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The CIO's Role in Intellectual Asset Management
By Robert Dordick, Director Patent Analytics, Xperi Corp and Marc Ehrlich, Senior Vice President, Patent Strategy, Tivo
Intellectual property (IP) refers to the means by which owners or businesses secure property rights associated with their IAs. The most common vehicles for doing so are patents, copyrights and trademarks.
Your Ideas Matter. Intellectual Property is Important.
The US Patent and Trademark Office report entitled ”Intellectual Property and the US Economy: 2016 Update” notes that IP intensive industries - those that rely on patents, trademarks and copyrights such as pharmaceuticals, semiconductors, computers, etc. – account for: 1) almost 40% of the US GDP, 2) over 50% of US exports and 3) nearly 30% of US jobs. Further, wages associated with these jobs are nearly 50% higher than those in non-IP intensive industries. A study from the European Patent Office found similar results in the European Union. Studies have shown that up to 80% of the value of a typical U.S. business comes from its IA. Clearly then, all C suite executives, including the CIO must share the goal of managing and leveraging a firms IA’s to unlock that substantial value.
Beyond their traditional focus on information and communication infrastructure management, the CIO as a business leader must understand, articulate and embrace the general vision and mission of IA/IP in the organization (whether the domain of a CIPO business function or a legal function) and enable its company-wide deployment in an efficient manner to maximize the likelihood of positive outcomes.
Beyond their traditional focus on information and communication infrastructure management, the CIO as a business leader must understand, articulate and embrace the general vision and mission of IA/IP in the organization
Core to this mission is the IA/IP management system, a sophisticated computer software platform that serves to document and manage the IA/IP lifecycle. For patents, this lifecycle includes stages from ideation to invention capture, to patent application drafting, to prosecution of the patent application in front of a patent office such as the USPTO, to the issuance (or grant of the patent right) and post issuance actions, to product mapping, and “end of life” determinations referred to as maintenance reviews.
Further, the system enables collaboration involving both internal and external parties as it is often the case that aspects of the patent lifecycle involve collaboration with outside law firms. Moreover, the system must manage a complex set of calendaring tasks attendant to patent procurement and maintenance, must serve as a document repository that is referenced by a diverse set of users for future innovations, litigations and other activities associated with the company’s use of patents, and must provide financial tracking and reporting capabilities. Finally, the system must be able to synchronize with static and dynamic data generated and stored on the patent office’s IT systems, such as patent classification codes, and key dates, to ensure accuracy and reliability.
An interesting challenge for a CIO when choosing an IA/IP management system is that the system must at once address the business requirements of the enterprise and function within the legal parameters established for procurement, retention, protection and utilization of the asset. For example, an enterprise may have a need to allow certain business people to access certain data in the IA/IP system but such need must be balanced against (for example) a desire to maintain such information as privileged attorney client information in litigation. Therefore, the choice and integration of an IA/IP management system often requires a CIO to work with leaders from business and legal functions to successfully acquire and deploy such a system.
Additional challenges include integration of the IA/IP/Management System with other enterprise information technology and security infrastructures, scaling to address increasing communication and geographic growth, and integrating with company financial tracking and reporting systems. Each of these factors must be considered when evaluating an IA/IP management system. The choice is further dependent upon organization size, complexity, business, portfolio size, collaboration needs, etc.
Given the enormous potential to unlock the value of many enterprises, it is not a surprise that many commercial grade IA/IP Management systems are available. These systems offer options to address the needs of large or small firms and those experienced in IA/IP management as well as those new to the field. Irrespective of the choice, the goal of the CIO is to enhance the IA/IP data management processes to maximize the return on the investment in IA/IP in the organization.