IP Fitness Assessments

• What does you IP portfolio look like?
  • Does it protect your current products and products in development?
  • Does it cover variations of your products? competitors products?

• Does your portfolio cover the countries where you are marketing and manufacturing?

• What are you protecting?
  • Are you in early stages of product development – do you have a plan to protect the fruits of your efforts?
  • Have you considered protecting methods of making and/or using your products?
  • Have you protected individual features of your product as well as combinations of features?
  • Are there some features better protected as trade secrets?

• Who own the IP?
  • Does Company control the necessary IP rights?
  • What are the ramifications of shared or in-licensed rights?

• What are your competitors doing and how does their IP impact your business plans?

IP Fitness Planning

Assess the surrounding IP landscape

• Who holds patent rights in the relevant technology and product areas?
• How likely is it that 3rd party applications will issue?
• How strong and deep are 3rd party IP rights and how does this compare with your company’s IP position?

Strengthen your IP position

• Strategies for new and current IP filings
• Assessment of acquisition and licensing targets
• Design-arounds and other mitigation strategies for 3rd party IP risks

Align IP strategy with business goals and timelines

• Commercial
• Regulatory
• Marketing and other public disclosures

Communicate your IP strategy

• Presentation-ready IP strategy slides with visual “dashboards” of landscape and timelines
• Key talking points for IP strategy tailored to product/service, technology and market

Market exclusivity and longevity

• What is the lifespan of the IP covering your products and pipeline candidates?
  • How does this timeline align with any required regulatory review?
• “Pressure testing”:  Have you assessed the potential risk of challenge to key strategic patents?
• Do you have a plan to strengthen and deepen your IP protection for key products and strategic features?

Issues concerning strategic patent rights distribution

• Inventor assignments
• Collaborations and joint ownership
• Licensing terms
• Intracompany IP migration

• Market risk assessment
  • 3rd party patent review – breadth
  • Prior art impact on 3rd party patent strength
• Market landscape & opportunity planning
  • Competitor analyses
  • Patent landscape mapping for target product development areas
• Portfolio Landscape and differentiation
  • Breadth and depth of patent estate for competitor protection
• Pre-litigation risk assessment
  • Analysis of overlap between products and patent coverage
  • Assessment of enforceability and potential remedies