it useful to assign responsibility for IP education to someone in the company. Comprehensive process documentation can help ensure that important knowledge is not lost if key IP specialists move on or retire.

4. Could your partners be putting your IP at risk?

The accidental sharing of confidential IP information constitutes a significant risk to R&D organizations, posing a greater threat of financial loss than hackers and some other external security threats.

Training employees on IP security can help to combat this, but does not address security gaps posed by external partners such as researchers, law firms, or search services. It is important to ask partners to document how they store, manage, and share information to be confident in the steps they take to maintain the integrity of your IP.

Our report outlines eight key questions to ask your IP partners in order to protect your IP.

5. Could specialised tools help your IP work be more precise and efficient?

Ensuring that all IP stakeholders have access to the right data, information, and tools is key to a successful IP strategy. This is especially true in the areas of chemistry and life sciences where information is often found in structures, drawings, charts, and other

In addition, IP is becoming more difficult to search and monitor as research becomes increasingly global and interdisciplinary. Therefore, using specialised search tools – such as chemical structure searching, numeric property searching, or thesauri and semantic searching – is crucial. This could be either via a licensed commercial search tool, or by partnering with a search service such as CAS.

Click here for our complete report, which provides more information and comprehensive IP checklist for leaders.

more from across site and ros bottom lb

More from across our site

AA Thornton and Venner Shipley’s combination creates a new kid on the block, but one which could rival the major UPC players
Amit Aswal explains why you should take on challenges early in your career and why the IP community is a strong, trustworthy network
Five members of Qantm’s leadership team, including its new managing director, discuss how the business is operating under private equity ownership and reveal expansion plans
In our latest UPC update, we examine an important decision concerning the withdrawal of opt-outs, a significant victory for Edwards, and the launch of a new Hamburg-based IP firm
The combined firm, which will operate under the Venner Shipley name and have 46 partners, will go live in December
Vidal, who recently announced her departure from the USPTO, said she decided to rejoin the firm because of its team and culture
Osborne Clarke said John Linneker’s experience, including acting for SkyKick in the seminal dispute with Sky, will be a huge asset to the firm
Fieldfisher led arguments in court before Kirkland & Ellis took over shortly after SkyKick was acquired, it was revealed last week
Lawyers at Finnegan and Fross Zelnick explain why privacy formed a natural extension of their firms’ IP practices and share expansion plans
The news that USPTO director Kathi Vidal is to step down early and WIPO’s aims for a design law treaty were among the biggest IP talking points this week
Gift this article