5 Things to Look for When Hiring a Patent Portfolio Manager

By temporary On Sep 13, 2023 36

Opinions expressed by Entrepreneur contributors are their own.

Hiring a patent portfolio manager is a milestone that will enhance your enterprise’s patent program. Managing the patent process efficiently becomes more difficult at scale without dedicated staffing. Without proper planning, your inventors’ hard-won innovations risk being under-protected by your enterprise.

Hiring an incompetent patent portfolio manager may result in valuable ideas remaining unpatented, a decrease in innovator engagement, unjustified patent prosecution costs and an inadequate return on your IP investments.

Unearthing patents from your innovators requires a patent portfolio manager with technical expertise, standout interpersonal skills and undeterred persistence. Simultaneously, strengthening your patent portfolio against competitors demands significant patent-related experience. And generating maximum returns on IP investments demands sound business acumen.

An adept patent portfolio manager should possess a diverse skill set aligned with your enterprise’s objectives. Evaluating candidates on these five key competencies can help you select the right one:

Technical expertise
Legal experience
Eye for detail
Interpersonal skills
Business acumen

Read on as we delve deeper into these core attributes.

1. Technical expertise

Inventors typically have a lot on their plate. Their primary focus is on innovation and product development with little time for the administrative tasks needed to keep the patent program running. Amid their busy schedules, they might overlook reporting their innovations for patenting.

Sometimes, they might even dismiss an invention as too obvious, deciding not to report it at all. Consequently, you may miss out on potentially patentable ideas.

A portfolio manager who is familiar with your enterprise’s technology can have conversations with the inventors, guiding them on which ideas should be protected. Ideally, a seasoned employee or someone acquainted with your enterprise’s technological focus would be suitable. They need not understand all the innovation, but they should have enough background knowledge to identify and capture the best ideas.

2. Legal experience

Addressing complex queries about the likelihood of getting a patent, complete life-cycle cost estimates and strategic filing decisions across multiple jurisdictions can be challenging without legal experience.

Moreover, interacting with outside patent counsel in the absence of knowledge of patent terminology can lead to ineffective communication. Ineffective communication between a patent portfolio manager and outside counsel can lead to misunderstandings about strategic patent goals, potential delays in the patent prosecution process, increased costs and unsuccessful patent filings. These complications can, in turn, jeopardize the enterprise’s intellectual property strategy to protect its market.

A patent portfolio manager with legal experience, potentially from a law firm or corporate role, can effectively communicate with counsel, answer intricate questions and guide the implementation of cost-effective patent filing strategies across multiple jurisdictions.

3. Eye for detail

Managing large patent portfolios with hundreds of matters across different countries can be overwhelming due to extensive tracking, communication and administrative work.

Moreover, patent rights for an invention are given country by country. It’s perplexing to efficiently navigate the complexities of obtaining patent rights across different countries. Coordinating with legal counsel in each jurisdiction, managing numerous email correspondences, answering specific questions, reaching out to the right individuals and getting signatures demands an eye for detail.

A detail-oriented patent portfolio manager can handle large patent portfolios effectively. With a strong understanding of your enterprise processes and excellent organizational skills, they ensure timely responses. They also excel at obtaining necessary approvals and signatures while maintaining a well-organized administration.

4. Interpersonal skills

Inventors must intensely focus on their product innovation with little time to engage in extensive paperwork. Distractions and delays in submitting invention disclosures can starve your patent pipeline. This results in a rushed patenting process, seeking patent protection just before product launch.

Besides, it’s not unusual for enterprise members, legal counsel or foreign associates to be awaiting answers or information. The intensity of delivering a product leaves little time to focus on the big picture.

Given the multitude of outstanding queries and patent-related tasks in an enterprise, this role requires strong interpersonal skills and diligence. Mining patents requires constant sleuthing to find what the inventors are doing. The patent manager must build solid relationships with inventors and establish clear communication channels for efficient reporting of potential inventions, ensuring all stakeholders receive timely information.

5. Business acumen

Enterprises often face challenges in aligning their patent strategies with wider business goals.

It’s daunting to gauge the commercial potential of patents, navigate patent licensing negotiations and make strategic litigation decisions, all while ensuring cost-effectiveness. Alignment of the patent program with strategic goals requires focus and an even keel.

Thus, unlocking the true market potential of your patent portfolio demands that the patent portfolio manager possesses strong business acumen.

A capable patent portfolio manager can prove to be more cost-effective and yield better results in comparison to being dependent on an organic process internally or even on outside legal counsel for various tasks like mining patents, strengthening patent portfolios and generating higher returns on IP investments.

The perfect candidate for the patent portfolio manager position should demonstrate a combination of technical proficiency, legal background, attention to detail, strong interpersonal skills and business acumen.

Recruiting one can be a challenging task, but often the best candidates are right under your nose. They might be among the external counsel you already work with, exhibiting proficiency in tasks you need to get done at competitive costs. It could even be found within the enterprise with a prolific inventor having an interest in a bigger role in the legal department. These professionals could transition into a full-time role within your enterprise.

Drawing from over 25 years of experience in patent prosecution, I can vouch that hiring a competent patent portfolio manager, as outlined in this post, can contribute positively to your enterprise’s success in conquering your patent landscape. You can further empower your patent portfolio manager by adopting the right patent management software.