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Intellectual Property New Year Goals, Not Resolutions                

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© 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!

© 2006 Gallagher & Dawsey Co., L.P.A. - Cincinnati, Columbus, Dayton, Ohio

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