Intellectual Property: Strategize, Then Act

by | Sep 29, 2014 | Intellectual Property

As a former emerging company CEO looking for a significant cash infusion, I needed to pitch to investors a lot. The most often asked question was, “Do you have a patent, and if so, how many do you have?” The more significant question would be, “Do you have an intellectual property plan, and if so, please share the highlights.”

The difference in the questions is that a good, comprehensive IP plan will continue to add intangible assets to a business, which grows the value exponentially, whereas one strategy may or may not work and usually is not enough to meet the company’s needs or vision.
Working with emerging and growing businesses, I understand both the need to impress potential and current investors and/or move quickly to secure competitor advantage. However, there are a plethora of considerations to take into account about various IP strategies:

  • Patents essentially provide the right to exclude other entities from utilizing a relevant invention in exchange for the filing entity to publish the invention. Specifically, filing entities must do so “with sufficient particularity that a person having ordinary skill in the art would be able to make and use the claimed invention without undue experimentation.” For many companies, publishing the secret sauce is not a good strategy, especially if it can be modified and then commercialized by a potential competitor.
  • Recent US Supreme Court decisions are limiting what can be patented including mostly excluding software applications.
  • In the alternative, companies absolutely have the right to have trade secrets and enforce trade secret agreements with their employees. Effective examples of trade secrets include WD-40 and Coca-Cola. On many occasions, the idea of keeping something secret trumps the idea of a patent.
  • Another method of protection is through copyright. Copyright is protected by the U.S. Constitution for original works of authorship fixed in a tangible medium of expression (think writings, designs, etc.) Many companies copyright their programming code, marketing materials, jingles, and training manuals. Furthermore, all mature companies ensure that there is an assignment of copyright to the company from the relevant employee or contractor. In summary, a comprehensive copyright plan can provide excellent support in competitive IP protection.
  • Trademarks can also be extremely effective. A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. Examples of really good trademarks include Oreo, Apple, and Levi. In my opinion, brand is really important as it distinguishes you from the rest of the marketplace and thus creates value. Accordingly, a comprehensive brand and design trademark strategy is essential in IP planning.
  • There are movements against IP protection, especially in the open-source software world (see. e.g., copyleft). Accordingly, if your market includes people who are averse to obvious IP protection, it is important to take that into consideration in your design and marketing.

A good intellectual property plan looks at all of these strategies to determine a) what intellectual property exists for the organization and b) how to best protect it. Steps usually involve a) an experienced IP attorney (like EmergeCounsel) or other generally reviewing the website, marketing collateral, and internal documents. b) a free flow discussion with management about IP actually and potentially securable, c) a long-term and short-term IP strategy plan drafted based on the budget and direction d) execution of that plan and e) memorizing the IP and intangible assets that the business has grown and finally f) policing the IP to assure no one is using it.

The process is both fun and enlightening. More importantly, looking at IP comprehensively can add tremendous value to a company. Just look at the balance sheets in the annual reports of any successful company to see what I mean! Contact EmergeCounsel today for your IP strategy.


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