Patents - protect products and processes, in particular in terms of their structure, content and function:
Trademarks - protect business logos and brands
Designs - protect product shape and appearance
SPCs - that prolong patent terms for certain products
Data protection - protection against third parties use of a company's data for approval of generic medicines
Domain names - protection by the registration of internet domains
Copyright or copyright - protect texts, imagery and music, and also software
The philosopher Clausewitz defined strategy as the overall plan for an entire war, whereas tactics represented the detailed plan for the individual battles. These definitions can also be applied to a corporate structure. An IP strategy should support a company's overall business plan, secure earnings by targeted protection of commercially relevant markets while preventing being excluded from interesting or emerging markets due to others' patents. The IP strategy determines individual phases, whereas the more detailed tactics is decided at the entrance to the individual phases. We can assist you in preparing an IP strategy, which support your business - contact your advisor.
What is the IP strategy of your business?
All companies with IP rights, be it patents, trademarks, designs or trade secrets, have an IP strategy - and it is normally somewhere between the two extremes: an ad hoc "strategy" of pure tactics with no overall strategy and a grand comprehensive IP vision.
An "ad hoc approach" implies that decisions on the protection of inventions and trademarks are not taken until an invention has been made or a product is on the market. The blocking effect of third parties’ patents is not considered until a lawsuit is imminent. Although an “ad hoc” strategy may be operative in the short term, it often leads to a wildly growing portfolio of rights with no common perspective and with a use of resources that could be better spent elsewhere.
In addition, the IP strategy list and rank the temporal aspects of each element of the strategy, which ensures that they are in alignment with the business plan.
There are many elements that need to be addressed in an IP strategy in order to ensure its alignment with the business plan and the company's development. Our patent attorneys can assist in the development of an IP strategy. We help identifying all the questions that your IP strategy should be able to answer. Relevant questions are • Should I build the market myself or partner up with someone else? • Should I use external consultants? • Do I plan an exit of the company? • Are further investments required? • Which products shall be marketed, and on which markets and when? • How aggressive or defensive should my strategy be?
IP strategy should have at least address the following issues:
Protection of your own inventions and products
Many innovations and improvements arise in developing companies and far from all inventions to be patent protected. The IP strategy should address when IP protection is "nice-to-have" and when it is "need-to-have". The IP strategy should specify which technological or business areas are so important for the company that multiple layers of protection for a product are desirable. In smaller businesses, the distance from the invention to a decision maker is relatively short. However, larger organizations should establish a procedure to ensure that inventions made in different parts of the company are identified and reported to those who must decide whether to pursue any form of IP protection. At the same time, the IP Strategy should incorporate a procedure for publishing inventions, for example as scientific articles or presentation at fairs, in order to avoid that your own publications destroys the possibility of patenting.
Some innovations and improvements can advantageously remain the company's secret and secrecy should therefore be an element of the IP strategy. It is important that the IP strategy also includes a procedure for keeping secrets as trade secrets.
There are approximately 200 countries in the world, where it is possible to protect IP rights. A company can quickly get ruined trying to protect their inventions worldwide. An IP strategy, therefore, should define the major relevant markets and also comprise a plan for selection of countries in general, for example in the form of a prioritized list of countries, where protection is desired, perhaps distinguishing between important inventions and minor inventions.
How frustrating would it be to have found a brilliant trademark or brand name and printed 60,000 product sheets, only to discover that the trademark cannot be used in several countries because others have already registered a similar trademark? A good trademark strategy includes an early assessment of third parties trademarks and ensures the filing of your own trademark applications before introducing new products to the market.
Portfolio management- patent term extension
An IP strategy should be re-evaluated regularly. In particular, the IP strategy should be continuously aligned with the business plan and updated upon changes in the business plan. Existing rights that had great importance previously may have lost importance, for example due to changes in market expectations. Such IP rights should be eradicated or minimized geographically, thereby ensuring that the available budget is being used for the most commercially relevant rights. In addition, the IP Strategy should manage the timing of filing new patent applications, so that the patent term of 20 years in the best possible way match the life cycle of the products on the market. In this context, it is also relevant to consider the possibilities for patent term extension that exists for pharmaceuticals and plant protection, the so-called supplementary protection certificates (SPCer).
Third parties rights - dominating patent rights
The classical IP conflict is an infringement action. Have you ensured before launching a new product, that there is legal access to the market; do you have freedom-to-operate? If not, other companies may be able to exclude you from the market by a temporary injunction using their dominating rights within days after your product has been launched. If such a situation arises, you can expect serious, expensive and lengthy legal issues to deal with.
A useful IP strategy includes awareness of third parties patent rights. It is important to regularly investigate the existence of potentially dominating rights, in order to avoid blocking patents by entering license agreements, seeking to invalidate or limit the dominating patents or by designing around their scope by changing the composition of your products.
External partners and contracts
Inventors are legally obliged assign the right to inventions made as employees to the company. However, this does not necessarily apply to consultants and PhD students, even if they are remunerated by a company. An IP strategy should define the terms of any contractual obligations of external partners to assign patent rights to the company. Such agreements should be settled already when a new collaboration commences, in order to avoid that some or all of the rights to important inventions made in collaboration with an external partner could end up being owned by the external partner rather than the company itself.
Patent rights are not always fully utilized by the patentee. Therefore, any opportunities for additional revenue by offering licenses to some or all of such patent rights to other companies, is a valuable component of an IP strategy.
Your IP rights are important assets, which should be actively used. Patent rights can, inter alia, be used in marketing and all relevant employees should have adequate knowledge of the companies IP assets. An IP strategy should also define to which degree your products should be marked with relevant patent numbers, which may serve to additionally brand your products as innovative creations, while at the same time informing any competitors that the product is protected by patent or trademark rights. Importantly, your IP strategy should specify procedures for labeling so that they comply with the legislation that applies to your market.
In summary, the IP strategy should be tailored to your specific business and must be aligned with and support your business plan. It is therefore a good idea to ask your patent attorney whether all aspects of relevance to your company have been addressed by your present IP strategy.