Print Friendly and PDF

Brinks Gilson & Lione attorney discusses 6 steps of Intellectual Asset Management (IAM)

As the ongoing patent wars between Apple and Android will attest, managing and protecting intellectual property while gauging the competition is an increasingly sophisticated and complex operation. Keith D. Weiss, Ph.D., an IP attorney with the Ann Arbor office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., advises businesses to incorporate intellectual asset management (IAM) into their corporate business strategy in order to leverage innovation and generate revenue.

“It’s not limited to corporate behemoths. Establishing a comprehensive intellectual asset management process is important to corporations of all sizes, but it can be a tough proposition,” Weiss said. “The key challenges are managing costs, establishing portfolios and leveraging value. Corporations want to monetize their existing IP, manage their IP portfolios and protect or enforce their IP rights, but need to have a plan to do so.”

Weiss says intellectual asset management begins with innovation, awareness and continual improvement, but is really a six-pronged, on-going process that involves:

1. Setting technology and IP goals by defining an IP asset policy and creating an innovative culture;

2. Creating IP assets by confirming ownership through the establishment of proper invention disclosure review, employee/contractor agreements and trade secret policies and procedures;

3. Protecting IP assets by establishing an IP portfolio that comprises one or more patents, trademarks and/or trade secrets;

4. Reducing liability and limiting exposure by setting and meeting confidentiality obligations, establishing freedom to operate, implementing document retention and conducting on-going employee training;

5. Leveraging IP assets by establishing a technology licensing process, obtaining competitive intelligence, performing infringement analyses and/or fostering joint development relationships; and

6. Auditing IP assets by performing due diligence, analyzing the strength/weakness of the IP portfolio, monitoring metrics, pursuing litigation or implementing tax strategies.

With the cost of a global patent family that includes patents issued in only five jurisdictions running approximately $166,500 over a 20-year period, Weiss recommends companies periodically review their existing portfolios in view of:

• Evolving business goals (core vs. non-core)
• Multi-generation product plan with respect to coverage and gaps
• Market trends and customer needs
• Introduction of competitive products
• New technology developments vs. obsolescence
• Changes in regulations or court decisions
• Budget costs with recognition of value added functionality

“A periodic evaluation of an IP portfolio will help companies determine what portion of their portfolio they should (a) maintain and enforce, (b) license or sell, and (c) abandon altogether,” Weiss said.

Brinks Gilson & Lione
The attorneys, scientific advisors and patent agents at Brinks Gilson & Lione focus their practice in the field of intellectual property. Brinks is one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them protect and enforce their intellectual property rights. Brinks lawyers provide counseling in all aspects of patent, trademark, unfair competition, trade secret and copyright law.

More information is at