A coherent IP strategy must be both multi-dimensional and customized supporting specific business outcomes. Ideally, one basic approach to managing patent IP can be applied across the business while allowing for customized approaches and strategies to be employed for trade secrets, know-how, trademarks and other forms of IP. This philosophy in then embodied in procedures and norms of behaviors demonstrated by the firm’s employees.
Everyone Deals with IP
The majority of our purchasing decisions based on brand names; everything we read is subject to copyright protection; we use patented inventions every day and we frequently drink or otherwise use trade secrets (such as the formulas to Coke and Pepsi).
Here are some of the ways that the people in your company or client’s company deals with IP:
trademarks (brands, taglines, slogans, logos).
copyrights (logos, marketing collateral).
copyrights (source code).
trademarks (brands, taglines, slogans, logos).
copyrights (logos, marketing collateral).
copyrights (company and product manuals, guidelines, plans and strategies).
trademarks (promoting the company’s brand(s).
Research and Development
patents (inventions, processes).
copyrights (sales brochures, pitches).
trade secrets (your company’s unique selling technique).
Intellectual Property – Management Process for Developing the Patent Estate.
A coherent patent strategy must create a comprehensive portfolio of patents which covers the products and services the enterprise plans to deliver to customers while protecting the processes it plans to use in making these offerings available. The objective must be (a) to obtain broad, valid and enforceable patents covering current and potential products and processes with no holes in the coverage, and (b) to avoid piecemeal filing.
Management Review of Invention Disclosures
Establish management review committees for each division or business segment to meet periodically (e.g., quarterly) to evaluate invention disclosures. Committee to have representatives from management with decision-making authority, Research, Development and Engineering, Marketing and Sales and a dedicated Patent Attorney.
The Committee has four roles. The first and most critical is to rate inventions for value from multiple dimensions identifying those that are primary – requiring broad comprehensive patent protection. Next the Committee recognizes those inventions worth patenting but scope and cost are to be controlled within established limits.
Finally, the Committee decides on filings to be delayed pending further developments or not appropriate for filing at all. This final role also involves recognizing intellectual property worth protecting in a different way such as trade secrets.
The Intellectual Property Department will hold periodic education sessions to insure new employees are knowledgeable in intellectual property law and how they must protect the firm’s IP. These educational sessions will be held no less than twice annually and should include experienced employees ensuring they’re remaining capable and current with how the firm intends to use it’s IP.
The basic program will cover
Patents – how to recognize patentable inventions.
Trade secret – how to protect trade secrets.
Copyright – how to use copyrights properly.
Trademark – proper trademark development and use.
The program will also use appropriate recognition tools rewarding employees for generating the firm’s intellectual property while supporting collaboration critical to the innovation process. This recognition program must avoid creating harmful competition among inventors. The incentive program is specifically designed to encourage the filing of invention disclosures as the start of the IP development process.
Record keeping is critical given if litigation occurs all records can be obtained and often interpreted in ways unimagined by the inventor who wrote them. Hence being careful with record keeping is an imperative.
Employees will receive notebooks for recording ideas, and experiments, combined with an implementation system for numbering notebooks and controlling access to notebooks.
Employees will be educated how to maintain proper invention records and will be tested periodically to assess continuing capability. Invention disclosure forms will be developed and distributed to appropriate personnel for submitting ideas to management for consideration.
Protection of Confidential Technical and Business Information
The intellectual property team will develop, implement and monitor procedures for protecting confidential information at each business facility (i.e., offices, production plants, warehouses, research/ engineering centers) and share this accountability with the local management team.
The program will be proactive and auditable using sign in/out requirement for all visitors including visitor identification tags, escorts complimented with limited access through monitored gates/reception areas
Confidentiality agreements to be signed by all employees with key employee signing more extensive confidentiality agreements that contain carefully drafted non-compete clauses. Confidentiality agreements with customers/suppliers will include forms that can be quickly prepared with a minimum amount of information from the field.
These will include but not be limited to the following:
one-way agreement with information going out from the firm.
one-way agreement with information coming into the firm.
- two-way exchange of information going both ways between two firms.
In each case the company representative managing the relationship with the external party will be responsible for determining whether standard secrecy agreement is sufficient or whether a more sophisticated joint development agreement is needed.
The Intellectual Property Law team will assist in this process as required. If the other party makes improvements or inventions, based on company technology, joint development agreements are required. Finally, the Intellectual Property Law department will develop filing system (and database) for maintaining control of and access to confidentiality agreements.
Foreign Filing Strategy for Patents
Foreign filing activity begins with identifying the core countries for each division or business segment where business activity and local laws justify filing patent applications. The management review committee will determine which cases are to be foreign filed – decision to be made 6-9 months after U.S. filing date. The Committee also determines if invention warrants coverage in any countries other than the core countries. The filings will be carefully monitored to make sure patent coverage is sufficient and to eliminate foreign cases where business interest has waned.
It shall be the policy of the company not to infringe any valid patents of any competitor supported by taking the following steps:
Identify key competitors and/or technologies that are critical to the firm’s business interests.
Collect/review all patents that relate to such competitors.
Develop a database for recording basic information concerning identified competitive patents.
Periodically review patent literature for relevant patents and update the database.
Competitor patents will be accessed for impact on business objectives and as a source of competitive intelligence.
When adverse patents are identified, the appropriate independent invalidity/non-infringement opinions will be obtained, licenses sought, or ways to work around the patents developed with the assistance of a knowledgeable patent attorney.
Monitoring of Infringing Products and Enforcement of Company Patents
A review committee for monitoring infringing products and enforcing the company’s patents will allow customer-facing personnel to be educated in identifying competitive products that may infringe the company’s patents. Enforcement of the company’s patents will include licensing and if need be litigation
Licensing of The Company’s Technology
Identify technology/patents that the company’s desires to maintain exclusively – these are not be licensed along with technology/patents that the company is willing to license. A team lead by the business unit’s designate, supported by the Intellectual Property Department and R&D, will determine if licensing is appropriate and the business unit will assign value. The business unit designate, with help for Corporate Law, will negotiate licensing agreements. In general, licensing agreements will consider exclusivity arrangements, geographic and field of use limitations, and royalty rates.
A survey will be conducted no less than annually identifying the inventory of all corporate trademarks for the purpose of identifying the trademarks considered to be most valuable to the company. This inventory will be used to obtain federal registrations for all trademarks (including the corporate logo) deemed to be valuable. The most important trademarks are to be registered in foreign countries where business activity is significant or is expected to be significant for the products covered by such trademarks.
Guidelines regarding the consistent use of trademarks is established and distributed to label makers, advertisers, and any other parties involved with using the trademark. These guidelines will be monitored by the company for compliance with all required laws. The company will also monitor competitor trademark usage for conflicts with any of the company’s trademarks. The Official Gazette of the U.S.P.T.O. will be sued to monitor the firm’s trademarks and used as a basis for filing oppositions in cases of serious conflicts.
All literature published by the company, including advertisements, instruction manuals, packaging labels, and the like will contain the proper copyright notice.
The aforementioned IP protection process describes how patents, trade secrets, know-how, trademarks, and copyrights will be managed. The cornerstone of this framework is patent IP since these are commonly the most extensive forms of protection and require the greatest investment.
This post is taken from a book I’ll be publishing in January targeted at helping startups in dealing with their critical to success IP situations. This book will curate the often confusing literature available on the web through the eyes of a 40-year practitioner.