Welcome to the ‘Intellectual Property Application Series,’ where we delve into the intricacies of intellectual property (IP) strategy. In this article, we’ll explore what an IP strategy entails, the importance of understanding it, and how to seek legal assistance when needed.
An intellectual property strategy is a strategic plan designed to build, protect, and monetize an individual or company’s IP portfolio. Thrive IP, a firm of Intellectual Property Law attorneys, specializes in crafting such strategies and providing other strategic IP services. Our attorneys possess the expertise gained from years of patent drafting and prosecution, trademark prosecution and branding services, high stakes litigation, licensing, due diligence investigations, client counseling, and opinion work, making them uniquely qualified to guide clients in their strategic IP decisions. Within an IP portfolio, one may find patents, trademarks, copyrights, and various legal agreements. These elements together form an IP portfolio. Patents safeguard inventions, trademarks distinguish and identify the source of goods and/or services, and copyrights protect works of authorship. A robust IP strategy is essential for ongoing protection and for making informed decisions on which IP to allocate resources to and how best to protect your IP assets. When developing an IP strategy, it is crucial to address ownership rights. Establishing clear ownership of intellectual property is imperative. This may involve new assignments for patents, trademarks, and copyrights. A thorough review of existing assignments is necessary to ensure they contain appropriate provisions. Any changes in IP ownership should be officially recorded via a formal assignment. IP licenses are also an integral part of an IP strategy. While assignments transfer full ownership, licenses govern the licensed use of a company’s intellectual property. Various types of licenses exist in Intellectual Property Law, including those for patents, trademarks, and copyrights. A review of existing IP licenses is essential to ensure that the agreements include appropriate provisions. Individual License Agreements can differ significantly based on the nature of the agreement and the type of property being protected. However, there is a standard layout and crucial content that an experienced IP attorney can ensure is included in your License Agreement. Components such as the license term, territory, renewal, and other expectations and limitations to the use of the property are standard. It is vital to pay attention to the specific provisions and expectations set out in each type of agreement. For instance, in a trademark lease, it is crucial to explicitly state liability obligations and establish the responsibility of leasing the trademark.Trademark owners are responsible for maintaining the quality of goods/services and the appearance of their licensed trademarks. Licensors have the right to monitor the licensee’s use of the mark to ensure compliance with these provisions. These proactive measures are crucial for protecting the mark and the associated goodwill, preventing the loss of rights provided by registration.
Establishing a clear and detailed Intellectual Property (IP) policy is essential to maintain legal protections. This may include Non-Disclosure Agreements and other protective measures to safeguard the IP portfolio. Company policy documents, such as a trademark style manual, dictate how a company expects its mark to be used, presented, or not used. Misuse of a trademark can lead to the loss of trademark rights.
A professional IP strategy should outline clear goals, specifying the type of IP protection needed, market feasibility, and a timeline for execution. The first step is to determine the type of IP protection required, which can include patents (design and utility), trademarks (word and design), and copyrights. Market feasibility is crucial for capitalizing on investments in new IP ventures. Establishing timelines is also important to avoid missing intellectual property deadlines, which could result in the loss of rights to the property.
Feasibility of IP searches is an integral part of the IP strategy process. A formal search and opinion can help avoid infringing on another’s patent, trademark, or copyright and determine if proceeding is advisable. A patentability search, or novelty search, aims to determine if an idea can be patented based on its novelty. For trademarks, a clearance search of currently used marks is performed. While an individual inventor can attempt a search, a patent attorney, patent agent, or an IP search specialist would conduct a formal search. A quality search requires significant experience and familiarity with the field’s intricacies.
A solid IP strategy can lead to a valuable IP portfolio, which can be monetized effectively.
Intellectual property (IP) is a crucial asset for any business, accounting for up to 85% of an established company’s value and even 100% for startups. Protecting your company’s intellectual property is not just a legal obligation but an investment in your company’s future success. Failure to do so can lead to copyist competitors or costly infringement litigation.
An effectively managed intellectual property portfolio can increase market share, provide greater monetization opportunities, and safeguard the valuable assets your company relies on. At Thrive IP, we offer a comprehensive range of intellectual property legal services, including patents, trademarks, copyrights, trade secret protection, licensing, and freedom-to-operate guidance. We assist clients across the nation and around the world in navigating U.S. intellectual property law. Our services include client counseling, freedom-to-operate searches and analysis, intellectual property prosecution, and litigation in state and federal courts, as well as before administrative bodies such as PTAB, TTAB, and ICANN for domain name dispute resolution. Our technical expertise and legal services span a wide range of industries, including big data, biotech, chemical, e-commerce, electrical, electro-mechanical, medical device, materials science, mechanical, optics, and software arts. Our firm is dedicated to providing exceptional service that builds prosperous relationships. We are committed to helping our clients succeed and thrive. Don’t leave the protection of your intellectual property to chance. An experienced legal team is ready to assist you. We have patent attorneys located in Charleston, SC; Greenville, SC; Knoxville, TN; Alexandria, VA; and Smithfield, VA. If you are interested in our intellectual property services or have questions, please do not hesitate to contact us.
