Understanding the Challenges of IP
Cobblestone Software is commonly approached by leading companies asking how to better track their creative works, such as patents, trademarks, service marks, copyrights, and other intangible creations, formally referred to as intellectual property (IP).
Many creative authors, inventors, publishers, and designers spend countless hours on research, development, and thought to create their IP, making it extremely valuable to them and their organization.
We get to enjoy creative efforts in the form of movies, music, books, articles, pictures, television shows, computers, cell phones, cars, and nearly every other aspect of our existence. So, shouldn’t these efforts be valued and handled by taking every aspect of them into consideration? Managing patents, trademarks, service marks, copyright, and other IP is a challenging task, and it is recommended that an expert, or IP attorney, handle the filings and registration since navigating the complex work of IP is daunting.
According to the United States Patent and Trademark Office (USPTO), a patent is a license grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Once a patent is issued, the patentee must enforce it without the aid of the USPTO. The responsibility of the patentee, or creator, includes the filing process, enforcement, and compliance. Copyrights, service marks, trade names, and other IP follow similar processes. To learn more about IP meanings and regulations, visit https://www.uspto.gov/.
This blog offers some simple advice for tracking corporate IP with contract management software. I am not an IP attorney, and it is advised to seek legal advice from your organization's attorney, but we will dive into aspects of IP management and how many organizations use Contract Insight™ Contract Management Software to manage their IP.
Manage Your IP Better
A leading pharmaceutical company’s legal team recently approached CobbleStone Software with questions on how to extend their use of Contract Insight™ Software for managing their IP. With a few quick configuration steps, they were up and running (without incurring a large expense).
Managing IP presents challenges with registration, approval, maintenance, and compliance. I have outlined how to address those challenges by utilizing a legal contract management software to help you better manage your IP.
Each phase of the IP tracking process has been broken down to provide readers with a step-by-step guide to using Contract Insight™ Software for IP management.
IP Data Elements
IP typically has its own lingo, data fields, and terms that differentiate from normal contracts, licenses, and grant documents. These data elements can include:
- name of the IP
- the description or process
- date of invention or creation
- exhibits such as images, processes, and diagrams
- registration date
- challenges (if any)
- and other fields depending on the category of IP.
The IP registration, approval, and maintenance stage is complex and is based on the IP type.
Patents require, depending on the goal, conflict searches, provisional patents, utility patents, patent submission, registration, examiner review documents, re-examine, re-submission documents, exhibits, reference documents, challenges and other steps to obtain and maintain a patent.
Trademarks and service marks require routing filings, proof of use, and annual or routine maintenance fees. For the medical field, your process may require clinical trials, testing, and other regulatory oversight. If your organization hires or retains individuals to develop IP for you, ensure they have a non-disclosure and creative work agreement clarifying who owns the invention or creative works.
Each other IP category has similar processes. The data elements can be complex, but with a modern contract lifecycle management software, your daily duties will be easier and more enjoyable.
Licensing Your IP
IP management involves some obvious challenges. After the IP is pending or approved, there are several other steps to ensure the value of the IP is utilized, protected, and monitored. For example, will your organization license the IP to others?
As an IP holder, you may want to license, sell, or transfer your creative works. The IP holder has many options to choose from depending on the type of IP:
- You may choose to issue a right-to-use agreement (such as a license), or a product grant, for patents such as an innovative part in your cell phone, new medical device, or chemical process.
- If you’re a writer, you may choose to license a publisher to produce books for your content.
- You may choose to simply manufacture, distribute, and sell direct like the company with the world’s favorite mouse.
- You may choose to transfer your IP to another party or sell it.
No matter which of these options you choose, you must take into consideration: How will a legal professional manage disputes, challenges, demands, infringement claims, and litigation for my IP? How can we easily monitor these licenses and distribution rights, and control work agreements, revenue/royalty agreements, and other associated costs?
Workflows and Alerts
Our clients often ask, “How can I manage all the tasks and steps required to perform for each of our patents and other IP?...with all the filings, approvals, audits, payments, and other IP-related tasks, how can we be sure each step is documented, assigned to the appropriate personnel, performed on time, and progressed to the next step?” CobbleStone has a simple solution – and it comes in one configured package.
Let’s talk about how CobbleStone's Contract Insight™ Software has been used.
Step one – Identify and examine the type of IP and key data fields you need to track.
Step two – Identify the employees and actions needed for each step. Build in checkpoints to ensure you don't infringe on others’ IP. Identify all the stakeholders.
If you recall earlier in this article, the challenge to collect and track data fields for pending IP was explained. Modern contract management software enables users to add additional fields on a screen. The combination of fields is called a record. In Contract Insight™, we start by defining a contract type. In this case, we will name it a patent record.
Step three – Define and assign common fields like:
- Patent/IP name
- Sponsoring department
- Primary employee (responsible)
- Start date
- Next reminder date
- Anticipated cost/budget
- Status (such as pending, canceled, approved)
- Registrant name
Step four (optionally) – Add a simple sub table for participants, including name of participant, legal address, role (consulting, employee, royalty/shareholder, etc.), royalty percentage, owner of IP (Yes/No), to name a few.
Step five – Enable workflow to trigger for each step so the assigned user will receive alerts reminding them to take action on tasks like creative work/IP development [novel use, exhibits, process, clinical trials, drawing, contract documents, etc.], initial application prep, legal review, application submission, app monitoring, re-submission (if needed), approval monitoring, licensing, distribution, revenue tracking, and annual/routing filing alerts.
Step six – Finally, configure a table for monitoring competitors, trade journals, other IP filings, customers, past employees, consulting, and news and press releases. These tasks track the employee responsible, start and due dates, advance alert warnings, description, document requirements, filing required, and status.
As a bonus feature, Contract Insight™ includes delegation and escalation of tasks if the task is late or the responsible person is out of office.
Contract Insight™ includes price/cost tracking, making it easy to track costs with IP such as legal fees, consulting, experts, testing, trails, and certifications. It also makes it simple to track revenue such as income received for the IP and related contract if a distributor, or a licensed party, must submit royalty payments. It becomes easy for legal professionals to track shareholders and royalty partners (if applicable). Lastly, the system offers reporting to monitor next steps, filings, and related obligations and integrates with many other software systems.
Contract Insight™ Can Help
Legal and risk professionals have a complex challenge with managing their IP. We know that this article cannot cover all aspects of IP management, but with a flexible software system we can easily track the data fields necessary, store related documents in our IP record, track tasks, search, run reports, workflows, and alerts, and make our legal duty of tracking IP much easier. Contact a CobbleStone Account Representative today to learn more about the benefits of utilizing contract management software.