Best Practices for
Managing your Intellectual
The role of intellectual property in our knowledge based
economy continues to expand. Globalization and trade liberalization have increased the importance of foreign IP rights.
Further as the pace and complexity of technology continues
to race forward, patent worth is increasingly in the collective
value of a portfolio as a whole and not in individual patent assets. As a result, the size and complexity of patent portfolios
have increased escalating the need for comprehensive and
strategic patent portfolio and litigation management.
Strategic patent portfolio management
Strategic patent portfolio management requires understanding
the relevance of patents to your business. As patents can be
used defensively, offensively, or as marketing tools, it is important to align patent prosecution, acquisition and maintenance
with your corporate strategy. Each application filed or acquired
should be assessed to see how it fits into your portfolio.
Move beyond monitoring due dates. Understand each patent asset and what value it provides directly, or indirectly to
your bottom line and business strategy. Tie each patent asset
to the products it covers and any revenue streams. Rank applications and inventions as high, intermediate and low. Further, conduct patent reviews regularly to rebalance and cull
your patent portfolio. Maintenance costs for a large portfolio
can divert resources from patents that are more valuable.
Design an overall patent workflow. A decision tree on
what, where and when you will file patent applications can
streamline and rationalize allocation of patent resources.
Identify the foreign countries of interest for particular types
of inventions ahead of time and include administration
procedures in your workflow so that signatures and
assignments are obtained early in the process.
The approach should span invention conception to
product release. Procedures for disclosing inventions
should be simple to encourage internal disclosure. As
design changes are made, re-evaluate the landscape to
identify if any additional patent filings are necessary.
Monitor your competitors regularly. Your patent filing and
prosecution strategy can also change depending on the
patent applications that surface from your competitors.
Establish a corporate patent culture and educate all
personnel on the value and relevance of patents to your
business. While management and in-house legal counsel
may be well aware of the importance of obtaining patent
protection, training employees to recognize when patent
protection should be sought, and what developments are
important, will help to ensure that potentially important
innovations are recognized and vetted while minimizing
risk of public disclosure and loss of rights.
Multi-National IP Litigation Management
IP litigation is becoming increasingly global in nature, and
multinational corporations frequently find themselves litigating related IP rights concurrently in multiple countries. This is particularly so in the realm of patent litigation which is both technically and legally complex, time
consuming to manage, and expensive. It is imperative
that in-house counsel employ best practices to coordinate
cases to ensure the most effective, time and cost efficient
result that advances, and does not prejudice, the company’s global business objectives. A few simple steps can
reduce the likelihood of inadvertently taking inconsistent
positions, tainting experts, and avoiding surprise at trial.
Communication is key. Assign one person to coordinate and manage the litigation, and instruct all outside
counsel. Having one person with full knowledge of the
positions and procedures taken in each country greatly reduces the likelihood of inconsistent positions being
taken in different jurisdictions. Create a “back-up” of that
person’s knowledge in the form of a communal playbook
or wiki-server to act as a manual for positions on all lawsuits, available to all.
Schedule regular conference calls among in-house and
all external counsel to provide updates on status, next
steps, and strategy in each jurisdiction. This ensures that
all external counsel understand how their own actions may
affect the strategy and positions being taken in other jurisdictions, how strategies in other jurisdictions will affect
them, and how it fits into the company’s global strategy for
Implement an immediate litigation hold on documents.
Document production requirements vary by country and it is
important to understand the extent of production required in
each jurisdiction before the collection process commences.
Concurrently, set up a central database of all your client’s
documents collected, which is available to counsel in each
jurisdiction, and through which local counsel can review
and produce documents for their own case. Providing external counsel the opportunity to review documents that have
been produced in other jurisdictions but which may not have
otherwise been collected for their own case, reduces the
likelihood of harmful documents unexpectedly appearing
Prior to contacting a potential expert witness, know and
understand the preferred “rules of engagement” in each
country. For example, courts in some countries prefer a
technical expert consider the prior art before reading the
patent, while in others it is not important. Some prefer experts who conduct their own independent prior art search
to locate asserted prior art rather than it being provided to
them by counsel. Initial discussions that do not follow a protocol that satisfies each country’s rules may inadvertently
taint or cripple the expert in some jurisdictions.
Following these few guidelines should assist in minimizing
the risk of inconsistencies in position and surprises brought
about by the increased complexity of concurrently litigating
related patents in multiple jurisdictions.
Authors: Andrew McIntosh and Carmela De Luca
Partner | Toronto
Carmela De Luca
Partner | Montréal
Bereskin & Parr is a leading Canadian intellectual property law firm, with a global reputation as one of the largest and most experienced in patent
and trademark law. The firm and its award-winning professionals are consistently ranked as the benchmark for IP law in Canada.