The IP question
In brief: Senior Associate Jeff Bergmann discusses how patenting is just one part of a good asset management strategy. This article originally appeared in Australasian Biotechnology News on 7 June 2002.
Some argue that these days, it's not 'publish or perish', but 'patent or perish'. While patenting and publishing are vital tools, they should form only part of any company's overall asset management strategy.
Intellectual property is an asset, a valuable asset. Like any other, it requires careful management. The mantra should therefore be 'IP management or perish.' Here are six steps to a good IP management policy.
Identification
Unless you know what your IP is, how can you patent it, let alone manage it? Your organisation should ensure your researchers are well versed in IP and know it when they see it. Are they aware that know-how and confidential information may in fact be IP – even in the absence of any patent? Do they understand that proprietary biological samples may also comprise IP rights?
Capture
Your organisation should record all IP created by it in an IP register listing all IP – not just patents but know how and materials. Does it, for instance, keep track of who has received its biological materials? Have those people signed appropriate Material Transfer Agreements? Does it understand the conditions attaching to materials it has received – eg just what does 'research use only' really mean? And does everyone comply with US labbook requirements?
More importantly, does your organisation own IP created within it? If not, you may find that the IP generated by your researchers in its facilities is in fact owned by the researchers. Of course, some organisations allow researchers to own their IP. This is fine, where it is a deliberate policy – but not so pleasant when a judge imposes it in litigation.
Leverage
Why does IP matter to your organisation? Where does IP fit into its strategic direction? If the IP relates to a process improvement that gives the organisation a competitive advantage, trade secret protection may be the most suitable approach – a case of 'publish or patent, and perish either way'! This threshold issue is too seldom considered.
Does the organisation have a mandate to make money from its IP, or simply share its research with the world for the good of humanity? In most cases it will be the former, but there may be a place for the latter in the biotechnology sector. Assuming money is the goal, what sort of money – untied grants or commercial funding with a share of downstream upsides?
Watching others
Your policy needs to set out a mechanism to watch competitive IP activity. Knowing what else is out there serves two purposes: first, you know whether your IP is of value or just 'copycat', and second, you know whether your IP will infringe a third party's patent. Regular expert searches should ensure that your IP is innovative and can be exploited without requiring a licence.
Protection
What is the best way to protect your IP assets to achieve the leverage strategy? So the fifth question (not the first) is 'publish or patent (or trade secret)?' If government research funding is the goal, then it may be useful to publish and gain a profile as a leader in your field. But even government grants these days often require a hint of commercial potential.
Of course, commercial money generally only comes if secure IP exists – and a strong patent position is essential here. Such a position is more likely if publication is delayed until after the complete specification is filed, not simply the provisional. This allows time for the invention to be developed during the 12-month period without risk of pre-publishing yourself. And as for 'grace periods'? Don't even think about it – unless Europe doesn't matter to you!
Eventually someone is bound to ask the obvious questions: 'Are the patent costs justified?' and 'Who is going to pay them?' But with a sound policy in place, you will arrive at this point with IP that you have created, captured and already decided is a useful tool in your strategic goals. So the bean counters won't mind (or won't mind so much) paying your patent attorney's bills.
Enforcement
A complete IP management policy will follow through on the leverage strategy (see point 3 above) with means to ensure you get value for your money. A patent's major value is in stopping others copying you. So you face some crucial questions:
How are you going to become aware of infringers? Do you have a surveillance regime, or will you just be random?
Will your licensee sue infringers, or will you have to? (And if you thought patenting was costly, just wait until you try enforcing it!)
Does the commercial strategy justify these costs? At the end of that day the whole rationale for having the IP in the first place is competitive advantage. And with a sound IP management policy, you can be confident that you're using your IP assets effectively.