By: Brian E. Reese

We exist in an innovation-based economy. For the last few decades, intellectual property has become an increasing share of total corporate assets. As such, there may be pressure to file applications, particularly for patents, to protect anything with even a remote chance of having value down the road. However, with no clear vision for the IP, this can result in a misallocation of valuable (and limited) resources, which could adversely impact the assets you should be filing applications to protect.

Recent economic turbulence has motivated innovators to take a second look at how they expend their resources. The cost of protecting intellectual property may seem daunting and yet one may feel there is no choice, because it is a rare company that can survive, let alone flourish, without existing in a continual state of innovation. So, how does one handle these conflicting issues? The answer is through a greater eye toward the overall strategic plan of your business or portfolio. Whether you are a university or a corporate entity, consideration of the end goal of a technology is necessary in order to assure proper allocation of resources.

For example, a university’s technology transfer office would benefit from understanding how a particular researcher’s work fits into the overall technological landscape and thus, how likely it is to license a particular piece of work. This in turn may guide the decision as to whether or not to pursue patent or to wait for further development first. Corporate entities may benefit by determining if non-core intellectual property may be monetized through out-licensing, or potentially through creation of a spin-off company or joint venture. Only through prospective analyses of the intellectual property environment can these decisions be made with confidence and a high level of quality.

Gaining this intelligence can take several routes including a landscape analysis of patent protection for a given area, an analysis of research or commercial entities in a particular technological area and their IP holdings, or even analysis of comparator data regarding licensing values or product market size, if available for a particular technology. Regardless of the mechanism of analysis, “beginning with the end in mind” is increasingly becoming a necessity in order to maximize your intellectual property value within given budgetary constraints. Careful analysis of the strategic value of your IP assets, even before filing, can lead to greater return on investment and allow you to enter a virtuous cycle of high quality innovation properly monetized through strategic IP protection.

Brilliant innovators are changing not only our economy, but also the world. Each of the last several decades has brought us society-altering innovations including the computer, cell phones, the Internet, and a myriad of medical treatments. Careful and strategic assessment and of how and when to protect future innovations will ensure that this decade, and those to come, are no less wondrous.