By Devin S. Morgan, Intellectual Property Consultant (Published Apr. 19, 2004)

The path to securing your intellectual assets through patents and other intellectual property should begin with an in depth assessment of your technology. The assessment will allow you to identify and evaluate your innovations to make informed decisions about how and when you should protect your technology. If you have acquired or applied for patents in the past, the assessment will assist you to focus your future efforts. Even if deadlines have been missed or resources are tight, the assessment is an important prerequisite for managing your intellectual assets and developing patentable technology in the future.

Your technology is a key market differentiator and one of your most valuable assets. It includes both your products and the way you manage and deliver your services. In many markets, your technology is the heart and soul of your value proposition. It allows you to differentiate your product, serve your customers better, improve your internal processes, and define your market niche. In today's innovation-driven economy, you do not need to be a company with a technology product to need technology protection. Failure to protect your technology limits future options, squanders latent value, and effectively strengthens your competitors.

Not coincidentally, innovative technology can be protected by patents, the most powerful form of intellectual property protection. Trademarks prevent your competitors from hijacking your brand. Copyrights protect your software, documents, and other materials from being copied. Trade secrets prevent others from using wrongfully gained information. Only patents prevent competitors from all use of your technology. Even if they later develop the same technology on their own, they will need your permission to use it. This makes patents a valuable strategic tool and the stock and trade of technology transfer. The downside is that patents are expensive, slow, limited duration, and require compliance with a stringent application process. Proactive management is required to preserve your rights, make strategic development decisions, and control costs.

The best way to assess the options for protecting your technology is to create a framework for thinking and talking about it. Once you have developed the framework, you can organize important information and make some basic judgments to guide your resource allocation decisions. The following technology assessment takes you through the steps of developing and using a framework to make decisions about pursuing patent protection.

The technology assessment includes six steps:

1. Identify your products and services-list all past, current, and proposed products and services;
2. Prepare a technology model (block diagram or outline) to describe the architecture, components, and features of the products and services;
3. Prepare timelines for the development, first sale, and release of each product, service, component, and feature;
4. Classify the strategic importance of each product, service, component, and feature:
· External - technologies that you did not develop, but underlie or are used in your products and services
· Core - technologies you developed that are fundamental to having a competitive product or service in your chosen market
· Enhancement - technologies you developed that improve your product or respond to a limited market niche
· Unused - orphaned technologies that you developed but are not used in current products or services and are unlikely to be incorporated in the future;
5. Evaluate whether patent protection is clearly unavailable for each product, service, component, and feature; patent protection is not available if:
· You did not develop the product, service, component, or feature
· You know that someone else developed and released the product, service, component, or feature before you
· You sold or released the product, service, component, or feature to the public more than a year ago
6. Make resource allocations with regard to further analysis, protection strategies, and preparing patent applications-focus on core technologies first.

The majority of this assessment can be completed internally by someone familiar with the products and services of the company. You and your team are well-qualified to organize your technology and determine what features are product-defining, original, and valuable to customers and competitors. The process of defining a framework for your technology will also help to productize past projects, evaluate sales and pricing approaches, direct future development, and communicate your technology's value to customers, partners, and investors. The assessment process will allow you and your advisors to weed out technology that does not meet the minimum legal or strategic criteria for various forms of protection. The goal is to prioritize candidate technologies so that you can make informed resource allocation decisions and maximize the ROI of your IP investment.

To increase the value of the assessment, there are a few things to keep in mind:

· Take a broad view of the products, services, components, and features that can be protected through patents, trade secrets, and other IP-software, business methods, documented know-how, feature improvements, manufacturing processes, databases, etc.;
· Be overly inclusive when identifying products, services, components, and features-it is better to rule things out later than to miss them in the initial assessment;
· Consider your business model (and alternate business models) when building your technology model-you should organize your technology in a way that reflects how you actually provide it to your customers;
· Everyone organizes things differently (and that's OK)-the point is to provide a framework for systematic analysis, description, and management of your intellectual assets;
· Write down questions and issues-the assessment is likely to raise legal and strategic questions that you can raise with your advisors later;
· Do it now-sales, marketing, public disclosure, or use of your technology may have already started the clock ticking, every day that passes can reduce your strategic options
· Help is available-your attorney, consultants specializing in intellectual property strategy, and other advisors are available to support your efforts and answer your questions.

The assessment is an important learning opportunity for the company and you should be careful about outsourcing too much of the project and compromising the self-knowledge it creates. Consultants can improve project efficiency and reduce the delay, distraction and possible mistakes that come with trying something new. However, care should be taken in selecting and working with them to ensure that you learn from the project and have an end product that will support your on-going efforts to develop and manage your intellectual assets. Once you have completed the technology assessment, a more detailed analysis of specific product/service components, features, and competition may be required to evaluate the likelihood of patenting success and strategic business value of various protection strategies. The results of the assessment should help you to identify and communicate your needs to your advisors, as well as providing materials that should assist in preparing a patent strategy and disclosure documentation. It is generally recommended that you engage a patent attorney to assist with the filing and prosecution of any patent applications you decide to pursue.

Devin S. Morgan (devinmorgan@comcast.net) is an intellectual property consultant focused on intellectual asset management, venture facilitation, and technology transfer.

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