IP Protection & Avoiding Infringement

07/28/2016 00:10:28 to watch
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You've got an intellectual property strategy, and you've been following it diligently. Now you have to decide what to protect and how to protect it. Also, avoiding infringing the IP of others is a sound investment for your company. An IP dispute can be time-consuming, expensive, and distracting. It is something you want to avoid.

Suggested Readings

Founders School || Intellectual Property || IP Protection and Avoiding Infringement || Impact Guide (PDF).

Field, Thomas G. Jr. IP Basics: Avoiding Patent, Trademark and Copyright Problems

McDermott, Peter D. Intellectual Property Basics

"Companies that make $10M or less in revenue are the majority of unique defendants [in patent suits brought by Non-Practicing entities or "Patent Trolls"]. Startups are particularly vulnerable." Testimony of Prof. Colleen V. Chien, Santa Clara University School of Law on April 16, 2013 to the Congressional Subcommittee on Courts, Intellectual Property and the Internet.

Questions for You

Not all forms of intellectual property are important to every company. Review your business plan and identify the key information, technology and market differentiators (referred to here as “IP Assets”), including both those currently in-hand and those yet to be developed or acquired, to achieve the business objectives. Outline an IP strategy that supports the business plan.

Intellectual Property Audit (PDF)

Questions for Your Team

Are you familiar with the relevant portions of the company’s business plan?

Are you familiar with the relevant portions of the company’s IP strategy?

Do you understand your responsibilities under the IP strategy?

What records will you need to prepare and submit?

Do have responsibilities in the management review process for determining which developments warrant the expense of IP protection?

What suggestions can you make to your founder and team about the forms of IP that you believe are or could become important to this company? Why?

How can you help to avoid infringement of the intellectual property of competitors or others? Are you expected to be familiar with the IP landscape relevant to your area of activity?

Tools and Exercises

An IP strategy should generally include conducting a periodic IP audit. The thoroughness and particular focus of an IP audit will depend on the particular circumstances of the company, including its technology area, market space, stage of development, available budget, and other factors. There are a wide variety of sample IP audit checklists and guides available online. The following few are just a sampling and should be used in consultation with IP counsel.

IP Audit - A "How to" Guide, available from the World Intellectual Property Organization (WIPO).

Sample IP Audit Checklist, available from the Utah Bar Association

IP Audit and Management (PDF), presented in June 2013 by M. A. Yafi at the WIPO Training of Trainers Program on Effective Intellectual Property Asset Management by Small and Medium-Sized Enterprises

IP Basics (PDF).

Basic Components of Invention Protection Program (PDF).

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