9. Expansion and growth

Expansion and growth will usually entail recruitment.  When identifying talent it might be worth taking into account any IP experience that applicants have had and particularly experience in the patenting process.  If a new hire’s experience of patents has been relatively painless, they may not only be likely to identify patentable innovations but will be likely to push these forward and remain engaged throughout the process.

IP education of new joiners will be an important part of the process.  New joiners should be made aware of the IP strategy and of the company’s objectives.  Online IP training may be an efficient way to bring them up to speed quickly.  Of course, the need for confidentiality should be driven home to reduce the risk that key IP is disclosed prematurely, particular when new joiners are coming directly from an academic environment in which publications are a key focus.

Expansion and growth will likely include an increase in the quantity of IP assets.  Assuming that you have in place an efficient process to identify protectable innovations (patents, designs etc.), and you don’t have unlimited financial resources to invest in IP, you will likely need a process to filter submissions and identify those that are worth seeking to register.  Commercial relevance will of course be key.  But also think about getting some quick wins, that is IP assets that might be registered relatively painlessly and therefore cheaply.  For patents, this means innovations that are seen as very clearly novel and inventive.  This can be useful in building up the IP balance sheet.  A handy reference to assess whether or not to pursue patent protection for an invention is provided in the Appendix.

Inevitably, filtering out those assets that will not be pursued to registration may result in disgruntled inventors.  If an inventor ends up having all of his or her proposals rejected, he or she might be less likely to make proposals in the future.  This requires careful balancing, and at the very least praise and encouragement.

More IP assets will of course result in the need for more internal resources.  This should be factored in when planning recruitment and when budgeting for future IP spend.  Some re-budgeting will likely be necessary.  This will be a tricky balance as growth will likely entail increased spending on salaries and the like, putting pressure on the IP budget. 

Evaluating your potentially protectable inventions and designs is not limited to a pre-filing exercise and should be undertaken regularly to ensure money is being spent on commercially valuable IP assets as your company grows. For example, perhaps the technology area of a patent application is no longer important to the business.  Alternatively, maybe technology has developed which makes the IP asset easy to work around, or the geographical market for the invention changed.  All of these factors should be considered regularly when evaluating an IP portfolio and as your company grows.  Where an IP asset is no longer valuable or relevant, it may be possible to redirect costs to more important IP assets (e.g. by abandoning patent applications that are no longer relevant).  Alternatively, these assets can be maintained as a “patent thicket” to deter competitors, or assigned or licensed out to other companies to generate income.