Appreared in November 2023 Smart Business

An interview with Dominic Frisina by Adam Burroughs

An Intellectual Property (IP) portfolio is a company’s entire book of intangible assets — patents, trade secrets, copyrights, and trademarks. A well-managed IP portfolio captures value created by employees, providing an effective business tool. In the absence of sound management, value and opportunity will be lost.

“Any company that lacks deliberate IP management is squandering its most valuable assets,” says Dominic Frisina, Partner at Buckingham, Doolittle & Burroughs, LLC. “They are without a doubt ceding strategic advantages that they should be safeguarding.”

Smart Business spoke with Frisina about how to strategically manage an IP portfolio, particularly patents and trade secrets.

What is effective innovation management?

Effective innovation management is an end-to-end endeavor beginning with employee onboarding and ending with expiration or sale of the IP asset. Between these two endpoints, much of the heavy lifting is done through invention disclosure and review programs.

Invention disclosure programs are how the company keeps innovation aligned with business objectives. This is where the company learns of its employees’ innovations and chooses the best means of protection. Critical pieces of information must be captured quickly and efficiently to avoid legal traps that could destroy patent or trade secret rights, so the process must be systematized and form driven.

What makes a good invention disclosure and review process?

A well-designed invention disclosure form will elicit not just critical dates, but also a good invention story. That story will be helpful to convince a patent examiner to allow your case and, should you ever have to enforce your patent, the litigators will need a good invention story to convince a jury that your complex technology is an important contribution, worthy of protection.

Invention disclosure forms help an invention review team quickly understand whether the innovation should be patented or held as a trade secret, and understand its potential value as a business tool. Not every invention should be patented, and not every patent is equally valuable. Some inventions are adequately protected with a single domestic patent. Others warrant multi-jurisdictional families of patents covering a plurality of related technologies.

The invention review team should cover at least three distinct skill sets: they must understand the technology, how the technology comports with business strategy, and the legal nuances of IP protection. Frequently, the team includes an engineering manager, a business executive, and a patent attorney.

The team should be involved not just in invention selection and timing, but also after filing a patent application. A patent may go through several rounds of amendment during prosecution. Every time the claims are amended, especially to avoid prior art, they may become less valuable. The invention may have seemed in perfect alignment with business objectives at the time of filing, but is that still the case? Your team must reassess the situation in real time to decide whether and how to pivot.

How can data aid the innovation management process?

Effective innovation management is data-driven. Anyone who has ever managed a budget knows simple cost accounting ratios that help to put data in context. The same is true in managing innovation, but sometimes the data is not necessarily costs. For instance, many companies find it helpful to keep track of the number of claim amendments and the number of Requests for Continued Examination (RCEs) — the U.S. Patent and Trademark Office publishes statistics that can serve as a reference point. If your cases are consistently above average in claim amendments or RCEs, you should ask why. Some track the percentage of disclosures that issue as patents. There is no right or wrong number. You are looking for deviations from the norm that apprise you of problems.

If you are operating without a deliberate and definable innovation management plan, or you are not confident that your practices are operating as planned, you should talk with your patent counsel to keep innovation effective and profitable. ●