What They Need to Know about Intellectual Property

Every successful business starts with a business plan.  Some plans are written down, details are carefully thought out, and decisions are deliberated at length.  Other plans are more fluid and may exist only in the mind of the business owner.  No matter what form your business plan takes, an important component of a complete business plan includes an intellectual property portfolio management strategy.

In an ideal world in which every company has unlimited resources at its disposal to protect its intellectual property, planning to protect intellectual property would be easy.  Every bit of intellectual property that a company owns could be protected to the maximum extent possible.  But in practice, because all companies have finite resources, developing an intellectual property portfolio management strategy becomes a four-step process.

1) Ask: What Do We Have?

The first step in putting together a strategy for managing a company’s intellectual property involves identifying all intellectual property owned by the company.  Intellectual property includes patents, trademarks, copyrights, and trade secrets.  Each of these kinds of intellectual property should by inventoried by the company separately.  In most instances, a company will know whether it holds a patent directed to any product because it will have been issued by the U.S. Patent and Trademark Office.

However, unlike a patent, a trademark or copyright may exist even if a company has taken no special steps to register the intellectual property.  If a company has been using a name (including the company name itself) or logo to identify its goods or services to its customers, the company likely has acquired trademark rights to the name or logo.  Similarly if the company has created a fixed artistic expression, it likely owns a copyright in that expression whether or not the copyright has been registered.  Finally, under Florida law, a company may own a trade secret if it has some information that is treated as a secret and derives value from the fact that it is not commonly known or ascertainable to others who could make use of that information.

2) Ask: What Should We Acquire?

After identifying intellectual property already in its possession, a company must determine if there is any additional intellectual property it may want to acquire.  In doing so, the company should look to its own operations and determine if it possesses an invention that should be the subject of a patent application.  The company should also determine if it would like to create trademark rights to a new mark or create new art that could be copyrighted.  The company should also look outside of itself and determine if there are any patents, trademarks, copyrights, or trade secrets that are owned by others that could add value to the company if purchased.

3) Ask: What Should We Protect?

Once its current and prospective intellectual property is identified, the company must determine what information is most valuable to the company.  If a company is widely identifiable by its trademark and would suffer significant financial losses if it could no longer use its trademark to identify its goods or services, it is probably very beneficial to take proactive steps to protect this trademark.  On the other hand, if a company derives value from being the sole supplier of a unique item, protecting its exclusive rights to supply that item may be the foundation of its intellectual property strategy.

4) Ask: What Is Our Strategy?

Only after the relative values of all of a company’s intellectual property have been determined can a strategy for protecting it be completed.  At this point, the company’s resources can be allocated to protecting different portions of its intellectual property inventory in ways that best serve the company as a whole.  The company may decide whether a patent application should be filed to protect an invention or if it is better served by protecting the invention as a trade secret.  The relative merits of registering a trademark on the federal registry, state registry or maintaining mere common law rights to the mark can be discussed.  The decisions made in this final step of creating an intellectual property portfolio management strategy lay the foundation for the business to grow its intellectual property assets for years to come.

Kelly Swartz
Kelly G. Swartz is a patent attorney and the founder of Ingenuity Law located in Melbourne, Florida. Her law practice is limited to matters involving intellectual property and related business law. She can be reached at (321) 216-3949 or Kelly@IngenuityLaw.com .