Almost all companies have a desire for more directed and strategic decision making about how to protect their intellectual property, especially with respect to patents due to their cost. In other words, companies are trying to decide which IP assets are going to be most important, which can do without protection, and which are going to turn out to be a business or technological dead end. These efforts are a clear result of the recession and current sluggish economic conditions and reflect an opportunity to re-evaluate legal budgets and obtain the most value from an investment in IP protection.
First and foremost, an IP management strategy should involve educating all company personnel. It is important to create an internal culture of awareness of the importance of the company’s IP assets. This should involve everyone down to the front-line employees, including management, research and development staff, engineers, business people, and marketing and sales personnel.
Creating this atmosphere requires training of employees to explain patents, copyrights, trademarks and trade secrets, and the strengths and weaknesses of each. The goal is to try to instill the recognition that developing a new idea, solving a problem, or changing a process may create valuable IP that may require protection. Ideally, each employee should be encouraged to submit any new idea — perhaps through a simple written form or an email — to a designated person within the company. The idea would then be submitted to a review process to decide what kind of protection, if any, is needed. It is also important to ensure that employee agreements and policies include contractual obligations for employees to assign the rights to any inventions to the company. Also, employee non-compete agreements are important to help prevent key employees from leaving and providing competitors with important knowledge of a client’s business information.
During a review of potential IP, it is important to always ask how the company will profit from the idea. For example, going forward with a patent application for an invention is ultimately both a business and a technical decision. The technical “gee whiz” factor may be there, but if the business case does not support it, then the concept is not worth patenting. Also, an invention may solve a technical problem but may not lead to an advantage in the marketplace over competitors and, as a result, might not be worth the expense. Likewise, if the business case supports trying to obtain patent protection but the legal merits are just not there — i.e., if a patent cannot successfully limit the competition — that might impact the ultimate business decision to go into a certain market. A company should also have a sense of the IP climate within their respective industry. How do competitors approach IP and how competitive is the industry? Is it a vicious free-for-all or more congenial?
An ideal IP strategy creates overlapping IP protection. For example, a company with a software patent application will almost certainly want to also apply for copyright registration for the software code. Additionally, trademark protection is a relatively inexpensive way of protecting the names of products that may be also be patented. Consideration should be given to trade secret protection as an alternative to patent protection. Patent and trade secret protection are usually mutually exclusive, but the decision on which type of protection to pursue may be delayed. For example, when a patent application is filed, the applicant may request non-publication of the application so that it is held confidential by the U.S. Patent and Trademark Office (USPTO). If the applicant later decides to withdraw the application for whatever reason, the idea will still be protected as a trade secret since the application was never publically disclosed.
In summary, a company must develop a plan and strategy to protect their IP assets with business goals clearly in mind. The company also needs to constantly review and possibly adjust their strategy based on the marketplace, any changes in the law, and as other opportunities present themselves. A successful strategy is an ongoing and constant effort that will hopefully provide an intellectual property owner with a competitive advantage over their competitors in the marketplace.