Knowledge-based
Intellectual Property Management For Technology
Development Industry
C.F. Cheung1, W.M. Wang1, Y.L. Tse1 and
Ricky Ma2
1The
2Hong Kong Science and Technology Parks (HKSTP)
Corporation,
ABSTRACT:
Intellectual Property Management
(IPM) is important for enhancing the competitiveness of organizations,
especially for technology and innovation companies. A good practice of IPM not
only creates value from Intellectual property (IP) assets but also improves the
knowledge acquisition and retention processes. However, most of the IPM systems
available in the market are information driven and mainly provide the
information instead of the knowledge to support the knowledge work for managing
IP. This paper presents a Knowledge-based Intellectual Property Management
system (KBIPMS) which attempts to incorporate the knowledge work to support IPM
based on the needs of the Technology Development industries. A prototype was
developed and successfully trial implemented in a selected reference site. It
also provides an important means for increasing the IP awareness of companies
in Technology Development industry.
Keywords: Knowledge management, Intellectual property
management, Technology development industry
1. Introduction
Every company has its own creations
and original ideas. All are important intangible assets which include patents,
copyrights, trademarks, designs and trade secrets used to protect company ideas
and innovations. These intangible assets are called Intellectual Property (IP).
IP becomes an important knowledge asset of company due to the growth of
information technology and competitive business environment (Teece, 1998; Rodriguez et al., 2011). Companies should have
a well-organized Intellectual Property Management (IPM) to protect its IP
assets, in order to gain and strengthen the competitive advantages in the
market. This is particularly true for the technology development industries,
they are knowledge insensitive industries and need to manage large amount of IP
assets, such as patents, copyright and trademarks. The organizations can aware
of their value, benefits or risks of IP when appropriate management of IP is
exercised (Pisano, 2006; Zhao, 2006).
Although IP is important in
industries, the development of IPM has received relatively little attention.
The increasing number of infringements and litigation are affecting the
international image of companies and lowering the incentive to innovate.
According to the Census and Statistics Department (2008), about 71.4% of
business establishments had not registered their trademark, patent or design in
Besides, a well-organised
IPM not only relies on manpower but also depends on the technological and
infrastructural support. Systems can make operation more efficient and do
things that personnel cannot perform and enhance the decision-making processes
(Fazlollahtaba, 2008; Melville et al., 2007). Hence,
an Intellectual Property Management System (IPMS) is much needed to facilitate
the operation flow of IPM. Berman (1999) agreed that an “Intellectual Property
Management System is a required element of successful Intellectual Property Management
(IPM)”. Hence, an IPM system can act as a supporting tool to consolidate IP
data and provides essential information for business decision-making. However,
a lot of companies are not willing to invest high cost and large amount of
resources on the development of an IPMS since it is not only time-consuming and
costly, but also knowledge driven. They do not know what they own, how to use
the information and knowledge (Murthy et al., 2010) and how to share, transfer
and integrate the current knowledge (Grant, 1996).
In this paper, a knowledge-based
Intellectual Property Management System (KBIPMS) is developed to facilitate the
management of intellectual property portfolio and searching processes so as to
retain explicit IP knowledge and deploy new knowledge. The system acts as a
management and analysis tool for companies in the technology and knowledge
intensive industries to record, search, evaluate and analyze their IP assets.
The knowledge can also be transferred and shared in a more understandable and
systemic way between managerial and technical personnel. The knowledge and
product assets can be well protected and retained systematically. Moreover, the
concept and importance of IPM was promoted and disseminated. The KBIPMS
provides an important means of increasing the awareness of IPM of industrial
users, and encourage them to start to recognise, use
and promote IPM in their actual practice.
2. Literature Review
2.1. Intellectual Property
Management (IPM) And Knowledge Management (KM))
Intellectual Property is a type of
intellectual capital (IC) and knowledge assets of company (Liao, 2001; Roos, 1997; Teece, 1998;
Nonaka, 1994). Patents, copyright and trademarks are
example of IP assets and they are difficult to manage, acquire, store, share
and use without enough management support and protection. In order to manage IP assets in a most effective and efficiency way, IPM should involve the
management of personnel and information in generating, protecting and
disseminating IP assets and services (Yang, 2008). IPM is
interconnected with the internal and external business context, in order to
help companies to make an effective decision on what products to create as well
as when and how to protect them. Hence, IPM needs to work with company
strategies when every activity is interconnected, while knowledge management
(KM) is one of the strategies which needs to be
considered.
In a company, knowledge can be
explicit and tangible work accomplishments and tasks of employees (Smith, 2001)
and also consider the tactic minds and interactions of the employees (Newell et
al., 2002). A good KM can develop an appropriate strategy to create value in
the knowledge assets through acquisition, storing and retaining the knowledge
assets including expertise, ideas and concepts of employees in an efficient way
(Schulz & Jobe, 2001).
Alavi & Leinder
(2001) stated that KM could contribute to building core competencies,
understanding the strategic advantage of know-how, and creating intellectual
assets. Hence, KM is a critical part of IPM to share, retain and create
knowledge assets in the most efficient way. It is interesting to note that the
simultaneous flow of KM and IPM, so as to complement and integrate the
knowledge flow. The knowledge processes, which are knowledge creation,
knowledge retention, knowledge transfer and knowledge utilization (Nonaka, 1994), can be articulated into the IPM processes.
KM aims to encourage staff to share
their tacit experience and skills. The company knowledge assets can be kept
from one generation to the next. The company can make use of the data to
analyze and convert them into useful data and practices, so users can use the
analyzed data to make a decision (Anselma et al.,
2011). Hence, knowledge can be used in an appropriate way if both KM and IPM
are well organised.
2.2. Intellectual Property
Management System (IPMS))
To handle the complex management
processes of Intellectual Property, company needs a systematic way to
facilities to conduct all of the IP related activates. Intellectual Property
Management System (IPMS) is a managerial tool to maintain the organization’s IP
inventory and increase the rate of innovation capability (Jain & Sharma,
2006). The intellectual knowledge can be stored, retained and shared through
IPMS, in order to facilitate the management and decision making from the
innovation created to products expired (Sullivan, 1998). IPM and IP assets
can become competitive advantages through the success of using IPMS to protect
products and create value.
IP searching tools are common IPM
tools used to search for existing registered IP before making the decision
whether to develop a product or not. Usually, technological companies perform a
brief scan of the literature to provide a quick analysis of a particular
technology area (Burdon,
2007). Therefore, it can eliminate irrelevant search data and the data
can be used to analyze the trend of development.
Besides, some companies have
developed IPMSs for managing the whole IPM workflow,
which includes documentation, reminder, searching tools and data analysis. IP
Portfolio management is one of key functions. Burdon (2007) defined IP Portfolio management
as the processes to support the tactical or a strategic decision through
acquisition, analysis and organization of IP information. Hence, the
information of IP assets can be recorded and consolidated through IP Portfolio
management. Table 1 shows examples of the current IPMSs.
The current IPMSs usually focus on managing one or
two IP assets. The functions of IP searching acquire data from either internal
or external database. In addition, most of the IPMSs
available in the existing market are information-based systems. They provide
high information redundancy, rather than retaining knowledge to facilitate the
problem solving processes (Zheng et al., 2003).
Hence, IPMS can be integrated with knowledge-based systems, so as to integrate
IPM with KM.
Table 1: A Comparison Among
Current Intellectual Property Management Systems
|
System |
IP
assets |
Type |
Recording |
Search |
Report |
Knowledge
Retain |
|
CNIPR |
Patent |
Searching
tool |
O |
External
database |
P |
O |
|
Patsnap |
Patent |
Search
and analysis tool |
O |
External
database |
P |
O |
|
Delphion |
Patent |
Analysis
tool |
O |
O |
P |
O |
|
WIPS |
Patent |
Analysis
tool |
P |
Internal
database |
P |
O |
|
IP-Discover |
Patent |
IP
Management |
P |
Internal
and External
database |
O |
O |
|
Fileye |
Patent
Trademark Design |
Portfolio
system |
P |
O |
P |
O |
|
Jurivox™ |
Patent
Trademark |
IP
Management |
P |
Internal
database |
P |
O |
As mentioned by Edoardo
(1998), a knowledge-based system (KBS) is a kind of system for supporting
explicit representation of knowledge in some specific competence domains so as
to provide high level of problem solving performance. With regard to the
objectives of KM, tactic and explicit knowledge assets form organizational
knowledge are important for knowledge flow (Díaz-Díaz
et al., 2006; Almeida et al., 2003). However, they are not easily accessed and
stored. KBS plays an important role for managing knowledge effectively. It is
embedded in document and databases (Buniyamin &
Barber, 2004). Besides, a KBS can retrieve information from knowledge systems
to demonstrate useful results to facilitate decision-making (Nookabadi & Middle, 2001).
With regard to IPM, a knowledge-based IPMS can support the knowledge retention
of IP assets and help users to use and create new knowledge on IPM. Puhan (2008) agreed that IPMS can share investigative
outcome and knowledge input of partnering firms and transfer experience from
one to the other. It can retain the tacit knowledge of innovative and creative
knowledge, and store the explicit documentations including blueprints and
documents. The “community” approach can be presented for knowledge-based IPMS
to facilitate a “person-to-document” and “person-to-person” knowledge transfer
(Swan et al. 1999; Danziger & Hull, 2000; Donnellan & Fitzgerald, 2003). Hence, the knowledge processes are embedded in the IPMS flow. It not only protects the current IP assets, but
also helps users to transfer and create knowledge to increase innovative
ability.
On the whole, the main problems of
IPM are the low awareness of IPM and infringement. The IP assets are also
difficult to be managed and their importance is overlooked. In order to solve
these problems, IPM should be promoted and developed to provide a better
control and protection of IP assets. As a result, the company’s knowledge can
be protected and transferred within organizations. In order to facilitate the
IPM flow, an IPMS can be served as a supporting tool.
In this paper, a knowledge-based Intellectual Property Management System
(KBIPMS) has been developed to promote the IPM concept and improve the
knowledge acquisition flow. The developed KBIPMS aims to provide to the public
and encourage industrial users to recognise and use KBSs to manage their IP assets. The differences between the
current IPMS and the proposed KBIPM are summarised in
Table 2.
Table 2:
Differences Between Current IPMSs
And The Proposed KBIPMS
|
|
Current IPM systems |
KBIPMS |
|
System Type |
Information-based Focus on one IP
asset or one IP management function |
Knowledge-based Integrated IP
Portfolio and Search function for IP assets |
|
Instalment |
Standalone |
Web-based |
|
|
|
|
|
Stored information |
Data and
information |
Data, information
and also knowledge (e.g. Knowledge of IPM) |
|
Record Display |
Fixed and
difficult to customise |
Custom field
setting and template saving |
|
Deadline Alert |
Simple alert |
Alert with
timeline template |
3. Knowledge-Based
Intellectual Property Management System (KBIPMS)
As shown in Figure 1, two key functions
have been developed in the proposed Knowledge-based Intellectual Property
Management System (KBIPMS) which are IP portfolio management and IP
searching. IP portfolio management
consists of recording, reminding and reporting functions to facilitate the
basic administrative management of IP assets, which include IP data acquisition
and review, deadline and renewal reminders. Clear application stage and patent
family can be shown when all IP data are entered into the system. Internal
reports can be generated to gather and analyze the data. IP Search includes
internal and external search, and generation of search map. These functions are
used to support the search of internal data so as to find the details of
self-owned IPs. It also provides capability to search
IPs from external databases such as USPTO. A search
map and tag cloud can be generated to show the keywords that are frequently
used in the abstracts and claims of the searched patents. This analysis can
help to find out the trend of patent registration and product development.
Figure 1: A framework of Knowledge-based
Intellectual Property Management System
Both management and
technical personnel are the target users of this system. Management personnel
include administrative personnel and top management while technical personnel
include the product development team and research personnel. The system helps
the company in technology and knowledge intensive industry to keep and transfer
their knowledge. As a result, the KBIPMS shares the knowledge of managing IP
assets and knowledge of innovation among frontline and top management. In
addition, the KBIPMS is
established to facilitate the IPM processes of the company and integrate with
the IP lifecycle as shown in Figure 2.
During the stage of product design,
the company needs to search what is owned through an external and internal
search. During the development stage, there are a lot of blueprints and
documents, which needed to be recorded as “copyright”. Each product has its own
set of documents and some of the information can be registered as patents. The “trademark” information of the products
can be recorded in the IPMS.
KBIPMS can also remind users of the
application deadline and the next renewal date so as to enhance IP protection.
With regard to knowledge management, different knowledge can be retained in the
KBIPMS. Table 3 summarizes the types of retained knowledge and IP assets. IP
assets are the outcome of staff’s knowledge creation. The portfolio functions
in the KBIPMS retain the current explicit knowledge for managing IP assets. The
report function and search map can help users to analyse
existing data and to create new knowledge to support decision-making. As a
result, the company users can create, use and retain different IP knowledge
through the KBIPMS.
Figure 2: Snapshots Of
Knowledge-Based Intellectual Property Management System & Relationship With
IP Lifecycle
Table
3. List Of Stored
Knowledge And IP Assets On The KBIPMS
|
Stored
Knowledge and IP assets |
Example |
|
Patent |
Document related to Product; innovation |
|
Copyright |
Documents; publication; blueprint; video; digital; image |
|
Trademark |
Company logo; product logo; product name |
|
IP-related knowledge |
Application flow and information |
|
Innovation concept |
Innovation trend; product pattern; company owned |
3.1. IP Portfolio Management
IP portfolio
management is used to manage IP-related managerial activities, including documentation,
maintenance management and data trend analysis. A good portfolio management is
important for the company to know what existing knowledge it owns and retains.
The KBIPMS can facilitate the information flow for handling IP document and
storing IP information. Hence, the company knowledge can be retained and it is
easier to acquire both explicit and tacit knowledge in the form of consolidated
data. This is a combination process to transfer documents into a more
understandable format and group company knowledge in one centralised
system. Besides, good time management is an important aspect of IPM. The assets
can be infringed by others if the renewal date has expired or the company
cannot submit the application before the deadline. It is important to
technological companies to protect their IP assets. In order to avoid the loss
of development opportunity and protect company assets, the KBIPMS provides a
reminder function to send an alert to the users who can take appropriate
actions to react to the opportunity.
Different functions are
built for facilitating users in the managing and planning aspects. All
functions are separately recorded, analysed and
calculated based on three types of assets, which are Patent, Copyright and
Trademark, which are the most common types of IP assets in technology
industries. The input fields of
portfolio management are based on the official document of the authorized IP
office. As the intellectual properties are registered in the local authorities,
the information that needs to be recorded is based on the application
information. As a result, official document is good reference for portfolio
management. It also separates the different field stages. When the product or marks are created, the related
information can be recorded in the “Basic information”.
During the application
processes, all related documents can be recorded on the “application” page of
the KBIPMS, which include the application, file, publication and granted stages.
The application information can be recorded step by step, so that the users
have a clear concept of the IP application and find it easier to locate the
information they want. Besides, the deadline and record template can be used to
separate different types of IP applications or assets. Other users can reuse
the template without re-building and re-typing the fields setting. The deadline
template can be automatically generated, so it can reduce the time to calculate
and input. Finally, all data in the portfolio can be used to generate different
reports, such as product life, yearly trend and application country patent.
These reports can facilitate the decision-making for developing a new product
or find what the company owns. In addition, there are some analyses of the
product life reminder. Therefore, users can have a quick look at the product
trend timeline visually. Figure 3 shows some snapshots of IP portfolio
management in the KBIPMS.
Figure 3: Snapshots And
Flow Of IP Portfolio Management Of KBIPMS
3.2. IP
Search
The process of
acquisition of knowledge is also important in the IPM. The company can easily
learn and get IP asset information that it wants if the company has efficient
knowledge acquisition processes. The sought data can be used to analyse the internal and external IP through the reporting
function or other IP analysis tools. In the KBIPMS, the search function can let
the users to search for the IP assets in both the internal IP database and
external IP databases. Therefore, the users can get the information and
knowledge to facilitate their decision-making processes and avoid infringement
during the product design and development process. Figure 4 shows the process
flow of the IPM integrated with KBIPMS.
Figure 4: Intellectual Property Management
Flow With The KBIPMS
Internal search is used to find the
data from internal IP database. The company needs to know what IP assets they
are owned or sold. Therefore, they can employ appropriate company assets to
create value. Based on specific keywords or fields, the users can find what IP
data were kept in the KBIPMS. Besides the internal search, users also need to
search for competitors’ IP information in order to avoid infringement and analyse the development trends. There are some free databases
provided by official government departments such as World Intellectual Property
Organization (WIPO) or Hong Kong Intellectual Property Department (HKIPD).
However, it is inconvenience for users to search information from different
databases. Hence, KBIPMS provides an integrated search. Users can search
information by different searching area, such as based on the classification or
the number. This function provides a more convenient way to find the external IPs from different databases.
In addition, a tag cloud was built
to show the popularity or frequency of words in the database content. The words
and phrases are generated by the system based on the part-of-speech (POS) rule.
This function can let the users to know what things frequently exist in the
database. It provides a quick idea about the popular keywords of product
functions and features. Moreover, a search map was developed to show the
relationship among the words or phrases of the search results. By using the
map, the technical and managerial personnel can discover concepts that they may
not think before and they are able to find more relevant search results. Hence,
it can improve the searching approach and increase the accuracy of further
searching results.
4. Case
Study In Hong Kong Science And
In order to evaluate the
effectiveness and efficiency of the KBIPMS, a system evaluation has been
conducted in the Hong Kong Science and Technology Parks (HKSTP), which provides
a good environment to find the target industry users. HKSTP gathers more than
200 companies in Electronics, Information Technology and Telecommunications,
Precision Engineering, Biotechnology and Green Technology. It provides advanced
facilities and support services for high technology companies. HKSTP plays a
supporting role of technology development industries.
To narrow down the target scope,
the target companies have been focused on the Research and Development
(R&D) industry and companies which had been set up for two years or above.
Hence, it ensures that the company has certain IP assets. An RFID solutions
provider has been selected as a reference site for the trial implementation of
the KBIPMS. The company is one of the tenants in the HKSTP. It is a
manufacturer, distributor and consultant producing Radio Frequency
Identification (RFID) hardware. The company is well aware of the importance of
IP and recognizes the internal problems of little knowledge in IPM. However,
they have limited recourses and support for developing IPM. In the present study,
the company would like to use the IPM system to make changes in their company
operation and also IPM.
In order to determine the needs of the company for the
implementation of IPM and obtain the requirement of KBIPMS, an IP Performance
Assessment Questionnaire (Buck & Eagar, 2008) was used. It aims to
determine the awareness and performance of IP of the company and to discover
the problems faced in the existing IPM flow. The
personnel who take charge the IP-related activities in the company have been interviewed.
Based on the results of the interview, KBIPMS has been customized and trial
implemented at the company. A second interview has been then conducted so as to
collect the feedbacks from the users. An IP Performance Assessment
Questionnaire has been distributed to compare the changes before and after
using the KBIPMS. Table 4 shows the purposes and questions of each assessment
and evaluation questionnaire.
Table 4: Question Type And
Purpose Of System Assessment And Evaluation
|
Questions
Type |
Purpose |
|
Intellectual
Property Management and Awareness |
|
|
Company
Intellectual Property Assets |
To find out which IP assets are emphasised |
|
Existing
Management Flow |
To find out the problems of existing IP management flow |
|
System
Requirement |
To find out the needs and expectation of the IPMS |
|
Intellectual
Property (IP) |
To determine the internal improvement of product development and
external threats to the company |
|
Confidential
Information (CI) |
To analyse whether the company is careful
and aware when handling confidential information |
|
Intellectual
Property Awareness |
To determine the knowledge level of Intellectual Property |
|
Intellectual
Property Performance |
Intellectual Property management practices, the IP-related planning and
policy |
|
Feedbacks |
|
|
System
Effectiveness |
To measure how the KBIPMS can help interviewees in actual practices
and to capture, store and retain knowledge |
|
System Usefulness |
To find out the satisfaction level of interviewees and the improvement
area of the KBIPMS |
According to the interviews, the
main businesses of the company are technology development and innovation, and
they had developed and owned loads of innovations. However, there is lack of expertise
to manage the company IP assets. Only 2.5% of innovations have been registered
in Hong Kong or
On the view of IP performance, the
strategy of business development of the company is more focused on product
improvement and innovation and it appears to differentiate itself from its competitors. As a result,
their IP role in strong product and knowledge protection is much needed. The
staff skills and experience may not be shared, retained and transferred
throughout the company as only few staff are
responsible for the IP-related activities. The company has quite good performance in handling Confidential
Information (CI). All employees, contractors, investors or consultants signed
non-disclosure agreements (NDA) to ensure all information is well protected.
However, they have not kept records of IP assets and documents.
After using the KBIPMS, the company
has started to realize the importance of IPM and system support. This can be
proven from the second meeting and the ascertained effectiveness of the KBIPMS.
The score of successful factor in staff skills and experience has been increaseds. Hence, the KBIPMS has been found to facilitate
the IPM process of the company. Staff in the company have
started to consider the confidential and trade secrets of the company. It shows
that the Confidential Information handling and awareness improved after using
the KBIPMS. They have more knowledge about what IP they own. They also recognised the importance of maintaining and searching IP
assets in order to protect the company’s assets. The product and asset
information has been recorded in the system. The operating procedures have
started to be incorporated with IP. More IP searching activities are done
before and after product development. For the system usefulness and
effectiveness, a high commendation has been given by the company for the
functions of portfolio management, including IP Recording and Report
generation.
It shows that the recording
functions are useful for them to stored IP asset data. The needs of internal
searching are less for the company, but the feedback on external searching was
quite good. It provides important means for them to search for the external
data. Company can access the data and knowledge effectively through the IPMS.
The data can be entered and shown clearly, to let users get the knowledge they
need and share to other. Improvement has been found after implementation of the
KBIPMS in recording, searching and analyzing their IP assets. All in all, the
results show that the KBIPMS is useful for IP management and it can help the
user to improve the existing workflow. Moreover, the IPM concept has been
promoted to the company throughout the project.
5. Conclusion
Intellectual Property Management
(IPM) is becoming more important and a topic of concern for many companies.
However, there is still a lack of awareness of IPM for many technology
development companies and they have not enough protection for their IP assets.
It is vital to apply IPM to manage large number of IP assets. However, most of
the IPMSs are information driven instead of knowledge
driven. The research of IPMSs with embedded knowledge
processes and practices has received relatively little attention. In this
paper, a knowledge-based Intellectual Property Management System (KBIPMS) has
been developed to facilitate company operation and knowledge processes for
Technology Development Industries. Based on the KBIPMS, IP Portfolio can be
managed efficiently. The problem of infringement is aware with the assists of
different IP search tools. Data can be summarized through report generation so
as to facilitate decision-making. And hence, the operation and knowledge
processes in IPM can be improved effectively.
In order to evaluate the KBIPMS, a
prototype has been built and trial implemented in a selected reference site in
Hong Kong Science and
6. Acknowledgements
The authors would like to express their sincere thanks to the Research Committee of The Hong Kong Polytechnic University for financial support of the research work under project no. G-U999. Special thanks are also due to the Hong Kong Science and Technology Parks Corporation which provide technical support for the project.
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Professor
Benny C.F. Cheung, Knowledge Management and Innovation Research Centre,
Department of Industrial and Systems Engineering, The Hong Kong Polytechnic
University, Hong Kong; Email: Benny.Cheung@polyu.edu.hk