By Jared R. Clark, Cutler & Donahoe, LLP
It is easy for new businesses or independent inventors to fall into the habit of looking at their patents as discreet assets, like a piece of lab equipment or a building lease. Instead, it’s vital to think about patents strategically – how they can bolster and advance an entire business strategy. Thinking about patents as assets leads to errors that may go undiscovered for years, such as, thinking that a single patent application can provide protection for an entire business, or thinking that provisional patents are the only type of protection a business needs.
IP Strategy is essentially the central play book for intellectual property and how to use it to support the business. By carefully forming this business game plan, the IP Strategy can be of immense value. Developing an IP Strategy forces a company to think broadly about the way their technology is to be used. Not just about using individual patents to create a mass in a patent portfolio. Patent portfolios are great, but a mismatched collection of patents won’t help you gain ground on your competitors, or stop them from doing anything.
In the traditional sense, companies file patent applications that result from a potentially valuable invention that has come from R and D, or really from any area of the company. In order for them to be noticed, these inventions have to grab the attention of upper management and before they reach that level, potentially dozens of individuals in between. What is missing in this traditional model is strategy. Just waiting for inventions to pop up is non-systematic, it leaves too much at stake, and essentially puts all the effort of developing your IP Portfolio on the shoulders of your inventors. A good IP Strategy is one that directs the invention, such as when companies define the areas where they want to see invention and then define the type of intellectual property they want to create.
One simple element of a solid IP Strategy is to carefully scrutinize patent applications during the prosecution process in order to “invent around the complication” before it is even issued. What better than to beat you competitors to the punch by analyzing your patents and seeing how they might try to get around them before they even have the chance?
An IP Strategy might not even involve patents. Trade secrets can be an invaluable protection that cooperates with your patent portfolio by allowing you to patent a portion of an invention that can be reverse engineered and holding the rest of the invention as a Trade secret. If you are a type of manufacturing company, keep custom machines under wraps with shrouds in order to prevent passersby from seeing the components of those proprietary machines. Make sure your employees know what is a trade secret and what isn’t and have policies and procedures in place that contemplate ways in which those trade secrets could be released to the public – and make sure your employees know about that too.
Individuals unfamiliar with IP Strategy simply “don’t know what they don’t know.” If you are reading this and fall into that category, the best way to start developing a strategy is to ask yourself the question “How is it possible for my company to have survived without an IP Strategy, and if we have been lucky, do we need to start developing one now?” Remember, Intellectual Property Strategy is not taught in universities or corporations. It tends to be only known and appreciated by those who have real life experience with the value it is able to bring to a company.
If your business has been relying upon the same products over and over for years and years, it is time to think about developing new technologies to lead your company forward. There is a limit to how long you can do the same thing over and over and still succeed. Make 2011 the year when you develop an IP Strategy unique to your company and beneficial to your bottom line. And once you develop the strategy, make sure you update it in light of changing business goals.
Jared R. Clark is a registered patent attorney practicing in the Intellectual Property practice group at the Sioux Falls law firm of Cutler & Donahoe, LLP.