Designing Intellectual Property Strategy

Leonard M. Goldstein, LLC  close

Designing Intellectual Property Strategy  

There are many steps to constructing an effective IP portfolio and strategy. An IP portfolio and strategy can enhance the value of any business but most importantly startups. In the initial stages of business, documented differentiation can make the difference between getting funding or closing the doors. Having a realistic strategy can mean the difference between defending your business against infringement and monetizing your IP.

Patents protect an inventor's creation, while trademark protection safeguards distinctive words, names, symbols, sounds and colors used to distinguish products and services of one business from another. Property that qualifies for copyright protection include literary works such as books and computer programs; dramatic works and the accompanying words; pictorial, graphics, photographs and sculptural works; motion pictures and audiovisual works; and sound recordings and musical works, including music from plays and dramatic readings, and recordings.

Inventing a product or service is the first step for any company. Developing a portfolio requires obtaining the appropriate intellectual property protection and understanding the processes by which you will protect you intellectual property. With a well-developed IP strategy, you can protect your company's inventions and creative work, keeping tabs on how to allocate resources and when to explore new research and development opportunities. Here are five steps that can help you develop your own IP strategy:

1. Let your company's size guide you

First, your company's size and structure should guide your IP strategy. For defensive purposes If you have a small company with only a few employees working on an invention you might not need a formal IP strategy. A larger company would be wise to develop a detailed IP strategy. One of the most important areas to clarify is ownership rights and publication policies. The strategy should take into account previous agreements between the company and employees (or contractors). Larger companies may want to outline the roles and responsibilities of managers and employees in managing and disseminating the company policy regarding intellectual property use to ensure everyone follows the proper procedures that will maintain the company's intellectual property rights.

2. Establish guidelines for creating intellectual property

Decide how the intellectual property will be created. You should list each person involved in creating the work, then outline exactly what type of intellectual property protection you are seeking. A search of prior art will become crucial to the development of your IP to ensure you don't infringe on someone else's IP. Requesting professional help to conduct a search is probably the better option. Your IP strategy should take into account whether or not the company can afford this preliminary intellectual property search. In addition, you should hold regular meetings to devise a plan of attack for creating your intellectual property. Taking into account the time for research and time to market.

3. Analyze your competitive advantage and barriers to entry

One of the first questions you should answer before you invest in creating any kind of intellectual property is whether or not you can reap the rewards of your work in the marketplace. Would your invention, brand or creative work give you a competitive advantage in the marketplace? You'll need to do your research to see what's out there and evaluate if you could capitalize on your work. The market climate for your product or service will dictate how and if you develop intellectual property as well as which kinds of intellectual property to develop.

You can gain a competitive edge by understanding and overcoming any barriers to entry, which include the following:

  • Are there key personnel who might impede the process?
  • What is the cost to develop the product or service and get it to market?
  • Will the product or service require regulatory approval?
  • Are there any competitors who offer a product that's similar to yours or are you the first to offer this type of product?

4. Understand third-party interactions

Problems and misunderstandings that may arise from third-party relationships are one of the surest ways intellectual property can be lost. Any third parties who could potentially be involved in any portion of the development of the product or service being protected should be considered in developing your IP strategy. Third parties can include employees, suppliers, partners, contractors and even customers. Your IP strategy should dictate any employee contracts, supplier and contractor agreements, confidentiality agreements and licensing options.

5. Review your intellectual property

The scope of protection of the intellectual property should also be included in the intellectual property audit to determine whether there may be any gaps in protection or risks in the development and intellectual property protection process. Monitoring what is going on in the market place and what the competition is doing is crucial. Companies of all sizes can spend a lot of time on developing a product or service. An equal amount of time should be spent on developing your IP portfolio and strategy to ensure the maximum return on your intellectual property investment.