CASE STUDY: vCIPO (“VIRTUAL CHIEF INTELLECTUAL PROPERTY OFFICER”)

Client

A technology research and development company (the “Company”).

Background

The Company operates in a niche technology research and development market, with global clients in both the public and private sector. The Company’s cutting-edge chemistry-focused technology has a wide range of applications across a variety of sectors including electronics, medtec and filtration. The Company has a rich and extensive intellectual property (“IP”) portfolio and was committed to ensuring that it further developed its IP strategy to ensure robust protection measures for the long term.

Assignment

The Company engaged Metis Partners to act as its vCIPO for nine months. The role of the vCIPO was to:

  • provide ongoing and on-demand support for all IP-related queries;

  • improve the management of the Company’s IP portfolio through focused and specialised projects;

  • to bolster the strength of the Company’s IP infrastructure for both the short- and long-term.

Our Service

The Metis Partners Virtual Chief Intellectual Property Service (“vCIPO”) is the outsourcing of the role of Chief Intellectual Property Officer, who is responsible for a wide range of activities and decisions focused on the management of a company’s intellectual property (or “IP”) strategy and assets.

The vCIPO is a highly flexible service, and the crux of its offering depends on the needs and priorities of the client, including as they change over time.

Our Approach

Metis Partners liaised closely with Management to gain a full understanding of the Company’s IP portfolio and the nature of its existing IP strategy.  We drafted an action plan that we believed would fulfil the Company’s IP objectives and align with its commercial strategy, which was agreed with the client.

Our vCIPO service was designed to perform both ad-hoc tasks related to the management of IP assets, as well as developing IP policies and strategies to improve the IP infrastructure for greater long-term security.

The vCIPO, in response to identified client needs and in agreement with Management:

  • provided high-level operational assistance with staff training days, through producing key documents and presentation notes for Company management;

  • updated internal documentation to include management of IP assets;

  • responded to urgent IP queries and offered advice regarding the short-term management of IP assets;

  • developed an IP Acquisition Evaluation Process, designed to assist the company in the short- and long-term when evaluating any IP assets as potential targets;

  • advised on the integration of this policy into the Company’s existing corporate strategy;

  • developed IP Value Chain Analysis Documents, which identified existing key advisors the Company engaged regarding the management of particular IP assets, and suggested methods for more effectively engaging these advisors.

Throughout the vCIPO engagement, Metis Partners conducted regular meetings with the Company to provide a forum for queries, brainstorm new ideas for the development of the IP strategy, and to ensure that the service provided was maximising the potential benefits of the vCIPO engagement.

Outcome

  • Provided expert IP commercial advice, while minimising the need for costly lawyer fees

  • Refined the existing IP strategy, ensuring that it fully enacted the Company’s business strategy

  • Kick-started a range of risk-mitigating projects to protect the Company’s IP
  • Contributed towards staff training by giving guidance on IP elements of entry and exit interviews, and improved staff awareness of IP

  • Incorporated crucial commercial IP dimensions into existing Company procedures

  • Improved the Company’s short-term ROIs at the same time as strengthening its long-term IP infrastructure