| |
|
|
| |
|
|
| |
© 2004, Gallagher & Dawsey Co., LPA
January 2004
'Tis the season of New Year resolutions. As we all know, New Year
resolutions are rarely successfully carried out past March or April.
Therefore, successful companies have New Year goals, not resolutions.
Such goals are infinitely more likely to be successfully implemented
if they are written down in a specific quantifiable fashion.
If you have specific quantifiable goals directed toward intellectual
property (IP) then congratulations, you are in the minority. Working
with our clients we have identified 9 New Year goals relating to
intellectual property that each and every company should consider,
regardless of size or industry.
1. Determine How Much Time and Money You Spend on Managing Your
Intangible Assets Versus How Much Time and Money You Spend Managing
Your Tangible Assets
In the past twenty years there has been a dramatic shift in the
percentage of a corporation's assets that are tangible, such as
buildings, equipment, etc., and the percentage of assets that are
intangible, like intellectual property. In fact many leading
authorities report a complete reversal from approximately 75% of a
corporation's assets being tangible assets in the late 1970's to
approximately 75% of a corporation's assets being intangible assets in
the early 2000's. Yet somehow most corporations rationalize having an
entire staff to manage the tangible assets and not a single person
dedicated to managing the intangible assets.
Dinosaurs still remain and we call them Resisters. The Resister will
provide reason after reason as to why intellectual property is not
created or used at their company, and reiterate that they have been
successful for decades without a care in the world about intellectual
property. The fortunate Resister will see the light upon becoming
educated on intellectual property topics, or have someone show them
the light. The unfortunate Resister will become extinct.
2. Budget for Intellectual Property Protection for Each and Every
Project / Product Introduction
Companies that have created successful intellectual property programs
recognize that intellectual property protection should have a separate
budget with the costs uniformly distributed across the company. Yes,
setting aside a predetermined percentage of a project's budget for
intellectual property protection will be met with resistance but it is
essential to establishing a culture where everyone recognizes and
values creating, protecting, and exploiting intellectual property. For
example, a company may establish that a certain percentage of the
budget for new product development is set aside for intellectual
property protection, including patent, trademark, and copyright
protection. After all, why spend money developing a new product that
is not protectable and therefore can be copied by competitors, or
worse yet, infringes someone else's intellectual property?
3. Know What Intellectual Property You Possess & Make Sure All
Employees Know What Intellectual Property You Possess
Frequently companies do not have an updated master list of all of
their intellectual property. Additionally, it is not uncommon to have
different divisions in the same company researching technologies that
unbeknownst to them have already been invented and protected in
another division. It is essential that key employees are brought up to
date on all intellectual property owned by the company and that they
are periodically updated as to new developments. Maintaining a portion
of the company's intranet dedicated to listing the company's
intellectual property, as well as intellectual property in
development, can prove to be invaluable. After all, a company's
employees should always keep a keen eye on their industry, looking for
products and processes that potentially infringe their intellectual
property. Completion of a thorough intellectual property audit should
be considered as essential and as much standard practice as year end
accounting or inventory.
4. Establish What You Are Going to do With Each Piece of Intellectual
Property
All too often significant sums of money are spent protecting a hot
project's intellectual property only to have it gather dust on a shelf
when a newer, hotter project comes along. Establishing a specific
person, or group of people, responsible for capitalizing on each
intellectual property asset goes a long way to minimizing money wasted
on pet projects and maximizing returns on intellectual property
assets.
5. Don't Wait to Market
Marketing plans need to begin well before a patent application is even
filed, with the identification of markets, and better yet,
identification of specific customers who are likely to need the
invention. Once a patent application is filed and foreign protection
has been considered, full-blown public marketing should begin
immediately. The reasons in favor are almost too numerous to list:
early sales can not only finance the costs of pursuing the patent
protection, they can point to refinements that can lead to new
intellectual property; getting to market will help to determine
important issues in continuation and foreign filings; and an early
market position can create a dominant position even before a patent
actually issues. Waiting to market until a patent issues is generally
a poor business decision.
6. Look for Interrelations between Patent, Trademark, and Copyright
An effective intellectual property strategy links the three major
branches of intellectual property protection. Ideally, a patented
invention is supported by a clever and highly differentiating
trademark, and then is further backed up by copyright protection on
important sales and support materials. Trademarks can be particularly
useful in effectively extending the life of patents, for many
inventions that have passed out of patent protection are still
advantaged by their well-known trademark names. A caveat for trademark
in 2004: The Trademark Office has made trademark filing simple but not
easy. With the point and click menu of electronic filing on the United
States Patent & Trademark Office (USPTO) website, it's easy to
complete an application in only a few minutes. However, the rules for
trademarks remain exacting, and we are seeing a definite upswing in
the number of persons who file their own applications but make
mistakes that have important consequences. As with almost everything
at the USPTO, the applicant bears the risk of compliance.
7. Educate Your Employees on Critical Intellectual Mistakes to Avoid
Employee mistakes concerning intellectual property undoubtedly cost
companies billions of dollars annually. Few inventors realize that
publishing information about their invention and offering to sell the
invention can spell death for intellectual property protection in the
United States and abroad. Educating employees on simple intellectual
property principles will provide a great return on investment.
8. Only Enter into Contracts that Clearly Define Intellectual Property
Ownership, Rights, & Obligations
This goal dovetails with the previous goal of educating your employees
on intellectual property mistakes to avoid. Everyone must realize that
virtually every contract, whether it is for providing services or
purchasing new machinery, will contain provisions directed toward
intellectual property. Further, as it true with all contracts, the
boilerplate clauses will always favor the party that prepared the
contract, often to the extreme detriment of the other party. It is not
uncommon to see boilerplate purchase contracts that place all
liability for intellectual property infringement on the purchaser!
9. Carefully Consider the Use and Implementation of Non-Disclosure
Agreements
Recently, a dangerous trend of employees carelessly signing
non-disclosure agreements has emerged. Companies should make is clear
that only a select group of employees may sign such agreements, and
only after the agreement has been thoroughly reviewed. Many
potentially damaging clauses relatively unrelated to the disclosure of
confidential information have recently found their way into
non-disclosure agreements. Additionally, employees working on projects
subject to such agreements must fully understand who the parties are
that are authorized to disclose and receive confidential information,
and the extent to which confidential information may transmitted
orally and if it must then be followed up in writing. Such subtle
provisions in non-disclosure agreements can have disastrous
consequences if overlooked.
Implementation of these 9 intellectual property goals will help you
effectively build and manage an intellectual property portfolio. Of
course, most of these have been directed towards business entities,
although the advice to begin marketing quickly is equally applicable
to all. Because marketing is difficult for many persons, the small
inventors seem to have a particularly hard time in moving promptly
with their inventions. In almost every case, you are the best
salesperson for your invention, at least in the early stages. Also,
the advice above regarding linking patent, trademark, and copyright
can result in a very effective strategy for small inventors, as
trademark and copyright can effectively enhance protection for
relatively low cost. For individuals; be particularly careful of
non-disclosure agreements offered by large companies, since they
sometimes cover a lot more than confidentiality and sometimes grant
away some important inventor rights to those companies. Also,
individuals need to be particularly careful to keep good records and
to be aware of the one year filing deadline after an invention is
publicly disclosed or sold. Individuals also have to remember to
budget for those costs of prosecution and issuance that will occur
long after the applications are filed.
IP protection is too important in the modern world to make it a hit or
miss proposition. Make 2004 the year that a real intellectual property
strategy pays off for you and your company! |
|
|
printer
friendly version