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January 19, 2022 |
Taking Stock of Your IP Portfolio
It’s essential for businesses to take a portfolio view of their intellectual property (IP) assets.
The portfolio of all your developing, pending, and existing IP is like a farm with different crops, equipment, workers, and livestock. Together they all form a mini-ecosystem.
Just as a farmer needs to consider and prepare for the weather of today and the changes in the crop market next year, you can benefit from developing a similar holistic view of your IP portfolio across different challenges and time periods.
Here are 5 things to consider when taking stock of your IP portfolio:
1. Expand Your Plan
What else can you file to put others on notice that you’ve protected your entire perimeter?
You should plan for not just one type of IP asset, but rather a suite of assets around a core product or tech that gives you the desired coverage.
Think beyond a single word mark for the name of your product, such as filing the logo design and domain name variations. Or get copyright registration on any graphic design or photographs of your product.
2. Understand Ownership
A patent application on a key piece of your tech is great, but are you sure you own or control the rights to any source code written by the independent developer you hired?
It is critical that you understand who owns what in order to avoid complications down the line.
3. Be Distinctive
Do you have a specific customer list that you can protect as a trade secret?
Do you need an opinion letter (these aren’t used so much since the Seagate decision[1], but there are ways to accomplish the same thing more cheaply) or a legal review to draw a brighter line between your IP and IP held by another company?
Once you find other patents and IP out there bumping up against yours, you must take action to de-risk your exposure to the competition’s IP. Perhaps you can develop one set of prior art for an Inter Partes Review (IPR), get estoppel, then develop a second set of prior art for litigation that the party admits to in the IPR. It is in the combinations that you and your attorney can form a great strategy.
4. Envision the Future
What does your future roadmap look like and what other initiatives does your company plan to undertake in the near to mid-term?
Does thinking about your products and ideas give you an understanding of the kinds of IP likely to support your plans? If so, you can take steps to pre-protect some of it immediately, or you can be ready to act when a breakthrough comes.
5. Consider the New Risks
Usually, for any risk where there is a legal answer, such as a likelihood of infringement either for or against the company, you can have high level analysis completed ahead of time so that you can spot those risks more quickly.
Do those same initiatives you foresee create new risks for the business?
For instance, if your company’s newest app will be collecting user data in a unique way, how will that be impacted by existing or proposed privacy laws?
Will changes to your privacy policy be sufficient to protect you from a consumer lawsuit or regulatory scrutiny?
Your IP should be put to use to reduce those risks.
Pro Tip
Document how all these pieces work together in your IP portfolio.
Be sure to capture not just what you are going to do and why, but also why you don’t think a particular course makes sense—this can be helpful later to explain your thinking.
This list may look a little scary and fraught with risk. The truth is that it can be, and there are many other questions and risks beyond these as you get into details. This is why many businesses stop and try to avoid dealing with these questions.
But ask yourself this: is refusing to face the questions and ignoring the risk really your best strategic approach?
The risk will be there regardless. However, your company’s ability to deal with the risk in a non-disruptive and cost-effective way will directly correlate to the extent that you work on these questions at an early stage of development.
In my experience, advanced preparation goes a long way in the world of IP risk management. The highest compliment we lawyers can get from a businessperson is: “I don’t worry because I know that you do.”
If and when a risk you planned for occurs - even if it isn’t exactly as you expected, you’ll know that you’re as ready as you could reasonably be.
There’s a lot of confidence that comes from being in that place and mindset, which often leads to a successful outcome. Your strategy to get to that win is sitting there in front of you right now, and has been all along, ready to be shaped for the moment.
Citation
1. In re Seagate Technology, LLC, Misc. Dkt. No. 830 (Fed. Cir. Aug. 20, 2007), Slip. Op. at 18-19.
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