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In today’s world, intellectual property is often considered a lofty expenditure in an annual budget, one perhaps beyond the reach of a budding enterprise. This seeming lack of resources, coupled with a frequent lack of awareness of what an IP strategy actually should be, can lead to enterprises opting to keep innovations as simply “trade secrets” rather than incur the costs of IP protection. This strategy, of course, includes the very real risk of accidental (or intentional) disclosure, effectively letting assets sift through a business’s hands.
Inarguably, a full-fledged IP strategy requires a significant and thought-through plan, as well as a suitable investment, but companies simply cannot afford to lose valuable IP by opting not to protect it. Top management needs to be reminded of that, and embrace ways in which they can optimize the costs of protecting these assets.
Before we discuss ways to optimize those costs, it should be noted that governments globally offer significant incentives to companies (especially small and mid-size) looking to protect IP rights domestically and/or globally. Accordingly, it is a wise choice to explore all incentives and subsidies related to IP filing and protection offered by the government in your country, as this can significantly lower the budget needed for its creation and preservation.
Related: A Basic Guide to Intellectual Property for Every Entrepreneur
1. Choose IP-creation opportunities wisely
Many inventions that seem like good ones to protect may not actually be patentable or commercially viable. Accordingly, creating a workflow to evaluate and identify those needing patent protection is critical. This should include checking patentability through a global “prior-art” search, as well as a commercial review of the invention to judge its business potential. This will help avoid needless application preparation costs for non-patentable or commercially unviable inventions, as well as help inventors improve their invention based on identified prior arts. The results of this patentability and business review will also assist in drafting the most optimal applications to provide required coverage, and potentially save costs of violation prosecution as well. Further, based on business review of the application, it will be easier to select the right geographies to file applications, saving the cost of investing in unnecessary jurisdictions.
2. Understand “state of the art”
Conducting a thorough state-of-the-art search in patent and scientific literature (defined by legaladvantage.net as a “…comprehensive search that summarizes the existing prior art and illustrates the current state of affairs in a particular field of technology or sub-technology.”) helps enterprises form optimized and robust R&D strategies. Awareness of patent landscapes help management (including R&D professionals) assess the latest expanse of innovations in their working area. This not only prevents companies from reinventing the wheel, but also gives options for optimizing IP and R&D spends, and may help R&D identify existing solutions to problems they are working on — ones that may eventually be cheaper to implement. Such solutions may be free to use if there are no active patents protecting, or they may need a license from patent owner (which could still be cheaper than creating a new solution). Patent landscapes also help align R&D activity — put focus in the right direction, leading to the creation of more patentable and commercially viable inventions.
Related: How to Search for Existing Patents
3. Partnering
This is an important strategy in optimizing IP expenditures and generating income from existing IP. Partnering works especially well for markets where your own reach is limited but where your invention could be commercially viable — and is even more applicable for countries with developed IP systems, as business opportunities there could be significant, but costs of patenting high. In such a scenario, it may be a good idea to identify a local partner who is willing to practice your invention in their country. You can, accordingly, grant a geography-specific license to this partner. This is a win-win, as you can negotiate for the partner to share/pay for IP expenses in their jurisdictions, while the partner gets exclusive access to practice invention at an economical price.
4. Regular IP-portfolio health checkup
As soon as you have obtained even one IP right, it becomes important to regularly review key aspects of it. The first is checking if it is being mis-used/infringed by any competitors. There are many ways to keep a check on possible misuse, such as regular trademark, patent citations, and competitor products monitoring. If you find someone misusing the IP, depending on your strategy, you may either ask them to stop, or for them to pay a licensing fee.
The second step in regular checkup is to see if your IP can find use in any new application area other than your core business (for example, a virtual reality invention developed for gaming can often find use in medical and other fields). If you discover such a situation, it may help you find licensees in those area to generate additional revenue.
The last item in the checkup portfolio is identifying if the IP is still valuable to the company and/or market in general. If it’s still pertinent in the market but not to your business, consider selling to anyone who might find it useful. If the IP has become obsolete, it may be a wise decision to stop paying any maintenance fee (this could be of particularly significant value to companies holding multiple rights in multiple countries).
Related: Top 5 Intellectual-Property Challenges Businesses Face
This article is from Entrepreneur.com
