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Developing an intellectual property (IP) strategy for your business can look daunting, but it doesn't have to be. Use these tips and tricks.

Utah Business

Developing an intellectual property (IP) strategy for your business can look daunting, but it doesn't have to be. Use these tips and tricks.

Core components of an effective intellectual property strategy

Developing an intellectual property (IP) strategy for your business can look daunting—just figuring out where to begin can appear difficult, and taking the first steps may feel like a steep uphill climb. When it comes to developing an IP strategy be assured that even a little bit of forethought directed to the right key areas can pay huge dividends over time. After 19 years of observing a wide variety of small, medium, and global businesses that have created (at times massive!) value in their patents, trademarks, trade secrets, and other forms of IP, I have noted several core practices shared by companies that have figured out how to develop and protect valuable intellectual property—companies that early on incorporated a flexible IP strategy that enabled them to increase the value of their IP both by protecting their own products and steering clear of infringing on the IP of others. 

One of the first core practices I have observed among many of the IP powerhouse companies is that they deliberately invest to establish and incorporate good patterns and habits into a corporate culture that values and respects IP. Lab notebooks are a part of the daily and weekly rhythm and workflow. Invention, confidentiality, IP ownership, and trade secret policies are designed and integrated into employee handbooks and employment agreements, and clearly define expectations from day one when an employee joins the company to avoid potential disputes in the future. Invention disclosures are solicited and incentivized early and often. Publications and public presentations are expected and reviewed well in advance to allow time for IP capture prior to public disclosures. Although some of these proactive measures have a cost, they help companies avoid unexpected liabilities and the much greater costs of lost assets and opportunities. 

Another core practice is that these businesses work to consistently execute on the patterns they have established, while remaining watchful for opportunities to refine strategy, refocus IP investment, and monetize IP assets when possible and appropriate. Invention disclosures and existing patent portfolios are regularly reviewed by a cross-disciplinary team of professionals from different areas of the business who work together to create exclusivity and value aligned with the company’s priorities, core competencies, and markets. This helps a company keep its focus on its core products or markets, while minimizing investment in IP that doesn’t serve corporate needs and business goals. Continuous review of existing patent and trademark families allows assets not seen as strategic to be dropped or monetized to enable the company to keep its focus and direct limited resources to where they will do the most good.

Lastly, companies that have learned to successfully value and respect IP have learned to keep their eyes out for patents and trademark rights held by others. Corporate and product trademarks are screened and filed for protection well before adoption to better ensure their exclusivity when needed. IP counsel is involved and continually updated to ensure alignment between IP efforts and costs and company plans and priorities. IP filings made by competitors are monitored closely to provide insight into competitors’ priorities and direction. Relevant filings are carefully reviewed and, when appropriate, decisive proactive action is taken to limit or block problematic patents. At times, it may be necessary to petition to cancel conflicting non-used registered trademarks to clear the road for your own registrations.   

Practices such as these help businesses ensure that their unique and novel needs, priorities, and cost-drivers, which differ from those of others, are met, all while creating the right conditions for successful creation, harvest, and deployment of valuable intellectual property. 

This publication is designed to provide general information on pertinent legal topics. The statements made are provided for educational purposes only. They do not constitute legal or financial advice nor do they necessarily reflect the views of Holland & Hart LLP or any of its attorneys other than the author(s). This publication is not intended to create an attorney-client relationship between you and Holland & Hart LLP. Substantive changes in the law subsequent to the date of this publication might affect the analysis or commentary. Similarly, the analysis may differ depending on the jurisdiction or circumstances. If you have specific questions as to the application of the law to your activities, you should seek the advice of your legal counsel.

Loren Hulse is an intellectual property partner at Holland and Hart and works with companies locally and around the globe to create IP portfolios aligned with their key needs and corporate priorities.