The future of many IP portfolios includes some aspect of “trimming the fat” to help cut costs and make your portfolio more efficient. Whether this means discontinuing patents that are not meeting data milestones or strategically waiting for the ideal moment to file your patent application, Chief IP Counsel cannot afford to file all patents and enter every market. In a first-to-file world, many IP Chiefs are looking to trim their portfolios in an efficient manner in order to cut costs and free up spending.
Planning ahead to manage your intellectual property is crucial, but requires buy-in from your senior management. Chief IP Counsel must take on an educational role with their leadership. Ensuring that the leadership team is aware of and able to endorse the IP strategy, and promote a culture where IP issues are a concern for every leader is essential for this buy-in.
The head of IP must also focus on educating the individual employee on future IP goals and concerns. Employees and collaboration agreements can become a risk to a company’s intellectual property. Chief IP Counsel can greatly decrease these risks and avoid filing too early by educating every employee on information sharing, as well as monitoring those scientists who collaborate with academic sources.
A best practice for educating your employees and leadership teams on IP is to provide salient points about the IP portfolio that can be understood by everyone, not just the legal team. Providing need-to-know information in a single PowerPoint slide format will go a long way at educating your team.
“The reality of an in-house counsel is that you must know your technology” Anna Barry, Vice President, Legal Affairs & Intellectual Property at Jounce Therapeutics, Inc. Creating a relationship with your science team will keep you informed and aware of the benefits and drawbacks of pursuing certain patents. Equally as important is informing your scientists of IP concerns and goals so they are aware of their responsibility to protect information and realize the importance of transparency in promising results. Ideally, R&D and IP counsel should consider themselves to be on the same team; each party must value the other as a resource, not an obstruction. Knowing your technology will allow you to effectively protect your IP and pursue patents in a timely.