Before plowing into the theory and details behind CIPIC, the following shows how easy it is to understand the relationships among commercial and intellectual property interests, and specific steps that may be taken regarding them to save or make money.
This example of CIPIC Intelligence (linked in its entirety here) is based on fictional commercial and IP interest portfolios. As explained in § III, CIPIC is best understood by considering commercial and IP interests from their respective perspectives. Therefore, CIPIC intelligence provides a section devoted to commercial interests and another devoted to IP interests. Each section includes: 1/ Recommendations for each interest; 2/ an Executive Summary of Interests; and 3/ Interest Details. The commercial interest section also includes a special report on the deadlines for covering or expanding coverage for proprietary features of each commercial interest.
Color-coded, one-line summaries and recommendations draw attention to concerns of highest importance to help ensure nothing slips through the cracks in a minimum of time.
A. Commercial Interests Perspective
Referring to Figure 1 below, the Commercial Interest Recommendations (“CIR”) shows color-coded recommendations for four commercial interests in three countries. For example, interest no. 112, Keyboard A, has two recommendations, each based on a related IP matter. The recommendation tied to matter 0005 is highlighted red because, as may be understood from a quick look at the IP Executive Summary (“IPES”) of Figure 2 below, matter 0005 is a registered trademark for which actual use of the mark in commerce, e.g. selling goods bearing the trademark, is required for maintaining the registration, yet the associated Keyboard A good, as may be understood from a quick look at the Commercial Interests Detail (“CID”) of Figure 3 below, is not available until June 1, 2013, a date in the future as of this writing. Without having to spend time reviewing a lot of complex documents or burning up legal fees consulting your IP attorney, the CIR highlights pressing concerns about commercial interests and what to do about them.
Figure 1 (click to enlarge)
Figure 2 (click to enlarge)
Figure 3 (click to enlarge)
Referring to Figure 4 below, the Proprietary Feature Coverage or Expansion Deadlines (“PFCED”) shows a list of interest features that remain eligible for patent protection. For example, feature no. 9, piezo-electric energy generation, was made “available” within the last year, triggering the statutory time limit for filing a patent application in the US, but, as noted in the red-highlighted remarks, is not related to an IP matter for covering the structure of the feature.
Figure 4 (click to enlarge)
What makes the PFCED especially useful is that it identifies features independent of the commercial interests that incorporate them. This ensures that unique features on which your business may have dedicated significant resources to develop are not lost and fully exploited. For example, referring again to Figure 3 above, the CID for interest no. 112, Keyboard A, reveals two features: 1/ feature no. 8, quick-response linkage, that is covered by two IP matters; and 2/ feature no. 9, piezo-electric energy generation, which is not covered by any IP matters. The PFCED of Figure 4 above identifies feature no. 9 as being unrelated to an IP matter for covering structure. Like the CIR of Figure 1 above, without having to spend time reviewing a lot of complex documents or burning up legal fees consulting your IP attorney, the PFCED highlights features and what to do about them.
Referring to Figure 5 below, the Commercial Interests Executive Summary (“CIES”) shows the big picture as to where interests are or intended to be commercialized, and in what fashion (license, commercial offering, etc.). The color-coded remarks immediately convey a concern and concern level based on legal and business principles and strategies.
Figure 5 (click to enlarge)
A glance at the CIES of Figure 5 above immediately reveals any missing, discontinued or mischaracterized commercial interests around the globe. For example, if Mexico is known to be an important market and revenue source for electrical connectors, then the absence of any commercial interest listings for Mexico would stand out.
On the CIES of Figure 5 above, in the United States, RED-highlighted commercial interest no. 112 Keyboard A draws immediate attention. This commercial interest is understood to be unavailable and covered with enforceable IP rights. The reason this commercial interest triggered RED-level concern is because, as readily revealed from the IPES of Figure 2 above, related matter 0005 is a registered US Trademark. Under US law, a registered mark that is not “used in commerce,” that is associated with the goods claimed in the registration, may be cancelled. Since Keyboard A is understood to be unavailable, the trademark registration of matter 0005 is at risk of being cancelled, which could undermine related marketing efforts, devalue accrued goodwill in the brand, and evaporate whatever hard-earned reputation the mark and good had. This CIPIC intelligence should prompt action to preserve the IP interest.
Referring again to Figure 3 above, the CID for United States commercial interest no. 112, Keyboard A, reveals a future availability of June 1, 2013 and that one of the reasons for the delay may be, as explained in the Remarks, that “solder joints between connectors and piezoelectric elements are failing.” This CIPIC intelligence should prompt action to accelerate development and release of the commercial interest.
Referring again to Figure 5 above, the CIES reveals that, while interest no. 112, Keyboard A, may trigger a red-level concern as it relates to trademark matter 0005, it does not trigger a RED or YELLOW concern level, nor earn a GREEN-level “OK” as it relates to related matter 0001, an uninitiated patent application. This is because, since commercial interest no. 112 is unavailable, it does not jeopardize patentability of embodied innovation. This CIPIC intelligence may address concerns that may have existed about the commercial or IP interest.
On the CIES of Figure 5 above, in China, the RED-highlighted commercial interest no. 114, Monitor, like RED-highlighted Keyboard A above, also is understood to be unavailable and covered with enforceable IP rights. In this case, the reason the commercial interest triggered RED-level concern is because the commercial interest is not exploiting the patented technology or generating any revenue. Also, unlike in the United States, many countries provide for challenging patent rights where the patent has not been “worked.” This CIPIC intelligence should prompt action to accelerate development and release of the commercial interest.
Of particular concern is in New Zealand, where commercial interest no. 117, Computer Pointing Device (Mouse), is available, yet considered or placed on the docket for pursuing IP protection. This CIPIC intelligence should prompt action to accelerate seeking IP protection for the interests feature to fully exploit and recoup what may have been spent developing it.
In sum, the commercial interest recommendations and executive summary respectively of Figure 1 and Figure 5 above immediately highlight recommended courses of action and issues pertaining to commercial interests and, in some cases, related IP interests. This CIPIC intelligence provides enough information to make decisions that ultimately impact revenue generation and profit without having to devote much time to understand it.
B. IP Interests Perspective
Referring to Figure 6 below, the IP Interest Recommendations (“IPIR”), shows color-coded recommendations for five IP matters in three countries. For example, in the United States, matter 0005, a US Trademark Registration, has a recommendation that is highlighted in red because it is at risk of being cancelled as explained above.
Figure 6 (click to enlarge)
While for matter 0005 the recommendation pertains to the commercial interest with which it is paired, ordinarily, recommendations pertain to the matter itself. For example, matter 0001 is an uninitiated patent application for Keyboard A for which research is recommended to figure out why the matter may be stalled.
Referring to Figure 7 below, the IP Interest Detail (“IPID”) for matter 0001, in the Remarks, reveals why the matter may be stalled: “inventors are reviewing draft specification - signed Declarations needed.” This CIPIC intelligence identifies the holdup that may be addressed easily and move IP interest acquisition closer to increased revenue generation.
Figure 7 (click to enlarge)
Referring again to Figure 2 above, the IPES shows the big picture as to IP interests desired, pending and enforceable, and where, along with any related commercial interests. The color coding of the remarks that accompany each IP interest immediately conveys a concern level based on legal and business principles and strategy.
For example, in the United States, the RED-highlighted summary for matter no. 0005 for ALPHA BOARD draws immediate attention. According to the summary, this IP interest is enforceable and associated with a commercial interest that is unavailable. The reason this IP interest triggered RED-level concern is because Matter 0005 is a registered US Trademark that, because it is not associated with an available commercial interest, is not being “used in commerce,” therefore at risk of being cancelled, which could undermine related marketing efforts, devalue accrued goodwill in the brand, and evaporate whatever hard-earned reputation the mark and good had. This CIPIC intelligence should prompt action to preserve the IP interest.
In Mexico, YELLOW-highlighted summary for matter 0003 for Webcam A draws some concern. This IP interest is summarized as a “Pending IP matter without a related commercial interest.” The reason Matter 0003 triggered a YELLOW-level concern is because the IP matter is pending, thus establishing priority for claiming exclusive rights, but at risk of non-exploitation for lack of an available commercial interest embodying the invention.
Referring again to Figure 7 above, the IPID for matter 0003, in the Remarks, reveals why no in-house commercial interest is paired with matter 0003, that license discussions are underway. That discussions are “not encouraging” should inspire action, such as reviving the originating commercial interest or other potential exploitation, or selling or abandoning the IP interest to recoup costs or avoid additional expenditures. Thus, CIPIC intelligence prevents potential revenue generating or cost cutting from simply falling off the radar screen.
CIPIC intelligence aids in making business strategy decisions.
III. CIPIC Intelligence
Businesses can make wise decisions regarding misaligned commercial and IP interests, but typically do not have the technical or legal skills, training, tools or experience to determine the existence or potential of such misalignments. Below describes the basics of CIPIC Intelligence and opportunities that may be revealed, how Emerging Strategies harnesses technology to ensure reliable CIPIC intelligence with 24/7 availability at virtually no cost, and why businesses benefit from Emerging Strategies’ unique CIPIC intelligence.
CIPIC intelligence is analysis of relationships among commercial and IP interests in view of their respective attributes, and determining an appropriate concern associated with each interest. Once the commercial interest-IP interest relationships, if any, are determined and the objective attributes of commercial and IP interests identified, logical analysis thereof, informed with legal and business principles and strategies, divines “concern levels” for each commercial and IP interest. In practice, as shown in the Example of § II above, the concern levels drive color coding of the intelligence for immediate comprehension of the commercial and IP interests requiring attention and, more importantly, opportunities for increasing revenue, cutting costs and ultimately increasing profitability.
Grasping the significance of CIPIC intelligence and concern levels associated with any commercial or IP interest is best accomplished from two perspectives: 1/ focusing on the commercial interests and considering any IP interests that may be related; and 2/ focusing on the IP interests and considering any commercial interests that may be related.
Focusing on the commercial interests, in particular where and when they are available, brings into sharp relief the absence or significance of any related IP interests and whether they are or will be effective when needed. Focusing on the IP interests, in particular the features they cover and where, brings into sharp relief whether the IP interest covers true commercial embodiments where presently or intended to be released, or whether the commercial interests embody what is covered in the targeted jurisdiction.
A. Commercial and IP Interest Relationships and Attributes
1. Commercial and IP Interest Relationships
Ascertaining relationships among commercial and IP interests involves: 1/ identifying profitable unique features of commercial interests; 2/ interpreting the scopes of IP interests (patent claims, trademark and trade secret descriptions, copyright expressions); 3/ determining what features fall within which IP interests; 4/ identifying the features that do not fall within any IP interests; and 5/ identifying IP interests that do not cover any commercial interest features.
How to identify features of goods and services that are attractive to customers and generate sales is beyond the scope of this work. Within the wealth of literature on the subject is Marketing Intelligence-Driven Product Development, which describes techniques for existing or desired features as well as using that intelligence to drive product development.
Interpreting the claim scope of a patent, trademark, copyright or other IP right, and whether commercial embodiments fall within and without those claim scopes, thereby defining relationships, are complex undertakings also well beyond the scope of this work.
2. Commercial and IP Interest Attributes
Commercial and IP interests have objective attributes that are relatively critical. A commercial interest has an availability attribute that is current, future, or undefined. An IP interest has a kind attribute corresponding to whether it is a patent, trademark, copyright, trade secret, agreement, etc. An IP interests also has an enforceability attribute that is: perfected, where enforceable IP rights have been granted or the subject of an executor agreement; imperfect, where IP rights are applied for, but not yet granted; uninitiated, where no application has been filed or agreement executed; or not considered, where IP rights are not of interest.
These attributes are relatively critical because the availability of a commercial interest may be of low or high concern depending on the kind and enforceability of a related IP interest, as explained below in context with the Example of § II above.
B. CIPIC Intelligence Concern Levels
Emerging Strategies’ CIPIC intelligence is designed for immediate recognition of which commercial or IP interests may be of concern, to what extent and why. Based on analysis of their respective attributes and any interrelationships in accordance with legal and business principles and strategies as described in the following section, commercial and IP interests are accorded a concern level and highlighted with a corresponding color: GREEN, where the interest is of low concern, YELLOW, where the interest is of medium concern and may merit some attention, and RED, where the interest is of high concern that merits immediate attention. This color coding scheme promotes creation of readily understandable data displays, as shown and described in the Example of § II above.
A GREEN level signifies that at least one feature of the so-characterized commercial interest and an IP interest are in order and do not require immediate attention, rather periodic monitoring. A GREEN-level commercial interest feature is available and enjoys the enhanced revenues that befit a quasi-monopoly based on enforceable IP rights, thus should be aggressively commercialized. The related IP interest may be considered for additional exploitation for maximum profit. It is possible that other features of the same commercial interest are not similarly characterized.
A YELLOW level signifies an imperfect commercial interest feature-IP interest relationship and the potential need for some attention. YELLOW levels can be cured into GREEN levels. For example, A YELLOW-level commercial interest may be in development, but not yet available, thus unable to generate revenue, despite enforceable IP interest coverage. Alternatively or additionally, the related IP interest may not have been granted (or executed where based on an agreement), thus unenforceable and unable to support quasi-monopolistic pricing.
A RED level signifies a serious issue that requires immediate attention. RED-level concerns exist where commercial interests have no relationship with IP interests or vice versa. YELLOW- and RED-level concerns should be accorded greater urgency where related others’ interests are revealed. RED levels may, but are not always curable into YELLOW and then GREEN levels. For example, regarding commercial interests, an inactive or unavailable commercial interest feature without IP interest coverage may be coverable, hence able to achieve a GREEN level, thus should be investigated right away. However, an active, available commercial interest, especially in view of changes to disclosure safe harbors affected by the American Inventors Act, most likely would not be coverable, thus not able to move to a level of less concern.
Regarding IP interests, a RED-level trademark IP interest claims a mark as associated with certain goods or services, but the mark is not actually offered for sale or available on the market with that good or service. This “nonuse” poses significant risk as a ground for cancellation of the registration. A commercial interest should be forthcoming or the claim struck from the registration as soon as possible.
A RED-level US patent IP interest typically may be exploited with a commercial interest at any time; non-US patent interests typically must be exploited within three years or so, depending on the jurisdiction, or the patent may be challenged. Considering the cost and timing needed for commercializing offerings, research and development may need immediate attention to take advantage of the quasi-monopolies that IP interests afford within the time allotted.
While a commercial interest without corresponding IP interests and an IP interest without corresponding commercial interests clearly justify RED level characterizations, commercial-IP interest correspondence alone does not justify a GREEN level characterization. Attributes in addition to the respective subject matters of the corresponding commercial and IP interests also must be considered.
IV. Harnessing Technology To Ensure Reliable CIPIC Intelligence With 24/7 Availability
Emerging Strategies developed a comprehensive database that tracks the relationships among and critical attributes of commercial and IP interests described above. To ensure that the relationships and attributes are always reliable, the database is integrated into the way we work, the way we manage and attend intellectual property matters.
All commercial and IP interest attributes (good features, availability, etc., patent application claims, filing date, etc.) are recorded or updated when known. The critical interrelationships among commercial interest features and IP claims are evaluated every time we work on an IP matter or are apprised of a feature change. Whenever an IP claim or commercial interest feature is changed, we are prompted to evaluate and confirm whether any existing relationship is maintained or a new relationship formed.
V. Why Businesses Benefit From Emerging Strategies’ CIPIC Intelligence
A. We Know How To Do CIPIC
Emerging Strategies has decades of experience in the IP legal and high tech businesses. This experience paired with our uniquely-tailored IT/database systems uniquely suit us to provide 100% reliable CIPIC intelligence 24/7 to our clients so that they can make sound business strategy decisions according to their schedule and needs. Consequently, we also constantly are aware of what makes money for our clients, which keeps us focused on what to add value toward that goal.
B. Other IP Firms Don’t Do CIPIC
Typical IP law boutiques or departments of larger firms are good at generating lists of IP matters (e.g. US Patent X issued with maintenance fee due on Y date). Many also provide services for managing portfolios of IP assets. However, IP portfolio management does not include consideration of goods/services let alone any correspondence of any proprietary features relative to any IP assets.
CIPIC intelligence is critical to success because it shows where goods/services and IP rights are aligned and misaligned. Alignment of goods/services and IP rights is essential to maximize revenue from the goods and avoid wasting money because commercial interests not covered can be pirated and IP interests that fail to cover current or anticipated commercial interests needlessly soak up precious resources. Consistent with our mantra regarding everything we do, Emerging Strategies’ CIPIC intelligence reveals opportunities.
© 2012 Emerging Strategies, LLP ☎ 301.915.0950
 The March 16, 2013 deadline shown for this and other features derives from certain provisions of the America Invents Act (“AIA”) that come into effect and eliminate the 1-year grace period that had been permitted for certain invention disclosures. For more information about the AIA, please see Patent Reform: How It Affects You And What To Do About It.
 NB: Emerging Strategies would not allow this scenario to occur by advancing a trademark application to registration without confirming use in commerce or availability of the associated goods.