Understanding IP Strategy
All businesses have intellectual property (IP), whether they know it or not. Be it a brand, an invention or website content, IP is an intangible asset that, when properly protected, can enhance the overall value of a business. By the same token, using IP assets of others (no matter how innocent or unwitting that use might be) can threaten the business with liability for unanticipated costs. Establishing and implementing a sound IP strategy is critical for any company, especially innovative companies.
How to Develop an IP Strategy
The first step in developing an IP strategy is recognizing the need to have one. The second is to understand how the various types of IP protection defend a company’s intangible assets.
Generally speaking, utility patents protect inventions (functional ideas embodied in devices, methods and compositions of matter) by excluding others from practicing the invention. A trademark is a distinctive word, symbol or device used in connection with goods in commerce to (a) indicate the source of the goods and (b) distinguish them from goods of others.
A copyright protects creative expression fixed in a tangible medium, such as videos or literary works including computer software. Lastly, a trade secret provides a company economic value from its confidential nature.
IP Strategy Tools
The key to an effective IP strategy is knowing how and when to wield the “tools” at your disposal.
Patents protect inventions and useful functional ideas. They enable the holder to stop another from making, using, or manufacturing what is described in the claims found at the end of the patent. Patents can be incredibly valuable when tied to a successful product and linked to the other forms of IP. Our strategy with regard to patents is twofold. First, we help clients establish durable patents and defend those patents vigorously if they are violated and legal action is necessary. Second, we challenge applications before patents are issued if they appear to conflict with those of our clients. This helps weaken a competitor’s litigation or licensing position. Our tactics include targeted continuations, copycat claims, derivative proceedings, third-party submissions and foreign protests.
A trademark derives its value from being a distinctive link between a product and its source. A brand represents your goodwill, your reputation and face to the consumer. Trademarks are more valuable when they do not describe your products or services. That is to stay, they are distinct. While people are often tempted to use marks that are descriptive, descriptive marks are weak and subject to diminished protection, if they can be protected at all.
Copyrights protect creative expressions. Registering copyrights early provides the ability to seek statutory damages. This is important leverage when the question of actual damage is difficult to ascertain. And before you dismiss copyrights as only covering music, sculptures and other works of art, recall that software is considered a creative expression and is protected under copyright law.
Trade secrets need to be… secret. Employees are often the source of great innovations. Consequently, their actions form a key piece of the IP protection puzzle. Solid employee agreements require employees to identify and protect each piece of IP, to mark and treat it as a valuable asset and to provide a clear chain of title as to IP ownership.
Your Unique IP Strategy
Using these guidelines, we work with companies of all types and sizes to identify and protect their IP. And while there are some basic principles, there is no one-size-fits-all solution. Just as each company and each invocation is unique, so too must be an organization’s IP strategy.
“Tremendously useful to get advice from someone who thinks beyond the pure legal calculus and works well with business people. Mike has the experience and pragmatism to be an invaluable addition to your team.”Jay Jesse