Intellectual Property (IP) management is usually an afterthought in Small or Medium Enterprises (SMEs).
Reactive instead of proactive. Wishful instead of watchful. IP is usually poorly managed and rarely strategic, so it is not surprising
that it can waste money, miss opportunities and risk IP.
If your company is an Innovation Driven
Enterprise (IDE), ie a “tech company”, IP defines your business, determines your market and is
the foundation of your competitive advantage. It is also deeply
involved in developing your business model(s), planning your entry
into another country, generating new products and lines, and
estimating future revenues. A clear understanding of the relevant IP
is required for most decisions about “licensing”(American English or “licencing ” in the rest of the English-speaking world),
collaborations and alliances. These reasons and more are why IP
management should be strategic.
SMEs rarely have the resources to hire an IP manager, so this
responsibility often falls upon a “C-level Officer” (the
Chief Executive, Operational, Scientific, etc. Officer). On these pages I offer some advice to for those at C-level in UK-based SMEs who are IDEs
planning on commercialising their IP in the USA.
I am NOT a lawyer and do not give legal advice. My advice is based upon my experience as
- the “IP guy” at four biotech start-ups in San Francisco and two in Scotland, plus
consultant for many more,
- a “patent killer” working for the USPTO to produce International Search Reports (ISRs)
and written opinions on Stage One PCT applications, and
- someone who studied to become a patent agent, registered with the USPTO.
The titles listed below will link to my “articles” as I write them and give you an idea of what
to expect. Bookmark and return here regularly to read the latest.
A patent application exposures your secrets, is expensive to progress and, if
it matures into an awarded patent, usually claims much less than you
had planned. What's a strategic IP manager to do?
With special insert “Best Mode is still required!”
You plan to make
most of your money from the US but your strategy for getting a patent
from the USPTO is probably inefficient and more expensive than
necessary. And, what other countries are worth considering?
trumpet our competitive advantage(s) and our patent-protected
market(s) but, more often than not, patents fail to connect the two.
That connection can be made early in the life of a patent application
and maintained throughout prosecution to yield profitable patents.
your invention, arguments can be made for or against patenting it,
but the arguments, if discussed at all, are rarely balanced. Logic,
planning and strategy are evil demons in the “Church of
Who's the IP Guy and What Makes Him/Her a Strategic IP Manager
Someone in your
company has to be the “IP Guy”, but who? External hire or
internal assignment? Full-time or Part-time. What to look for, who to
look for and what to expect.
When the Shoe's on the Other Foot – Freedom to Operate
You don't need a
patent to sell your wares but you must not infringe patents doing so.
In most companies, strategic IP managers spend more time and effort
concerned about other people's patents than their own.
Synapses has the knowledge, experience and connections to help you arrive, survive and thrive in the United States.
(© Dr Jamie Love 2015)