Intellectual Property & Technology

A New Year’s Resolution — Time to Shape Up Your Assets

Another year has passed. Ah, a clean slate ... what to do, what to do? Shape up, slim down, exercise. This year will be different. You’re making a resolution for the new year. You’ve decided it’s time to get off your good intentions and shape up your IP assets.

Your intellectual property (IP) assets—patents, copyrights, trademarks, and trade secrets—are the essence of your business. They embody what your company stands for. It’s your logo, the literature and articles you’ve written, the inventions you’ve created, or the software your company has developed. It’s you, plain and simple. And you’ve got the paperwork to back it up.

Okay, you have the IP, so what now? Sitting on your IP assets can be compared to admiring your recently purchased piece of gym equipment everyone boasts is the easiest and least painless way to get in shape. You’ve made the investment, but letting the gear sit idle won’t do you any good. Face it—in order to whip anything into top shape requires motivation. Sure, it will require patience, persistence, and diligence, but it isn’t that hard to do. So, where do you start?

Here’s a simple plan

1. Start with a general inventory of your intellectual property assets.

Which are the most important to your core business? Which are tangential? Which do you currently utilize? Which will be utilized in the future? Which have outlived their usefulness? Which are currently protected? Which are not and need to be? Actually, asking these questions is a good thing to do at least yearly. IP has a lifetime and needs regular maintenance along the way (fees, renewals, additions to, subtractions from). Like exercise, the more often you do it, the easier it becomes and the better off you will be.

2. Make an effort to talk about your IP at company meetings.

Reward new thoughts and innovations. Perhaps a great idea is already sitting in your file drawer or on the drawing board. By adding visibility internally, companies allow themselves the opportunity to explore options which previously may have been overlooked. Perhaps you could patent the new product or process or license/co-brand an item with your logo.

3. Strategize and identify IP opportunities.

Must you file for protection of the IP? Or should you treat the IP as a trade secret? If you don’t want to file for protection on the IP, how do you prevent your competition from doing it? Treating information as a trade secret (like Coca-Cola’s secret formula), using defensive publishing (disabling another’s ability to patent something), or employing other strategies can keep you ahead of the competition.

4. Recognize the non-flyers.

Don’t look to patent, copyright, or trademark everything. Some things just aren’t worth the expense. Securing your intellectual property assets can be accomplished through various other ways, such as utilizing employment, non-disclosure/confidentiality, or non-compete agreements. Determine which assets can be exploited to generate the greatest possible value for your business and go after those.

5. Consider alternative ways to derive value.

Consider alternative ways to derive value from IP assets which are tangential to your core business or from ones that have outlived their usefulness. Licensing unutilized or underutilized assets can be an effective way to add revenue to your bottom line. For example, you may have great research and development capabilities but lack the capacity to manufacture the product, or you may have developed the best software program but need adequate sales and distribution capabilities. Partnering with the right resources can turn untapped and previously unidentified possibilities into realities. The “can’t do it” excuse has been eliminated and new opportunities await you. Licensing and joint ventures are only a few of the many ways to benefit from your investment.

6. Engage the help of a professional.

Think of your IP attorneys as the doctor ordering you to work out for your own health, as the trainer who will set up a program for you to follow, and as a workout buddy who will be right alongside you working out. They are the experts, able to guide you in the right direction—maybe even identify potential opportunities with a fresh set of eyes. Partner with them and include them early and often in the business process. You will reap the rewards of their know-how.

In the end, just doing something is better than doing nothing. Even doing one small part of any of these steps will put you in a better position today compared to yesterday. Sure, it’s possible you may find you’re not in as good of shape as you thought—but isn’t it better to find that out early on and have time to do something about it?

This is a resolution you want to keep. Patience, persistence, and diligence—three small words that have the potential to whip your IP assets into shape. And who knows, once you get into the routine, it may even be fun!

Thomas E. Popek concentrates his practice in counseling clients on protecting their intellectual property interests in patents, copyrights, and trademarks. He has extensive experience in electrical, software, and communication systems engineering.