In our previous blog we dealt with IP Risk management by looking what it is and where risks typically originate from. In his blog we deal with seven case studies related to IP risk management in general and a special business software tool we developed called the “Alder IP Risk Management Tool“). These case studies involve an up-close, in-depth, and detailed examination of the subject, as well as its related contextual conditions.
The first case study looks at a hi tech enterprise taking the Alder IP Risk Management tool into use, the rationale for this company taking the tool into use, how they went about taking the tool into use, and the benefits it brought.
The second case study looks at an IP Firm taking the Alder tool into use, their rationale for doing so, how they developed a service offering around the tool, and the benefits it brought.
The third case study looks at a Law Firm specializing in the area of M&A due diligence, and why they decided to take the Alder IP Risk Management Tool into use, and the benefits it brought to both the Law Firm and its clients.
The fourth case study looks at a B2B engineering company taking the Alder IP Risk Management tool into use, their rationale for doing so and the benefits it brought.
The fifth case study looks at an IP Insurance Provider taking the Alder IP Risk Management tool into use, why they found this tool of interest and of value, and how they actually utilized the tool with their clients.
The sixth case study looks at a Professional Services firm, why they found the Alder IP Risk Management tool of interest and how they have taken the tool into use.
The seventh case study looks at a medium sized materials technology company going through an exercise to merge two IP departments following an acquisition, and how they used the tool to help them with this integration exercise
Case study #1: Hi Tech Corporation
The company in this particular case study is a medium sized enterprise active in the ‘hi tech’ sector. The company has been in operation since the 90s and now operates worldwide. The Legal / IP function within the company had good people but has limited headcount. The GC of this company faced a number of IP risk management related challenges:
- too narrow a definition of IP in use
- little understanding of the diversity of IP related risks the company faced
- no IP risk management process in place
- no IP risk management system deployed
- inability to always link IP risks and IP risk mitigation actions together
- little understanding of the variety of IP risk mitigation solutions that exist
- challenges with sorting IP related risks into different categories
- difficulties in articulating IP related risks to C level Executives
- no IP risk management governance
The company took the IPEG “Alder IP Risk Management Tool” into use in early 2015. They accepted that the Alder Tool would not magically solve all of these IP risk management related issues but that it would certainly help the company to move up the maturity ladder when it is comes IP risk management. IPEG’s “Alder IP Risk Management Tool” was taken into use by the company’s Legal & IP function with access to the tool limited to just that function. The fact that the Alder tool was easy to install, easy to configure and easy to take into use proved a major USP. This company actually started to use the tool on the same day that the tool was demonstrated to them.
This company adopted a three phased approach when they took the Alder Tool into use:
- Phase #1: The company utilized the Alder IP Risk Management Tool initially only for managing one specific type of IP related risk, in this case Trademark related risks.
- Phase #2: The company then started to gather all historical IP related risks which existed in different places throughout the company (in people’s heads, in e-mails, in different systems, etc.) and inputted all of that historical data into the Alder IP Risk Management Tool.
- Phase #3: The company then started using the Alder IP Risk Management Tool to log all IP related risks and made this tool the de-facto system to help manage IP related risks across the entire organization.
The key benefits for this company were getting IP risk management under proper control and being able to effectively articulate IP related risks to C level Executives in the company.
Case study #2: IP Firm
The IP Firm in this particular case study is an established and reputable IP Firm with offices in a large number of key jurisdictions, employing a few thousand attorneys and with clients across a diverse range of industry sectors. This IP Firm has received a number of awards and accolades over the years. The IP Firm was anxious to deploy a new service offering to its clients in the area of IP risk management, as it saw a business development opportunity. The IP Firm was aware that many of its clients operating in ‘firefighting’ mode when it came to IP risk management. These clients did not have an IP risk management process in place, they certainly lacked any IP risk management tool and had little knowledge of the diverse range of IP risk mitigation solutions which could be deployed. The IP Firm wanted to become the IP risk management trusted partner for these clients. The IP Firm designed and developed an IP risk management service offering for these clients, using the Alder IP Risk Management Tool as one component of this service offering.
The IP Firm’s IP risk management service offering actually consisted of a number of components:
- IP risk awareness & education
- IP risk management process
- IP risk management tool
- IP risk management data
- IP risk mitigation solutions
- IP risk management resources
- IP risk management governance
The IP Firm deployed this service offering initially with a few clients, to allow them to stress test the service offering and adjust the offering as needed. The IP Firm acts like a virtual IP risk management team for the client, helping the client to better gather data and properly log IP related risks, to then classify these risks in a very structured manner, to prioritize these risks, to link risks and mitigating actions together, and to properly report IP related risks to the C level Executives. The IP Firm works to connect the client to a variety of IP risk mitigation solution providers if required. The IP Firms also helps the client to establish an IP risk management governance structure.
The IP Firm charges the client an annual fee for this service offering. The fact that the Alder tool was easy to install, easy to configure and easy to take into use proved a major USP. Attorneys, paralegals and administrators at the IP Firm were all at ease around the tool. The IP Firm took a ‘white label’ version of the tool so that their brand is visible on the tool itself as well as on all reports automatically generated by the tool.
Case study #3: Law Firm specializing in M&A
The Law Firm in this particular case study is a reputable boutique Law Firm specializing in the area of small and mid-market M&A deals as well as PE deals. It is headquartered in London but has offices in a number of other key jurisdictions. It has clients across a diverse range of industry sectors including in the financial services area. This Law Firm has received a number of awards and recommendations over the years. This Law Firm conducts due diligence exercises on a regular basis. Such exercises naturally include IP due diligence. IP due diligence is essentially an audit to assess the quantity and the quality of intellectual property assets owned by, or licensed to, a company. It should also include an assessment of the IP related risks facing the relevant company plus details of if and how these IP related risks are being mitigated.
The Law Firm first embraced the Alder Tool in mid-2015 as it greatly improved the manner in which they gathered data on IP related risks, categorized these IP related risks, determined the probability and impact of these different IP risks, and linked IP risks to IP mitigating actions. The Alder Tool reporting functionality also enhanced the manner in which IP related risks were included in the deliverable from the IP due diligence exercise, and articulated to their client.
Prior to taking the Alder Tool into use, such IP due diligence exercises had been very much a pen and paper exercise and the Law Firm was concerned that they were not conducted such IP due diligence exercises thoroughly enough and that some IP related risks were being missed. They had some issues with the manner in which they were gathering data on IP related risks and on the actions being taken to mitigate such risks. They also faced some challenges articulating IP related risks to their clients in a professional manner.
The Alder Tool serves as a central repository for the company’ IP risk information and allows for that information to be properly sorted. Its key function is then to provide the client of the Law Firm with significant information on the main IP risks faced by the company. This allows the client to understand the nature of the IP risks the company faces (the type of IP risk, who raised it and how it could affect the company), to become aware of the extent of those IP risks (likelihood of the IP risk occurring and its potential impact to the company), to identify the level of IP risk that the client is willing to accept (thanks to IP risk prioritization based on its effect on the company), and to recognize its ability to control and reduce these IP related risks (by understanding the actions being taken to prevent these IP risks from happening and/or the risk migration actions taken in case the IP risks do occur).
The Law Firm greatly improved its efficiency and effectiveness when conducting IP due diligence exercises thanks to taking the Alder Tool into use. The fact that this tool was a dedicated IP risk management tool was key. The fact that the tool was easy to install, easy to configure and easy to take into use proved a major USP. The reporting functionality especially the IP risk heat-map graphic proved of tremendous value. Last but not least, the fact that the tool runs on a Microsoft Office platform meant that it was easy in utilize and integrate with the virtual data room platforms they use. In some cases they are still involved in M&A deals using physical data rooms and again in such cases, the tool has worked well.
Case study #4: B2B Engineering Company
The company in this particular case study is a medium sized engineering company providing precision equipment to business clients in a large number of different industry sectors. The company has been in operation since the early 1950s and now operates worldwide. The company is conducting a review of their corporate risk management process across all of their diverse business units at the present time. This review is examining the governance framework and practices relating to risk management across all of these business units. It is also looking at the systems and tools in use supporting this process. This corporate initiative triggered their in-house Legal & IP function to give some greater attention to their own IP risk process and associated systems. Currently, IP risk governance standards in the company tend to be very high-level, limiting their practical usefulness. There is scope to make IP risk governance standards more operational, without narrowing their flexibility to apply them to the different business units within the company and different IP situations.
Prior to taking IPEG’s Alder IP Risk Management Tool into use, a few high impact and high probability IP related risks were logged into the corporate risk register. However, taking the Alder tool into use within the corporate Legal & IP function meant that they were now much more in control of IP related risks, able to go into much more detail, better able to link risks and mitigation actions and last but not least to greatly improve governance. The Legal & IP function is now slowly but surely rolling out use of the Alder tool to the different business units within the company, starting with that business unit where it was felt that IP had the biggest impact on the bottom line.
Case study #5: Insurance Provider
The insurance provider was established over twenty years ago and is a privately owned MGA that provides insurance to nearly 40,000 businesses, most SMEs. They offer a range of insurance products from professional liability to pollution liability, virus and hacking attack liability, payment of withheld fees, employers’ liability, product liability etc. They also offer IP insurance and have a range of specific products in this category. They acknowledge that IP insurance is a very niche product but one which they would dearly like to grow and develop. It is a challenge selling such type products as most of the clients do not have a good IP risk management process in place and oftentimes fail to recognize the various IP risks they actually face. This insurance provider operates a loyalty card scheme (not that different from the Nectar Loyalty Card Scheme here in the UK) and plans to offer the Alder IP Risk Management tool to certain clients to help these clients to improve their IP risk management process overall. The insurance provider does not charge the client any fee for IPEG’s Alder IP Risk Management Tool. They had been searching for some IP related products or services to offer through their loyalty card scheme, and the tool fitted the bill perfectly.
The fact that the Alder tool was easy to install, easy to configure and easy to take into use proved a major advantage. The staff at the insurance provider were all at ease around the tool. The insurance provider took a ‘white label’ version of the tool so that their brand is visible on the tool itself as well as on all reports automatically generated by the tool. As the insurance provider has only just taken the Alder tool into use, no further details on this particular case study are available.
Case study #6: Professional Services Firm
This is a multinational professional services firm, a major audit firm and one of largest professional services firm in the world. The firm has a number of key services such as assurance, tax and advisory. The firm provides a consistent audit by assembling the right multi-disciplinary team to address the most complex issues, using a proven global methodology and deploying the latest, high quality auditing tools and perspectives. More and more, the firm is finding that IP is a key part of their audit findings. This firm has therefore assembled a dedicated in-house IP team which helps with the IP findings of such audits. This team has a range of sophisticated IP related systems and tools at their disposal to help and support such audits.
IPEG’s Alder IP Risk Management Tool has now been added to their portfolio of IP systems & tools. The fact that the Alder tool was easy to install, easy to configure and easy to take into use proved again to be a decisive aspect. The tool is only used internally within the firm, with only the automatic reports generated being shared with clients. Given the nature of their work, no information on any specific IP audit projects conducted by the firm using the Alder tool have been shared.
Case study #7: Medium Sized Materials Technology Company
This is a medium size material technology company based in Europe. The company merged with another company and then started on the post-merger integration project to join together the two together. The IP integration project team is tackling a number of different layers:
- IP strategy and top level actions plans
- IP organisational structure and mode of operation
- IP processes (e.g. creation, portfolio management, enforcement, exploitation, acquisition & divestment plus risk management)
- IP related systems & tools
- IP data
- IP interfaces internally to the rest of the business (e.g. senior management, middle management, individual contributors)
- The network of IP Firms & IP Service Providers
- The culture and values
Of course, as part of this IP integration project, the project team is also looking at IP risks, IP risk management, IP risk management processes, IP risk management systems & tools as well as IP risk mitigation solutions. As neither company had a robust IP risk management process already in place, the company took the Alder IP Risk Management Tool into use. This is enabling the project team to better gather data and properly log IP related risks, to then classify these risks in a very structured manner, to prioritize these risks, to link risks and mitigating actions together, and to properly report IP related risks to the IP Integration Project Steering Group. This project has only just started so no further details are available yet.
More information on the Alder Risk Management Tool
The above case studies proved that this unique, new, risk management is of great value to companies, IP Firms, Law Firms, IP insurance providers as well as professional services firms interested in the subject of IP risk management.
For further information on the Alder tool and a request for a presentation on the tool please contact us at firstname.lastname@example.org
Donal O’Connell/Severin de Wit