Get Innovative or Get Dead.

The recent CEO Roundtable held by the Charleston Area Alliance featured guest speaker and presenter Dr. Parvez Wadia, Chief Technology Officer of MATRIC. Dr. Wadia spoke of the importance of intellectual property and how to leverage intellectual property for a competitive advantage. The presentation focused on Technology Commercialization and IP considerations. This presentation was particularly useful for the small business owner.

Dr. Wadia’s Advice:

A formal IP strategy must be developed and integrated with your business strategy

Competitive advantage can only be maximized by effectively leveraging all of the firm’s resources: capital, human resources, IP and work process.

Return on IP strategy should be developed, measured and communicated

Strategy should address criteria for patents versus trade secrets

Understand foreign and US patent laws, opposition strategies, enforceability, working requirements and damage recovery is critical to resource management.

Recognition that “best mode” disclosure without highlighting commercial practice will require additional R&D and legal resources

Timing for when to file a patent can be complex issue for large R&D projects with aggressive timelines.

Patent filing must be carefully coordinated with “offer for sale” and “first commercial use” to prevent in-validity.

“Submarine” and “work process” patents pose a special challenge in the US and must be proactively managed.

Technology licensing programs require special IP considerations.

Ability to practice your own patented invention should not be confused with “freedom to operate” legal opinions.

Early involvement of IP attorney in research planning and FTO opinions is crucial.

IP portfolio management for cost-value optimization requires vision and discipline.

Organizational “white spaces” in large companies can result in IP value destruction

Inventor recognition is important, but should not be used a primary mechanism for rewards

IP strategy must critically examine competitor patents and utilize patent mapping tools

Rick management strategies based on probability of infringement action and level of commercial impact should be developed.

Most challenging IP issues for senior executives involved low probability of infringement but very high financial impact; including injunctions targeted at large integrated manufacturing operations.

Dr. Wadia also addressed the importance of having an IP attorney. Personally, I could not highlight that particular point enough. At my last organization I was involved in a federal suit involving trademark violations and infringements (not a patent, but similar issues). It was a great learning experience and we came out on top, but immediately after resolving the case, we were hard at work on solidifying all our trade marks, logo’s and other intellectual property.

If you would like more information or would like Dr. Wadia to present this information on IP to your business group, you can find him here.