Our researchers keep submitting invention disclosures – where do we allocate our scarce resources for IP development?

Many academic institutions, non-profit research organizations, or large corporate R&D organizations have a peculiar problem – while the scientists are constantly challenged to invent and innovate, the financial resources available to protect the intellectual property created falls significantly short of what is required to protect all that is generated by the scientists and engineers. As such, with mounting legal costs for patent filing and prosecution, and ongoing maintenance of the patent portfolio generated, it is critically important to devise patent strategies that align each patent filing, and each claim under prosecution, with the underlying business rationale and market opportunities of relevance to the organization.

SI has advised multiple research organizations (in academia or in industry) in developing a targeted IP strategy that extracts the most value and benefit from the scarce resources allocated to IP filing and prosecution. SI’s market focused approach is an important complement to the efforts of in-house or outside patent counsel. Typically, SI’s process involves: a) assessment of the business interests and strategies, as well as a new technology's unique features and capabilities, to guide patent portfolio development, b) review and validation of the market opportunity associated with each technology offering to assist in making go/no-go decisions around patent filings and continued prosecution, c) supporting commercial development and improvements in technology by developing patent strategies that support out-licensing and commercial opportunities in established and/or emerging markets, d) improving value of IP by aligning patent prosecution with business goals, and e) defining a competitive business landscape using IP analysis, allowing for a clear definition of an early technology's competitive position in the market and evaluation of key freedom to operate issues. These efforts have resulted in 30-50% cost reduction in IP related expenditures, and significant increase in the value derived from an organization’s existing IP portfolio, following SI’s engagement to oversee and manage the client organization’s patenting strategy.