Intellectual property (IP) is a critical asset class of any business. An IP strategy is a coordinated plan that accounts for patents, trademarks, copyrights, and trade secrets, in view of your commercial plans. An IP audit is an objective assessment of how the IP strategy and its implementation aligns with the commercial strategy of the business.
The commercial strategy should inform the IP strategy and fit coherently with it. At a basic level, the IP strategy should account for the technological innovations your business is generating, but an IP strategy should go farther than that: IP strategy should account for forms of IP and articulate how each asset protects the competitive advantages of a business. Each IP asset should be leveraged to maximize the legal protections associated with it. In general, patents protect new and non-obvious inventions in the form of articles, compositions, processes, and machines. Essentially, patents protect inventions that are often technical in nature, e.g., implant designs, diagnostic tools, instruments and medical procedures. Trade secrets include business information that this a) valuable, b) not publicly known, and c) subject to reasonable protections on its secrecy. Copyright law protects expressions fixed in a tangible medium, such as artwork, website content, literature, and some components of software. Finally, trademark law affords protection for a word or logo that identifies the source of particular goods or services (i.e., your brand). Active steps are required to perfect, protect and maintain all these forms of IP.
A tailored, active approach to IP strategy development can help protect a company’s top and bottom lines and help attract capital when it is needed. Regular IP audits help ensure your IP strategy is aligned with your commercial strategy. There are risks associated with a complacent approach to IP strategy or one divorced from commercial plans. The lack of a coherent IP strategy can render your IP expenditures a mere cost to your business as opposed an investment that generates solid returns.
In the medical device sector, any robust IP strategy should include filing patent applications to protect your core technology and the revenue model enabled by your core technology, but patents are not the only IP asset that is important to a business in this space. Trade secrets, copyrights, and trademarks could be just as important as patents, depending on the technology and commercial strategy in place.
Where your business sits in the value chain is as important as the merits of your innovation. A medical device manufacturer who develops and markets implantable devices may need to emphasize patents and account for a particular regulatory pathway. For example, should a business adjust its patent strategy in view of selecting the 510(k) de novo route versus the PMA regulatory pathway? (Yes-it should!) On the other hand, a company that provides services may need to emphasize method patents over product patents to help protect its revenue model. A software development company may need to emphasize copyright protection, data encryption and iron-clad service agreements with its customers as part of its IP strategy. Regardless of your product or service offering, your business has IP assets and they should be actively managed to ensure an adequate return on investment is realized.
An IP audit can identify any gaps in your strategy and generate corrective actions that can be implemented to address those gaps. Have you conducted an IP audit recently? If not, we can help. Simply answer the questions below and respond directly to this email or print out the attachment, answer the questions, and send the survey back. After I receive your survey response, we’ll schedule a time to discuss your audit and IP strategy at no cost to your business.
Intellectual Property Survey
- Is your intellectual property helping your business with its top line, bottom line, and capital attraction?
- What is the biggest challenge facing your business today?
- Have you considered how intellectual property can help address that challenge?
- Have you applied for patent protection for your core products and services? Is it adequate to cover your revenue model?
- Have you conducted a patent freedom-to-operate study?
- When is the last time you reviewed your contacts with your consultants and vendors to ensure the IP clauses are in order and protect your business?
- Have you applied for a trademark registration with the U.S. Patent & Trademark Office to protect your brand?
- Have you documented your trade secrets?
Principal and Chair, Intellectual Property Group, Offit│Kurman®