The ball drops and if we are still awake and not watching the actual event in Times Square, but a replay 3 hours later here in San Francisco, it is now 2019. Another year for new challenges, new goals and new plans.

I like the clean slate of a new year.  Although it can be daunting to look at a blank screen (or piece of paper if you are of the old school type) and start the list of “to do” items for the year, it can also provide a sense of excitement.  Think of all that can be accomplished in the 12 months to come!

What is on the radar for your company?  Would you like to strengthen and enhance your competitive position?  Are you looking towards a new funding round, or perhaps a merger, acquisition or joint venture?  Do you have new project ideas that you’d like to get a start on?

Advance planning can come in handy for getting your IP strategy in line with these goals.

  • Provisional to PCT conversions: strengthening your portfolio
    • How much time remains before the conversion?
    • Do you have additional data or scope of subject matter to add?
    • What additional experiments and results would strengthen the filing?
  • Plan for upcoming national phase filings stemming from PCT applications
    • Does the application remain relevant to your core business strategy?
    • Does the subject matter and claim scope merit filing across a broad group of countries or is a more limited filing appropriate?
    • Are the costs for these filings, translations, and associated attorney fees included in this year’s budget?
  • Landscaping to enhance your portfolio or undertake new project areas
    • What is the state of the competitive field?
    • Who are the major players for IP filings?
    • What are your differentiating features?
    • Is there “white space” for you to claim through new filings or broadening claim scope?
    • What types of claims are being allowed by the patent office in your subject matter area and can you use this information to strengthen your filings?
  • Getting ready for diligence
    • Round up the necessary IP items such as filings, assignments, licenses, employment IP agreements, and 3rd party licenses and contracts
      • Identify “missing” items and issues to address
    • Identify IP strategy and outstanding items that need attention
    • Do you have a clear understanding of your path to market – both securing IP for your product and ensuring against potential landmines from third party IP?

Each of these areas can seem like a large undertaking.  But advanced planning and allocating tasks throughout the year according to needs and budget can make the list much more manageable.  Moreover, by having these tasks planned out, you can delegate them between in-house and outside counsel resources, and not have last minute rush jobs for items that would have otherwise slipped between the cracks.

So ready, set, here we go into 2019!