Obtaining intellectual property (IP) protection is important for anyone whish to keep rights to their inventions, designs, or creative work. However, developing various forms of intellectual property is costly and each need specific approach and attention; a trade secret may require minimum expense to protect (in form of record), while patents can cost thousands of dollars over their lifespans. Most companies have limited budgets for IP asset creation, so it is essential that they understand the true costs, risks, and benefits in the IP creation process. Therefore, there is a need to have an IP strategy to ensure that any IP related activities are aligned with the overall goals and objectives of the company.
Nowadays it has become essential for CEOs that in addition to having a general understanding of the intellectual property and its role in their business and industry, have also the ability to manage all intellectual creations and innovations in a way that could lead to the best benefits in the competitive market. To ensure the effective execution of the IP strategy, an IP management infrastructure should be established.
IP strategy could be defined as an IP management plan and both definitions have the same purpose to facilitate the efficient transition of innovation to the marketplace.
The long-term lifespan of many IP assets results in returning investment and supports the importance of having a well-documented strategy to create, record, protect, and exploit the IP assets. The future benefit of any IP-related expenditure is thus highly dependent on a company’s unique attributes and its constant awareness, monitoring of the internal and external conditions, managing both the risk and expectation and specific and continued investment for IP asset creation at all points in the process.
Why an IP Strategy is Important?
As survey results imply, almost 80% of the value of a business is in its intangible asset. Therefore, it makes sense that the framework of an organization is based around those assets and associated IP issues – rather than trying to dovetail an IP strategy into a less than an effective business plan.
Factors to be Considered for Developing IP strategy
Intellectual property is often the backbone of technology-centered businesses. And an IP strategy is beneficial for businesses. The business owners should have a definite strategy before filing for patents or trademark. The IP strategy should be designed in a manner that brings it in alignment with your business goals
For the purpose of developing an IP strategy, some essential factors that must be considered are as follow:
Size of the Business
The size and the structure of the company you are trying to plan an IP strategy for it is of the first factors must be considered.
For small to medium enterprises (SMEs), internal structures need to allow for growth. SMEs are great opportunities to implant an effective IP framework and can adapt quickly to IP policies.
In the Research organizations, there is an issue of researchers’ intention to publish their scientific work and their culture more biased to science, rather than the business. Moreover, since there are many interactions around research contracts, as a result, the ownership of the resulting IP can be ambiguous. One of the most important areas to clarify are ownership rights and publication policies. The strategy should take into account previous agreements between the company and employees or contractors.
Therefore, an IP strategy must include a strict publication policy, an ownership policy, and related template agreements, a training policy to increase the awareness of intellectual property amongst the research staff as well as means to encourage them to link IP issues to their commercial arm.
larger companies, on the other hand, would be wise to develop a more detailed IP strategy. The IP strategy in the big companies needs to have firm guidelines on management responsibilities and communication throughout the organization to ensure that there is a consistent overall approach to IP issues. IP strategy planning for large companies can be implemented either by an in-house counsel or through a strong relationship with an IP firm. Regular IP strategy meetings help considerably here.
Type of Protection is Needed
Patents are not the only kind of IP needs to be protected. While keeping in mind the business goal, consider all types of available IP protection. This is the only way to ensure you are pursuing the right type of IP strategy. The following question must be addressed during this step:
What will the chosen type of IP protection help more?
What is the main goal of the company relating to its IP assets and which protections can help more?
Regarding the main goals of the company, the policy of the company so far should be noticed or an IP policy has to be developed based on the requirements and potentials. A company will usually need to develop policies on the acquisition, exploitation, monitoring, and enforcement of IP rights.
· IP Acquiring includes managing the owners and IP creators. The question of how intellectual property is created in the company should clearly be replied. Having audits and the checklist (next section of this article) can help to identify people who could involve in creating new IP assets. The outlining exactly what type of IP protection has to be seeking for those creations is the next step.
For instance, a product company will generally file provisional patent applications (in the jurisdictions having this type of protection) prior to product release or sales efforts, obtain trademark clearance for company and product names well before launch, and register core trademarks, domain name and copyright s as necessary. Most international filing regimes provide a grace period (around 6–12 months) from an initial filing, and international protection is typically pursued as these deadlines approach and the company has further considered product development and its likely international footprint.
· Exploiting IP is the way of maximizing the acquired IP’s value. It is not limited to protecting IP in the companies, but it also may involve other commercialization and monetization strategies.
· Monitor the internal and external use of your IP. For developing an IP strategy, a systematic monitor of all types of IP in the portfolio is necessary.
· Once IP rights are acquired, taking more steps to enforce those IP rights might be essential. Otherwise, there is no consequence to a potential infringer. Since enforcing IP rights through litigation is costly and uncertain in outcome, therefore avoidance and negotiations may be viable alternatives.
Markets could shape your IP strategy as to where to file for IP protection plus the scope of the IP protection you should be seeking. For example, if your market is in Asia, for example for trademark protection, you should consider that most Asian countries First to File has priority over First to Use. Moreover; medical treatment and software can only be patented in some countries; Know-how cannot be licensed in others.
Search the competitor and/or collaborator activity, not only where they market your competitive product, but also where they manufacture it. This can help you decide where applications are to be filed. For example, you may choose to file an application in a small market if it can stop a competitor manufacturing in that market and exporting elsewhere.
Knowledge of the strength of your collaborator’s IP position can help you work out how to approach licensing negotiations.
It is also important to know what complementary industries there are out there. This way you can license your IP to non-competing industries and create alternate revenue streams.
The IP position of your competitors is also important as freedom to operate (FTO) issues may arise in preferred markets. For example, a competitor may have a patent in the United States but not in Europe so your approach will need to be different for both markets. Always conduct FTO searching at the start of a project – before too much investment has occurred.
Technology trends can be assessed by looking at the rate at which patents are applied for in a particular area. This can help not only guide your research but whether you decide to file a cluster of patent applications in a particular area to foil your competitors.
Intellectual property searching can extract a lot of the information discussed above including market activity, niche markets, and other’s brands. As part of your policy, you should consider augmenting your normal market research with IP searching.
Analyzing Third Parties and Competitors
Third parties can include employees, suppliers, contractors, customers, and partners. The IP strategy you are going to plan should define any interactions and should include key person insurance, confidentiality agreements, development agreements, documentation protocols, and any licenses.
While you determine what type of intellectual property protection to seek, you may need to conduct a comprehensive search of existing work to ensure no infringement occurs on a third party’s IP protected assets. It is clear that you don't want to develop products that are not protectable or plan to market a product that the creator isn't free to develop.
Therefore, such a search should be taken into account as part of the IP strategy. The search and tailored analyzing could find answers to some essential questions:
- What is the patent landscape in your field?
- What's the value of the product or service you are wanting to protect?
- Does your trading product, infringe on a competitor or a third-party IP rights in the jurisdictions where you are likely to do business?
- What is the competitive market and how do competitors’ market their product or service?
- Are they relying on third-party or competitor IP protected?
- Is there any need to license IP from a competitor or a third party?
Auditing IP Assets
IP audit is an organized review of the IP owned, used, or acquired by a company/business and is essential to plan an IP strategy as it can assess and manage risk, remedy problems and implement best practices in IP asset management.
To Audit, undertaking a comprehensive review of a company’s IP assets, related agreements, relevant policies, and compliance procedures are necessary.
What should be considered for IP auditing:
Collecting all different contracts/agreements
In order to assess the adequacy of relevant provisions in all agreements that concern the protection of IP, scrutiny in the following agreement and their provisions is needed:
(1) Licensing agreements
To ensure that the company is continually in compliance with the terms of such licenses and whether they further the current and future business plans of the company.
2) Assignment agreements
To determine whether the company was granted an assignment from every inventor or author of a work for finding out whether any security interests or liens have been granted in the IP assets.
Any forward-looking assignment of all pre-existing IP that is related to the company’s business should be identified and collected.
(3) Employment and independent contractor agreements
It is important to notice the following items in employment and contract agreement:
All assignments of IPs developed by personnel while employed or maintained by the company. If possible, this could include related developments from employee side projects.
- All provisions governing the transfer of the IP rights from employees or contractors to the company;
- Terms and conditions that imply independent contractor under them are allowed to use any copyrighted materials or rely on trademarks associated with the business;
- Provisions concerning a waiver of moral rights in the copyright works;
- Clauses of the employment/contract contracts that set restrictions on the disclosure or use of confidential information during or after the completion or termination of the contract;
-The extent, scope, and enforceability of non‐compete and non‐solicitation provisions -Provisions outlining the employees’ continuous commitment to assist in the protection of the IP rights
Any Joint Venture & Collaboration Agreements
If a company enters into various types of arrangements with suppliers, vendors, or customers to jointly develop or update the company’s technology, the following items must be considered during auditing;
- what is the scope of IP contributed to the joint venture?
Has been a system defined for identifying protectable intellectual property resulting
from the cooperation?
-Who owns the IP assets anticipate or created through the joint venture or collaboration
-Who pays for any application for registration of IP rights and any subsequent litigation of the IP rights?
Which IP rights can be used by whom in case of ending the joint venture or collaboration period?
Often government attaining contracts and government-funded R&D agreements provide for ownership of IP rights in favor of the government or a governmental agency. In order to complete the IP auditing process, all such contracts should be scrutinized for understanding any limitations.
Following considerations also should be taken in to account during IP auditing:
- Any documents relating to confidentiality and non-disclosure obligations for any non-public information related to the company or derived from company information.
- Investigating the laws (Jurisdiction laws to find the non- compete for the clause of laws which could address subsequent separation from the company.
- Considering the mentioned limitations on the use of retained information in human memory.
- Finding compliance with approved device policies that limit where, how, and with what devices employees can access company information.
- Investigating employing contract to find out that any creative works (including source code) are explicit works made for hire on behalf of the company.
- Any disclosure of IP and establishment of licenses to use IP of suppliers, joint venture partners;
- Allocation of jointly developed IP rights for joint venture and business partners – either ongoing rights to use or co-ownership;
- limitations on liability incurred due to IP indemnification, IP defense or breach of any other obligations
It is possible to do an audit, search, and analyze by some professionals in these fields inside the company, However Developing IP strategy can be executed by an IP counsel, early to perform a comprehensive IP analysis, would be promising to consider potential design-around, monitor competitor hires and onboarding, and etc.
Companies of all sizes should focus time and energy on having a strong understanding of the intellectual property process, which can help saving time and money when developing a product or service and obtaining intellectual property protection. By determining the company goals and evaluating an IP strategy for future success, the company will have a better understanding of the environment is entering it. A company can spend a lot of time developing a product or service and an equal amount of time should be spent on developing an IP strategy to ensure the maximum return on its intellectual property investment.