There is a myth within the IP world that maintaining intellectual property is the domain of larger companies and is not suited for Small and Medium Enterprises (SMEs); and that larger organizations reap huge benefits by protecting their products and services, discouraging competition, and creating new revenue streams by investing in IP (and effective IP strategies).
But recent studies by WIPO highlight that SMEs that have at least one IP right are 21% more likely to experience a growth period.1 However, fewer than 9% of SMEs owned at least one of the three main IP rights (patent, trademark, and design). While a growing number of organizations realize the immense value their IP assets hold, they lack the appropriate infrastructure and IP strategies to assist them in effectively performing tasks throughout the IP lifecycle.
Keeping these points in mind, we’ve developed this article which describes the challenges faced by SMEs when managing IP assets, and the strategies to mitigate them. We also highlight why it’s important to adopt an IPMS early on, the parameters to consider while choosing one, and how an automated solution can help organizations with a growing IP portfolio be more efficient, reduce risks, improve accuracy, and more.
IP Strategies to Address Challenges Facing SMEs
Stage 1: Ideation and Patentability
The first challenge that SMEs face is during the ideation phase. When an SME’s inventor comes up with a novel idea, it must be evaluated for patentability to avoid patent rejections later on, therefore saving time, money, and precious resources.
While in-house inventors can conduct patent and non-patent literature (NPL) searches on their own, it is advisable for them to seek assistance from a trusted and experienced IP expert who can perform the searches with the proper (and sometime expensive) tools such as state-of-the-art search software, as well as leading patent websites, and databases (depending on the customer requirement).
If you’re interested in patentability searches for your next breakthrough idea, click here.
Stage 2: Patent Drafting and Filing
The next stage where SMEs struggle is the patent drafting and filing stage. Drafting a patent is an important step as the fate of the application, i.e., its acceptance or rejection, is contingent upon how well an application has been drafted, researched, and the appended drawings/illustrations have been prepared. Any discrepancies in the application matter and/or drawings, or even missing references may result in the rejection of the application, ultimately leading to loss of time, resources, and money.
The best IP strategy to increase the chance of application acceptance is to work in collaboration with a seasoned team of experts experienced in providing end-to-end patent drafting and filing support. In case you’re looking for such support, we recommend you consult with an attorney or law firm that specializes in your technology area.
Stage 3: Patent Prosecution and Grant
Yet another stage that appears to be an insurmountable undertaking is patent prosecution. Like drafting and filing, the fate of an application also depends on meticulous prosecution. During this process, the application undergoes a stringent examination/review process, and only if the application passes the review, the application is granted.
As the IP prosecution process varies across geographies, it’s imperative for applicants and/or their representatives to acquaint themselves with the process and requirements of the target jurisdictions. Jurisdictional knowledge will help reduce the risk of application rejection and subsequent losses in terms of resources, time, and costs.
Keeping in-house resources updated on the latest rules and regulations of target geographies can often be tricky. It’s, therefore, a good idea to get support from outside counsel with the knowledge and expertise within the jurisdictions you’re filing. If you have the expertise internally, and are planning to submit a patent application for prosecution yourself, you might want to explore MaxVal’s Docketing services and Symphony, our fourth-generation IPMS, to save time, costs, and resources.
Stage 4: IP Renewals
Quite often, applicant(s) who are granted the desired IP right(s) find it difficult to pay the appropriate maintenance/renewal fees properly, and on time in order to keep them active. The most common reason for this is that the IP departments aren’t aware of the deadlines or process, or are often tied up in other IP activities. This ultimately results in loss of IP protection, increased risk of infringement, and long-term financial loss.
If you want to do away with the headache of filing renewal/maintenance fees on time, we recommend you check out MaxVal’s Renewal Services, MaRS.
Stage 5: Scaling IP Portfolios
Yet another challenge facing applicants after renewals is related to scalability. Once an SME has a decently sized portfolio, the next crucial step is to scale the portfolio to ensure that they cover the necessary technology areas and geographies.
Due to the wide range of ongoing IP activities, expanding portfolios across technologies and geographies becomes a complex task for in-house IP departments. It is, therefore, important for SMEs to look for outside counsel that can do the heavy lifting for them. If needed, they can collaborate with IP solution/service providers who can provide them with the necessary support.
In addition to having IP strategies in place, small-scale organizations with growing IP portfolios must choose an efficient IPMS early in their journey, one that can scale with them as they grow.
The modern-day IPMS offers a wide range of IP capabilities – optimizing IP processes, tracking IP application status (docketing), improving efficiency, as well as saving time and costs.
Below we’ve listed some of the parameters that organizations should consider before choosing an IPMS for their business needs:
Automation and Workflow
Manually performing IP activities is both inefficient and expensive. By deploying an IPMS with built-in automation and workflow capabilities, businesses not only address the aforesaid challenges but also reduce errors, missed deadlines, and ensure higher productivity to drive business growth.
When it comes to intellectual property, maintaining confidentiality and security are non-negotiable. A good IP Management Solution is one that not only efficiently manages customers’ IP data but also ensures its security and confidentiality at all times, and does so consistently, flexibly, and in a granular fashion.
Many organizations believe that IP Management Solutions cannot be tailored to their specific needs and processes. Or if they do so, it will be costly and difficult to upgrade. Unfortunately, that’s because they are used to old, legacy software solutions that are hard codes and inflexible. Most advanced IP solutions, however, allow configuration of fields, modules, workflow and integration capabilities to satisfy both simple and complex IP processes; and all without the headaches of development cost and upgrades.
As your organization grows in size, you will need your IP management solution to integrate with internal solutions and databases so that you can get a broader picture of your IP status, and automate manual processes. Most advanced IP management solutions provide integration capabilities out of the box. This enables your organization to seamlessly connect with your HR, billing and invoicing, IDS management, e-signature, and SSO platforms.
The real value of IP depends on how well it can be leveraged so that an organization can maintain a competitive advantage within its industry. And, the ability to leverage IP is contingent on how well it is managed. For growing organizations with expanding IP portfolios that intend to drive business growth and revenue, having trusted experts as advisors and deploying robust IP management systems are key.
If you are one such organization that’s looking for an all-encompassing IPMS, we recommend exploring Symphony. From invention capture and docketing to annuity management, Symphony brings all facets of IP management to one platform. With powerful workflow automation and unprecedented access to global patent data, it enables you to elevate your IP management.