IP Strategy

Patent strategy alignment with corporate strategy helps client prepare for major industry disruptors and fend off NPEs

Emerging threats from industry disruptors and NPEs leads to new focus on IP

The client, a telecommunications service provider, was beginning the process of expanding their business outside of Europe with significant US revenue growth momentum. They recognized they had a fragmented IP team and their R&D teams were scattered across various offices. On a corporate level, there was a drive to increase patent filing to ensure a strong competitive position was maintained, but due to the disjointed nature of the R&D and IP teams, the patents being filed were not always in alignment with the overall corporate strategy and of varying quality.

In addition, while the client was looking to expand and get a better hold of their own IP position, they were experiencing major industry disruption due to the introduction of OTT, Wi-Fi, and other emerging technologies. With the rise of patent litigation in the US and the emergence of more assertion threat in the German courts, they were also becoming a more attractive target for NPEs.

IP Strategy leads to cohesive commercial approach and qualified the risk from NPEs

The first step in addressing the client’s situation was to design an IP strategy that fully aligned with corporate objectives. As a precursor, this included a comprehensive analysis of the competitive patent landscape including in-depth analysis of patent holdings of key operating companies and NPEs. Then a comprehensive operational plan was developed with key milestones, objectives and budgets identified. In parallel, the IP team started to interact more closely with other business units to help raise the profile and relevance of the company’s IP and show how the IP could be leveraged as an integral component of the company’s commercial activities. The IP department began collaborating with the corporate venturing team to enhance the company’s IP position and to communicate the impact of new ventures via organic growth and access to the parent company’s IP.

Outcomes

Over three years, the client consolidated their IP team into a single integrated team. They developed and articulated a clear vision and operation plan for their IP. With their well-communicated strategic direction, they identified key territories for IPR filing. They also implemented the use of a comprehensive database of IP assets visible to their commercial teams. The IP team began presenting public showcases of the company’s IP and Implemented an IP Rewards policies.

To better manage potential approaches from NPEs, the client began an ongoing NPE risk assessment/monitoring process which enabled them to proactively qualify and address threats.

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