Intellectual Property Metrics Require Learning Your Client's Business

According to an article by Ronald E. Myrick, Sarbanes Oxely has created new pressures for better selection of what to patent and when to enforce:

It may seem obvious (but in practice it is not) that in deciding what to patent, the most fundamental parameter is the purpose that the patent will serve. Knowing that will guide many decisions, including the decision to file or not. Establishing purpose requires the rigorous involvement of multiple facets of the business, including marketing, engineering and technology. Absent such involvement, the full marketing role of the asset may not be achieved. The purpose for an asset can change along the way, but having a defined purpose for each patent prior to filing makes its use easier to justify. . . .

The key is business-based metrics for the IP program. Merely counting the number of patents filed or issued is useless for most businesses, unless they are relying on the terror factor of a multiplicity of patents. In general, metrics are needed that demonstrate the impact of the patent program on growth. Focusing on such metrics will change not only the number of patent applications filed (up or down), but the type and content of patent applications filed.

Unfortunately, many attorneys for large clients are still in the "just get me a patent" mode. And why shouldn't they be. No one gets fired for getting a patent application allowed. Besides, it's tough to make calls on whether the hypotehical value of protection is really worth the actual cost. But sometimes not doing the wrong thing can be even more valuable than doing anything at all. "'You get what you measure' is as true for IP as it is for other parts of a business," writes Myrick. But only if the folks doing the measurement are willing and able to take the time to articulate an I/P strategy within your business goals before deciding what to measure.

Call me for more information on how to articulate and measure and your I/P strategy, or just click on the following links to related topics:

I/P Metrics in the U.S.
I/P Metrics in Europe
SOX and I/P Metrics
Investor Expections for I/P Metrics
Strategic Legal Sourcing
Simulation for Allocation of Legal Resources
Patent Portfolio Theory
Procative I/P Lawyering
What to Do about Comeptitor's I/P
Where to Start Learning About Your Client's Industry