June 28, 2016

Five IP Lessons for Small to Medium–sized Businesses

By Joseph E. Walsh, Jr., Principal

Intellectual property plays an increasingly significant role in the successful management of American and international businesses alike.  I’ve set out below a few of the most important questions that you as a small to medium-sized business owner or manager should be asking as you map the intellectual property strategy for your company:

    • How do we choose an IP Lawyer?  This is the first and most important question you should be asking yourself.  Consult friends and colleagues.  Often, they will have valuable information about leads or personal experiences with specific IP attorneys.  Find an IP lawyer who thinks like a business person and who is willing to take the time necessary to understand the specific goals of your business.  In my opinion, this is more important than trying to match the technical background of a prospective IP lawyer to the subject matter of your business.
    • What do we protect?  Like most businesses, you no doubt have a limited budget for intellectual property.  The key here is to figure out how and where, e.g., geographically or even at some stage in your manufacturing process your business makes it money.  Draw a schematic or flow-chart if necessary.  Keep in mind that you may need to protect certain intellectual properties and assets for competitive reasons – even though they don’t directly relate to revenue generation or profit.
    • How do we protect our IP?  The obvious possibilities are: 1) patents (design patents to protect unique and purely ornamental features of your products and utility patents to protect the way your new products or technology actually functions or works); 2) trademarks and service marks – if your business uses a logo, slogan or one or more words to identify (and distinguish from your competition) the products or services offered by your company, you may want to consider the relatively inexpensive measure of registering the logo, slogan or word(s) as a trademark; 3) copyrights – you should consider protecting by way of federal copyright registration any of your company’s valuable original works of authorship.  Advertising and promotional materials are good examples of such materials. The advantages of registration are considerable and the cost is minimal; and 4) trade secrets – information that is not public, that gives your business a competitive advantage and which is the subject of efforts by you to maintain its secrecy is possible trade secret information that you may wish to protect.  Often this information can be protected by limiting access to the information and by having solid contracts in place with those who know or have access to the information.  Don’t wait until a key employee leaves you to join a competitor to test how well you’ve protected your company secrets.
    • How can we ensure our IP stays protected?  In short, add IP as a line item to your annual operating budget. If you save over time to replace a leaky roof the expense is more digestible than it is if you are caught off guard suddenly with a large charge to replace the roof.  Given the highly competitive environment in which we now live, and the other factors we discussed above, you should consider formulating a protection strategy and then investing in your company’s intellectual property on a regular basis.
    • How do we keep our IP competitive?  It comes as no surprise that information is now available online about virtually anything you care to investigate.  Pending patent applications can now even be retrieved once the application has been pending at least 18 months in the Patent Office.  If your company competes heavily with a certain group of regular competitors, you may want to consider having your IP lawyer arrange to regularly search for information about the inventive activity of your competitors. Also, he or she can arrange to have the US Patent and Trademark Office send direct reports to you via email concerning developments in your competitors’ pending IP.  The cost of setting up and conducting such ongoing surveillance is relatively low.

Intellectual property matters can often be complex.  At Harness Dickey, we have ample resources to help you and your business traverse the complexities and succeed. Learn as much about the subject as you can and consider contacting us if you have any questions.

This article is excerpted from an earlier article entitled: “There’s No Sex in Patent Law … Or is There?” which appeared in The Ladue News in June, 2004.