What to Know About Intellectual Property (IP) Strategy: The Intellectual Property Application Series

In this issue of ‘Intellectual Property Application Series,’ I’ll discuss what is called an intellectual property (IP) strategy.  I’ll explain what it is, what you need to know, and what to do if you need legal assistance with your IP strategy.

Intellectual Property (IP) Strategy:

An intellectual property strategy is a strategic plan to build, protect, and monetize an individual or company IP portfolio.

Thrive IP® is a firm of Intellectual Property Law attorneys specializing in intellectual property strategy and other strategic IP services. With skills honed by years of patent drafting and prosecution, trademark prosecution and branding services, high stakes litigation, licensing, due diligence investigations, client counseling and opinion work. Our attorneys are uniquely qualified to guide clients’ strategic IP decisions.

Intellectual Property Portfolio:

Intellectual property in an IP portfolio may include patents, trademarks, copyrights and various legal agreements. Patents protect inventions, trademarks distinguish and identify the source of a good and/or service, while copyrights protect a work of authorship. Together, these forms of protection make up an IP portfolio. A solid IP strategy is needed for continued protection and for making informed decisions on what IP to allocate resources to and how best to protect your IP assets.

Building and Protecting an IP Portfolio:

At the outset, an IP strategy should cover ownership rights.   It is imperative to establish who owns the rights to any type of intellectual property.  New assignments may be necessary to establish clear ownership in patents, trademarks and copyrights. A though review of any existing assignments is important to ensure they include appropriate provisions. Any transitions in the ownership of IP should also be made of record, via a formal assignment. 

IP Licenses:

Any document intended for use as an intellectual property license would also be taken into consideration, when an IP strategy is in development. While assignments transfer full ownership, a license only governs the licensed use of a company’s intellectual property.  Many types of licenses are in use in Intellectual Property Law, including licenses for patents, trademarks and copyrights. Review of any existing IP licenses would be to ensure that the agreement includes appropriate provisions. 

Individual License Agreements can vary dramatically depending on the nature of the agreement and the type of property being protected.  There is, however, a standard layout and crucial content that an experienced IP Attorney can ensure is included in your License Agreement.  Several components are standard, including the license term, territory, renewal, and other expectations and limitations to the use of the property.  

It is important to note the specific provisions and expectations set out in each type of agreement. For example, in a trademark lease, it is imperative to explicitly state liability obligations and establish the responsibility of leasing the trademark. Also, the trademark owner is expected to control the quality of the goods/services, as well as the appearance of the licensed trademark. To ensure these provisions are maintained, a licensor has permission to monitor the licensee’s use of the mark.  These proactive measures are an important step in protecting a mark and the goodwill associated with it, so that it does not become susceptible to losing the rights provided by registration.

Establishing IP Policy:      

The mishandling of a company’s intellectual property could put legal protections at risk. A clear and detailed company policy is important to maintaining protection. Non-Disclosure Agreements, as well as other protections, may also be necessary to properly protect your IP portfolio. 

The company policy documents may include items like a trademark style manual. The use of this type of document is a great way to proactively protect a company’s trademarks. Cre and institution of a style manual is intended to dictate the way a company expects a mark to be used and presented or how the mark is not to be used. Misuse of a trademark can lead to loss of the trademark rights. 

Intellectual Property (IP) Strategy Goals:

Clear goals are also important. A professional IP strategy should specify what type of IP protection is in need, market feasibility and a timeline for execution. 

The first step, is to determine what type of IP protection is need. We can help you determine this by identifying what type of IP requires protection. To list only a few common examples, IP protection can extend to patents (design and utility), trademarks (word and design), and copyrights. 

Market feasibility is important to establish early on, to determine if you can capitalize on your investment in new IP ventures. 

Establish timelines early in the process, also. Not only will a timeline give a clear indication of progress, but they are important in avoiding potential issues with intellectual property deadlines. Missing intellectual property deadlines could result in loss of rights to the property. 

Feasibility of IP Searches in Your Intellectual Property (IP) Strategy:

Part of the IP strategy process should also be to determine if a formal search and opinion is economically feasible. A search, while not mandatory, is an important step to help avoid infringing on another’s patent, trademark or copyright.  This investment also helps in establishing if it is advisable to proceed. 

A patentability search, or novelty search, as the names imply, are searches performed with the intent to determine if an idea is able to be patented based on whether it is novel.  For a trademark, we would perform a clearance search of currently used marks. An individual inventor can attempt a search, but a patent attorney, patent agent, or a person who specializes solely in IP searches would conduct a formal search. Performing a quality search takes a great amount of experience and a familiarity with the intricacies of the field.  

Monetizing an IP Portfolio:

A solid IP strategy can lead to a valuable IP portfolio. Intellectual property provides as much as 85% of the value of an established company. For a startup, that value can reach 100%. Accordingly, protecting your company’s intellectual property represents an investment in your company’s success. If you fail to protect your intellectual property or casually ignore others’ intellectual property, your company may face copyist competitors with vast resources, or worse: infringement litigation that could end your company. 

If properly-structured, an intellectual property portfolio may increase market share, afford greater monetization opportunities, and protect the valuable intellectual property on which a company stands. 

We are Here to Help You Thrive:

Thrive IP® provides intellectual property legal services for clients seeking patents, trademarks, copyrights, trade secret protection, licensing, and freedom-to-operate guidance.  We assist clients across the nation and around the world to navigate U.S. intellectual property law with client counseling, freedom-to-operate searches and analysis, intellectual property prosecution, and litigation in state and federal courts and before administrative bodies such as PTAB, TTAB, ICANN (domain name dispute resolution).  Areas of technical expertise and legal service include big data, biotech, chemical, e-commerce, electrical, electro-mechanical, medical device, materials science, mechanical, optics, and software arts. 

Our firm focuses on service, the kind that builds prosperous relationships.  We help our clients succeed – we help them Thrive.  Don’t leave a matter as important as your intellectual property to chance.  Willing help in the form of an experienced legal team is here and is just a call away.  We have patent attorneys located in Charleston, SC; Greenville, SC; Knoxville, TN; Alexandria, VA and Smithfield, VA. Please contact us if you have an interest in our intellectual property services or if we can help answer your questions.