Developing an IP Strategy by Stephanie Morrow

Developing an IP Strategy

Protecting your invention, logo or creative work with a patent, trademark or copyright is important. But equally important is creating an IP strategy.

by Stephanie Morrow
updated November 19, 2020 · 5 min read

Obtaining intellectual property (IP) protection is important for anyone wanting to maintain rights to their inventions, designs, or creative work.

Many business owners, inventors, and creators know protecting their creative work under intellectual property law is important. Still, they often don't realize a sound IP strategy is a crucial first step.

What Does Intellectual Property Law Protect?

Intellectual property law allows owners, inventors, and creators of intellectual property to protect themselves from unauthorized use of their property. The primary forms of intellectual property are patents (utility and design), trademarks, and copyrights.

Patents protect an inventor's creation, while trademark protection safeguards distinctive words, names, symbols, sounds, and colors used to distinguish one business's products and services from another.

Property that qualifies for copyright protection includes literary works such as books and computer programs; dramatic works and the accompanying words; pictorial, graphics, photographs and sculptural works; motion pictures and audiovisual works; and sound recordings and musical works, including music from plays and dramatic readings, and recordings on tapes, cassettes and CDs. 

Steps to Develop Your Company's IP Strategy

Inventing a product or service is an important first step for any company, but obtaining intellectual property protection is a process that needs planning. With a well-developed IP strategy, you can protect your or your company's inventions and creative work, keeping tabs on how to allocate resources, and when to explore new research and development opportunities. Here are five steps that can help you develop your own IP strategy:

1. Let your Company's Size Guide You

First, your company's size and structure should guide your IP strategy. If you have a small company with only a few employees working on an invention, for example, you might not need a formal IP strategy.

But larger companies, on the other hand, would be wise to develop a detailed IP strategy. One of the most important areas to clarify are ownership rights and publication policies. The strategy should take into account previous agreements between the company and employees (or contractors).

Larger companies may want to outline the roles and responsibilities of managers and employees in managing and disseminating the company policy regarding intellectual property used to ensure everyone follows the proper procedures to maintain the company's intellectual property rights. 

2. Establish Guidelines for Creating Intellectual Property

There are many questions you'll need to answer as you develop your IP strategy. The first is to differentiate exactly how your intellectual property will be created. You should list each person involved in creating the work and outline exactly what type of intellectual property protection you seek.

As you determine what type of intellectual property protection to seek, you'll want to conduct a comprehensive search of existing work to ensure you don't infringe on someone else's trademark, invention, or copyrighted material.

Fortunately, it's fairly easy to search for trademarks, patents, and copyrights online. Still, there are many sources you will need to consult, so having professional help to search might be a better option for you.

You don't want to develop products that are not protectable or plan to market a product that the creator isn't free to develop. Your IP strategy should consider whether or not the company can afford this preliminary intellectual property search.

You should also hold regular meetings to devise a plan of attack for creating your intellectual property.

You'll want to address the timeline for the entire process. Certain forms of research will have a longer development time than others.

It would help if you considered this when creating your budget. If a product development takes too long to be market-ready, you might miss important intellectual property filing deadlines, which could further compound costs.

3. Analyze Your Competitive Advantage and Barriers to Entry

One of the first questions you should answer before you invest in creating any kind of intellectual property is whether or not you can reap the rewards of your work in the marketplace.

Would your invention, brand, or creative work give you a competitive advantage in the marketplace? You'll need to do your research to see what's out there and evaluate if you could capitalize on your work.

The market climate for your product or service will dictate how and if you develop intellectual property and which kinds of intellectual property to develop. Some questions to ask yourself include: 

  • What's the value of the product or service you want to protect? 
  • In the current market, would you be able to make a good return on your investment?   
  • What is the competitive market?
  • How do competitors market their product or service? 
  • Are there complimentary industries in the market you might be able to tap into? 

Answering each of these questions will help alleviate any freedom to operate issues that may arise between you and your competitors. You can gain a competitive edge by understanding and overcoming any barriers to entry, which include the following:

  • Are there key personnel who might impede the process? 
  • Is the product or service designed for a niche market?
  • Will the product or service require regulatory approval?
  • Are there any competitors who offer a product that's similar to yours, or are you the first to offer this type of product?

4. Analyze Third-party Interactions

Problems and misunderstandings that may arise from third-party relationships are one of the surest ways intellectual property can be lost.

Any third parties who could potentially be involved in any portion of the development of the product or service being protected should be considered in developing your IP strategy.

Third parties can include employees, suppliers, partners, contractors, and even customers. Your IP strategy should dictate any employee contracts, supplier and contractor agreements, confidentiality agreements, and licensing options.   

5. Audit Your Intellectual Property

Conducting an audit of your existing intellectual property materials should be a part of your IP strategy development. Be sure to include utility patents, trademarks, copyrights, and design patents and the ownership and historical relationships related to these properties.

The scope of protection of the intellectual property should also be included in the intellectual property audit to determine whether there may be gaps in protection or risks in the development and intellectual property protection process. Finally, a formal exit strategy should be determined if problems arise at any stage of the development process.    

In Summary

Companies of all sizes should focus time and energy on having a strong understanding of the intellectual property process, which can help you save time and money when developing a product or service and obtaining intellectual property protection.

By determining your goals and evaluating your IP strategy for future success, you will better understand the environment your company is entering. A company can spend a lot of time developing a product or service.

An equal amount of time should be spent developing your IP strategy to ensure the maximum return on your intellectual property investment.

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Stephanie Morrow

About the Author

Stephanie Morrow

Stephanie Morrow has been a contributor to LegalZoom since 2005 and has written about nearly all aspects of law, from ta… Read more