30 Aug 2020
In the digital age, businesses document nearly everything. Systems, processes, policies, and procedures are recorded in countless files and stored in unlimited server space — a virtual landfill of data. And yet, despite seemingly drowning in information, leaders of tech organizations often find themselves starved for knowledge.
“Why do we use this accounting software and not one of the others?”
“Didn’t we try that five years ago? What happened then? What’s different now?”
“Why did we think this patent application was valuable when we filed it?”
Institutional Knowledge: What it Means, and Why it Matters
These subjective, often anecdotal bits of information make up an organization’s collective “memory” — also known as institutional knowledge (or “IK”). And although experts have been talking about IK for years, businesses still struggle to capture the innumerable side conversations, handshake deals, and other transactions that happen between human beings in real-time — before that valuable knowledge evaporates into the ether.
In patent portfolio management, it’s especially important for leaders and counsel to preserve and even leverage institutional knowledge. Patent portfolios are complex — they represent not only weeks and months of drafting and logistical work, but also the less tangible strategic decisions that provide context and meaning.
While there’s always plenty of documentation around a patent application, many important details can still escape being written down or preserved in a formal filing system. In fact, many things are best left out of those records — such as the strategy or rationale behind using certain wording in an application. Many times, the only way to fully understand such nuances is through the company’s institutional knowledge.
A typical patent application has a life span of at least two to five years — and sometimes as long as 20 years. During that time, inventors may leave an organization, and other staff may turn over. In other words, a single patent application has a good chance of outlasting at least some of the people responsible for it. All too often, it comes down to a few key individuals who end up retaining and passing along information about the patent application.
Access to institutional knowledge also increases time-efficiency, which often translates to cost-efficiency. Quite simply, when someone can remember something about a patent application, they don’t have to take the time to go back and look it up. An average patent application can be tens of thousands of words long. Multiply that by 20 to 50 patent families in a typical startup’s portfolio — and you can see how it becomes impossible (or at least cost-prohibitive) to leverage that data without help from someone who knows the portfolio first-hand.
Long story short, it pays for tech leaders to curate and cultivate institutional knowledge. Those who can effectively manage both the technical content of their patent applications — as well as the cultural, relational, and contextual “stories” behind them — are in a better position to maximize the value of their patent portfolio.
Here, then, are some actionable suggestions for accumulating, capturing, and harnessing your organization’s institutional knowledge:
Institutional Knowledge: How to Grow It
- Build a solid, core team of patent professionals. This includes outside counsel, an internal patent committee, and individual patent managers. Focus on the long-term, which means investing in a relationship with trusted outside counsel.
- Build in redundancies. If one person leaves the team, then make sure there’s someone else who knows what they knew. Encourage collaboration and knowledge sharing among team members. Use exit interviews to capture key facts before an employee departs.
- Use caution when transferring cases between firms. If you must transfer cases between firms, do it with the intent of building or consolidating — adding to one firm’s purview rather than dividing information among firms. Sometimes it’s unavoidable, so do your research and make sure the new firm is a good fit.
- Hold periodic portfolio reviews. Bring the team together from time to time and check in on the status and content of the portfolio. Let team members know what’s happened in the past, what’s going on now, and where things are headed. Meetings like these will ensure a slow, organic, and reliable accumulation of knowledge over time.
- Lose less. Once your organization has built up its IK, develop systems and processes to help preserve it.
Institutional Knowledge: How to Use It
- Portfolio mining. Suppose your tech company wants to protect an invention that was developed three years ago, and you need to know if the invention was disclosed in any of the company’s existing patent applications. Perhaps the invention wasn’t important three years ago, but it’s recently become more valuable — either because you’re taking it to market, or because your competitor is using something similar. If you can access the institutional knowledge of people who know the company’s patent portfolio first-hand, you may discover that your organization described the invention in an earlier application. For example, the invention may have been “dropped” into a patent application on another subject, and in that case, you might be able to claim the invention with an earlier priority date (e.g., in a continuation filing). Often in this type scenario, the most efficient way to mine your patent portfolio for hidden gems is through the institutional knowledge of your team.
- Avoid prior art. If your team has a new invention and wants to file for patent protection — but you’re not sure whether your organization (or a competitor) has mentioned it in a prior patent application — go to your institutional knowledge base. Those familiar with your patent application history may be able to quickly recall whether your team or a competitor has created prior art on the idea. For more information about your organization’s own applications serving as prior art, please refer to our previous article. Of course, you can always conduct a prior art search, but that can get expensive and even a thorough search might not capture all the information that would be accessible through a well-developed body of institutional knowledge.
- Prosecute more efficiently. When you can build continuity of institutional knowledge among your internal stakeholders and your outside counsel, it can significantly streamline the patent prosecution process. The vast majority of patent applications are initially rejected by the patent office, and so it becomes necessary to respond to the patent examiner by presenting arguments or amendments that will overcome the rejection. In that scenario, it’s important to step back and consider 1) the purpose or intent of the patent application, 2) the content of the application, and 3) the relevance of the prior art cited in the action. When the attorney who actually wrote or helped draft the application is still involved, they’re often so intimately familiar with the intent and the content of the filing that they can quickly ascertain the strength of the rejection — and then just as quickly identify arguments or amendments to address the rejection — without re-reading the entire document. In short, leveraging institutional knowledge in the patent prosecution process can save money and improve your chances of success.
- Draft more effectively. With an understanding of the intent, content, and context around an existing patent portfolio, the professionals who are drafting new patent applications (to grow the portfolio) can work much more efficiently. A new patent application typically describes an improvement or an innovation in the context of technology that has largely been described in a company’s prior patent filings. So, rather than writing an entirely new patent application from scratch every time, the drafting team can often “graft” language from those existing documents into the new one — saving hours of billable work and leveraging value from the existing portfolio. In this way, institutional knowledge becomes a drafting tool that can improve the content, value and efficiency of new patent filings.
Institutional Knowledge: Want to Know More?
How does your organization build and sustain its institutional knowledge? And how does that knowledge inform and enhance your patent strategy?
Aside from the obvious, there are a number of reasons why leaders in tech should seek long-term, strategic relationships with patent law firms to help manage their patent portfolios. Perhaps most important, the right counsel will help accumulate, retain, and perpetuate your company’s institutional knowledge — so your business can maximize the value and potential of its inventions.
Henry Patent Law Firm is here to help you develop institutional knowledge around your patent portfolio, and harness its potential. Get in touch to see what we can do for you!
Michael K. Henry, Ph.D.
Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.