Inventors and entrepreneurs generally understand that intellectual property (IP) is a valuable company asset. However, many small to medium-sized companies fail to maximize the potential for IP by neglecting to implement an effective internal IP process. Smaller companies may be deterred by an ill-conceived notion that this requires a large investment of time and money. In contrast, integrating IP into day-to-day business practices does not have to be complicated. Fortunately, it is never too early or too late to develop and implement a formal IP process. So, how does a company implement formal IP procedures? Moreover, how is the process even started? Consider the following.
First, you can’t protect it if you can’t recognize it.
Before planning and implementing formal procedures, become familiar with the different types of IP and the differences between them. Generally, the different types of IP include utility patents, design patents, trademarks, copyrights, trade secrets, and trade dress. It is not uncommon for companies to deal with multiple types of IP on a daily basis.
Next, determine the “big picture” IP strategy of the company by answering the Five Ws- who, what, when, where, and why. The strategy should be laid out before investing in any formal procedures. An exemplary analysis is outlined below.
The who step in the analysis pertains to establishing the roles and responsibilities of different people in the IP process.
For example, who will be creating the IP, who will be determining the value of the IP to the company, and who will own the IP? Evaluate the content of contractual agreements with employees and third-parties, such as customers, suppliers, and manufacturers. Confirm that non-disclosure agreements are valid and being routinely used by employees.
The next step includes determining what IP is going to be protected or created in the future. What is the potential value of the IP to the company? Also, what are competitors doing? Search existing IP to make sure that the company is not going to develop a product or use a brand name that is not protectable.
The when step of the analysis includes setting a timeline of immediate, intermediate, and long-term goals of the formal processes.
Additionally, when will IP be submitted, evaluated, and filed? Consider statutory deadlines for filing certain types of IP. For example, once an invention has been publicly disclosed, such as at a trade show or to a third party that is not covered by a non-disclosure agreement, a US patent application must be filed within one year from the date of disclosure before the right to file is lost.
Moving to the where analysis, think about the geographical markets where IP protection is sought.
If the company anticipates future overseas expansion, consider protecting IP in the appropriate countries. Estimate the potential costs associated with registering and enforcing the IP overseas, and create a realistic budget. In determining where to pursue patent protection, it should be noted that a public disclosure is an absolute bar for filing a patent application in many foreign countries.
Lastly, why implement a formal IP strategy?
Aside from the obvious reasons of building company assets and blocking competitors, other reasons may include creating a successful brand and developing the company culture by incentivizing inventors and encouraging future IP. Determine what kind of inventor incentives are appropriate. The incentives may include bonuses, gift cards, plaques, or other forms of recognition.
After the guidelines for the IP strategy have been laid out, the first step in implementation is involving company personnel. Appropriate personnel, such as a patent agent, an of-counsel attorney, or an outside counsel attorney, may need to be employed. Existing personnel should be educated on at least the different types of IP, public disclosures, and inventorship issues. Employees should understand that an employee who merely reduces to practice the inventive concept of another employee is probably not a co-inventor. Additionally, caution employees against making admission-type statements about the obviousness or patentability of an invention.
Social media IP issues should also be addressed. Make sure that the company has ownership of handles, usernames, and pages on major social networking platforms. If possible, social media platforms should be monitored for infringement or misuse of trademarks, or posted content that would constitute an enabling patent disclosure.
Finally, formal procedures can start to take form. For example, establish a formal invention disclosure process for potential patent applications. Provide straightforward forms for inventors to use and assist the inventors in filling out the forms. If feasible, set aside time during regularly scheduled meetings for brainstorming that may result in inventors filling out invention disclosure forms.
When an invention disclosure form is received, the appropriate personnel should perform a patent portfolio check and review the disclosure for technical feasibility and commercial value. If more details are needed, follow-up with the inventor. If it is decided to move forward with the concept, determine who will prepare and file the patent application and a timeline. Determining the timeline may depend on numerous factors, including the status of production, customer interest and potential revenue, foreign filing interest, etc. An in-house or outside patent counsel should be able to assist at this point.
After the implementation of formal procedures has started, track and promote the successes of the procedures. For example, track the number of brainstorming sessions, invention disclosures, filed patent applications, issued patents, and the revenue attributable to the inventions. Ask employees for their feedback on the procedures.
The ultimate goal of formal IP procedures should be to create a well-rounded IP portfolio that is representative of the products of the company. The portfolio should be continuously monitored for opportunities to enforce IP rights, or to cease paying maintenance fees if the IP is no longer valuable to the company.
Integrating IP in day-to-day business practices does not have to be a daunting task or a drain on company resources. All that is really required is a thoughtful investment of time that can lead to invaluable benefits for companies of all sizes.
If you would like further information on any of the above, please contact Bonnie Smith at email@example.com.
Renner, Otto, Boisselle, & Sklar, LLP
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