The IP Strategy for the Rest of Us

“Hey, boss?”

“Yeah?” Reluctantly, Boss halts the cat video he’s watching on YouTube. He squints at Sales Guy, who’s standing in the door of his superior’s corner office.

“Do we have a...” Sales Guy frowns, facing a complex word. “Do we have an IP strategy at Lemmings Ltd?”

Boss laughs. “An IP strategy?” Boss laughs again.

Sales Guy squirms.

Boss glances longingly at his halted video, sighs, and focuses on his employee. “Sure, we’ve got one. The best one. It’s called JUST WAIT AND SEE WHAT COMES UP.”

Sales Guy rubs his chin as he squints at a wad of paper he’s holding. “Shouldn’t we have something more... specific?“

Impatiently, Boss waves a hand. “Why should we? All these IP strategies are nothing but hot air.”

“As you say, Boss.” Sales guy places the wad of paper on his superior’s desk. “Then, what do we do about this patent infringement suit we just got?”

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What’s an IP Strategy?

To start with: What’s IP?

IP, intellectual property, refers to creations of the mind, such as inventions, literary and artistic works, designs, names, and images used in commerce. Think patents, copyright, trademarks, design protection.

An IP strategy is how your company deals with IP. It’s a set of guidelines geared at maximizing the benefits of IP and how minimizing its risks.

Some companies, such as Lemming Ltd, deal with IP when it smacks their face. They file a patent when one of their developers says she has invented something. They grumble when a competitor uses their trademark. And they fret when they get sued for copyright infringement.

Others have a plan.

If you are innovative, create content, or explore new ideas, that’s what you should have.

Why an IP strategy?

An IP strategy will not guarantee your success, nor can it promise to keep you safe. But it will increase your chances to succeed and reduce the risks.

Wise shareholders and good investors will expect you to have one. And if you don’t, and if the poo hits the fan, they’ll ask you why about it.

What goes into an IP strategy?

Most IP strategies cover at least some or all of the following topics:

• Building an IP portfolio: If you want to build a portfolio of IP rights, your development process should include milestones where ideas are checked for protection. Don’t wait for individual developers to realize that they might patent their idea.
• Managing an IP portfolio: If you have an existing portfolio of IP rights, define a process that allows you to stay aware of what you have, to exploit it where needed, and to prune it where it makes sense.
• Conflict control: Take proactive steps to reduce risks arising from third-party IP, such as implementing milestones to carry out freedom-to-operate searches. And—in particular if you are a larger company—devise guidance for handling conflict if it arises.
• Cost control and taxes: A budgeting and reviewing system helps you to keep IP costs manageable. And, in some cases, IP may allow you to implement a patent box for tax saving.
• Third-party monitoring: Implement monitoring of the IP activities of your key competitors.
• Using your IP: Define rules to exploit your existing IP. For example, define the policies and responsibilities when granting licenses to or handling infringements by third parties. Using your IP also implies policies re "patent marking" your products.
• Responsibilities: Define the people who are responsible for executing your IP policy. Without this, nothing will get done. But be careful: if you place responsibility on the wrong shoulders or if you start blaming people for making decisions where decisions need to be made, you may bring operations to a standstill.
• Training: Make sure your key players know what they need about IP and about your strategy.
• Contracting: Check if you have solid IP clauses in contracts with third parties and with your employees.
• Publications, secrecy, and privacy: Publishing is an important part of most businesses. It also can strengthen your IP position (see my article on Defensive Publications). But some things might better be kept secret. Hence, define guidelines on publications and on trade secrets. And while you're at it, you may also want to implement rules to comply with privacy laws, e.g. if you manage confidential third-party information.
• Licensing: Do you have the licenses you need for your work, and only those? This is particularly important when using Open-Source Software in your products: comply with its licensing terms. Issue guidance where necessary.
• Reviewing your strategy regularly: Does it still fit? Does it cause problems? Is it being followed?

How to devise an IP strategy?

A company’s executives and board must be fully committed to the IP strategy. Without that, the strategy will fail. And the strategy must be compatible with the way people work.

Hence, defining a strategy starts at the management level, but all key players should be involved. And, of course, it’s a good idea to get advice from an IP expert (*author winks* ??).

The resulting strategy may be a one-page memorandum, or it may be substantially longer—it all depends on your needs. There’s no one-size-fits-all solution.

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Boss stares at the patent infringement suit in disbelief.

“You’re probably right,” Sales Guy says. “IP strategies are nothing but hot air…”

Boss still stares, his cat video all but forgotten.

“But, you know…” Sales Guy takes a step back, establishing a safe distance from his superior. “Hot air… it can make the balloon float.”

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Any thoughts on this?

Kurt Sutter

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#ip #strategy #patents #trademarks #ipstrategy

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