Edison in the Boardroom: How Leading Companies Realize Value from Their Intellectual Assets

APPENDIX A

MINING A PORTFOLIO FOR VALUE

By Patrick Sullivan Jr.

PORTFOLIO MINING IS an activity that has gained prominence on the IP scene in the past five or six years, but it has actually been around for quite some time. In 1991 at ICMG we embarked on our first portfolio mining exercise for a chemical company to identify technology that they were no longer using so that they could abandon patents that were costing the client several million dollars in worldwide patent maintenance fees. We didn't call it mining then, nor were we the first to perform this sort of project in an IP portfolio. However, this practice took some time to catch on in corporations across the world, particularly as managers have searched for low-hanging fruit and potential cost savings. The present day competitive business environment and the reliance on patent protection for protecting a company's product value streams have set the stage for patent portfolio mining.

This appendix will provide a brief introduction to mining and its close kin, portfolio categorization. What follows from there is an explanation of the strategies for mining and various value extraction targets (i.e., types of jewels) for which you can mine, a discussion of the intellectual capital mining process, and a “Then What?” discussion for embarking on the next stage of the IP hierarchy.

The term “mining” is used in the context of IP portfolios because of the assumption that there are valuable “jewels” hidden amidst the legal department's ...