IP Strategy

“There’s no sense in fighting about ownership of an idea.
The real conversation is about how you both make money from it”.
David Simoes-Brown
Tool Step

Role of this tool

This helps us discuss and agree the appropriate approach to intellectual property, often a key barrier to productive partnerships between firms. Given that IP law is complex and specialist, we use this tool to order our thinking about intellectual property to support initial discussions with our innovation partner. We should also use the tool to brief an IP specialist to help develop the details and check our thinking.

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How do we use it?

1. What advantages are there to an open innovation approach?

Here we aim to understand and review why open innovation is the right choice – what is the driver? (Consult Open Innovation Manifesto if you have completed this exercise. Review the ‘Why?’ question)

2. What sort of innovation is involved?

Here we define the form, phase and type of innovation involved or likely to be involved.
Form: What exactly does the innovation consist of? Why is it different to existing products or services?
Phase: How close to market is the innovation? How much is still to be invested before it launches?
Type: Is it a service, a product or a process? Is it a design, brand or behaviour?

3. What type of open innovation is involved?

Here we define the nature of the open innovation partnership. What other entities are involved? What is the relationship between these entities? Is there any independent 3rd party with a role? Who is funding which part of the programme? (See Open Innovation Models for a range of partnership options)

4. What is the IP maturity or sophistication of each entity involved?

In this step we evaluate where each entity is on a spectrum of IP experience and expertise (e.g. inexperienced, low, medium, high and expert). What have their previous approaches to IP been and have these been successful? Do they have a clearly defined plan for IP as part of their business model? What does each entity hope to achieve from an IP perspective?

5. Who is taking the lead on IP matters?

Here we aim to really uncover who is in control of the rules of this IP ‘game’ – is it the large firm, one of the other entities involved in the open innovation partnership or some other 3rd party?

6. What are the IP rules?

Within the legal framework governing this open innovation partnership, what are the IP rules or terms and conditions? What rules need to be defined and agreed? There is often a legal framework in place governing open innovation programmes and here we examine such issues as the definition of IP, foreground and background IP, ownership and usage of the IP in the future and what happens to new IP if it develops from the partnership.

7. What are the IP strategy and action plans?

Here we summarise the strategic IP objectives for each open Innovation Partner. Then we plan what actions need to be progressed to make this a success for all entities involved.

8. How will we measure and monitor?

Firstly we put in place a process for monitoring IP as the relationship progresses. We should check that all entities involved are following the IP terms and conditions defined in our framework. And given that it is innovation, we need to monitor any new value that is being created and how this is then being protected from an IP perspective.

Three examples of measurement:
– Our company is working with a number of universities on some joint research: We may wish to monitor the flow of inventions plus any publications coming out from that research project, and if and how those inventions are being analysed and decisions taken about patent applications being filed.
– Our company is working with an entrepreneur – we may wish to monitor the flow of ideas from the entrepreneur into the company as well as any IP related issues or concerns being raised by him or her and resolved.
– We are running a Government-funded program involving multiple parties big and small. We may wish to ensure that IP issues are recorded and discussed at project milestone reviews.

Source: Donal O’Connell


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