Effective Patent Asset Management

Edward J. Kelly, a partner at Ropes & Gray, led an informative discussion focusing on both patent asset management and the relationship between inside and outside counsel. Together with Marc Foodman, Chief Patent Counsel at Sun Microsystems, Inc., they focused the lively discussion on the following topics: IP Department infrastructure, patent asset management, settlement strategies and coordinating litigation.

In addressing the hot topic of patent asset management, Edward J. Kelly began by addressing how you manage patents for the purpose of capturing value for your company. It all begins, according to Edward J. Kelly, with good patent prosecution and obtaining effective patents from the domestic and international patent offices that can be of value to your company. The increasing number of patent applications and increasing validity rate have had a significant effect on the way businesses view patents and their importance. For example, most of Sun Microsystem's 3300 patents have been obtained over the last five or six years.

Edward J. Kelly and Marc Foodman identified five essential steps to effective patent asset management.

• Patent Planning: Setting priorities and targets for your technologies is a necessary step that is often neglected.
• Educate & Communicate: Establishing a patent review committee is an effective way to help educate the relevant employees on the patent process.
• Capturing R&D Investment: Because it is cost-prohibitive to patent all technologies, effective prioritization and cost management is essential to capturing your R&D investment. Selecting the appropriate level of international protection is one of the most important elements of cost management as the costs of international protection is significant.
• Portfolio Management: It is necessary to first develop an organization and understanding of your portfolio. Effective maintenance of your patent portfolio requires a gap analysis and patent pruning. It is important to take advantage of the opportunities update case profiles as well.
• Extract Value & Enforcement: Offensively, licensing both core and peripheral technology as well as the enforcement of your patents are essential tools to extract value from your patents.

In an interesting dialogue regarding the relationship between inside and outside counsel, Edward J. Kelly focused on the job of outside to counsel to lift the burdens of inside counsel. To do this effectively, Edward J. Kelly discussed the responsibility of outside counsel to be cost effective, predictable, responsive and trustworthy. Understanding the ultimate goal of the patent is an important component of the relationship. For example, if the goal is to be able to license a core platform for various often unforeseeable uses, outside counsel will design the patent very differently than if the patent anticipated use is relegated to a specific product. Finally, both Marc Foodman and Edward J. Kelly agreed that the personality fit between inside and outside counsel is one of the most important components of the relationship.