IP Planning is nothing more than the process of creating a roadmap for how you will develop and protect your intellectual property and how you will avoid being sued for infringing rights held by others. Nearly every entrepreneur will tell you the importance of having a business plan and a marketing plan. An IP Plan should be thought of as an extension of your business plan.
Creating an IP Plan has a number of benefits, including:
- Creating systems and processes that will help you capture the value of your company's innovations.
- Creating systems and processes to minimize the risk that you will be sued for infringing rights held by others and reducing your exposure if you are sued.
- Systematizing the systems and processes related to your intellectual property so that you will not need to reinvent the wheel each time an issue arises.
- Building an innovation culture within your business.
- Centralizing responsibilities for intellectual property issues to ensure streamline the process and ensure issues are addressed properly.
- Allowing you to make important decisions before they are urgent (i.e., allowing you to take time to consider how to address these important issues without time pressure).
We at Klinck LLC are true believers in the value of IP Plans, yet we have noticed that many entrepreneurs have not taken the time to create these plans. Thus, you have created a resource that goes into these benefits in greater depth. To learn more about how an IP plan will help your business, visit the Benefits Of An IP Plan Page.
The contents of an effective IP plan are driven by its purposes—to allow you to extract maximum value from your company’s innovations and to reduce your company’s exposure to a claim of infringement by a third party. Each of these purposes warrants its own plan component.
A Plan To Harness Your Assets
Your company’s IP plan should include systems and procedures that will help you to harness your assets. To facilitate this goal, your plan will need multiple elements.
Identify your assets: The first element of a plan to harness your assets is a system to identify the intangible assets that your company is producing. If you don’t know an asset exists, you won’t be in a position to maximize the value of that asset. An effective identification program will include plans to train your employees about what is protectable, plans to facilitate communication between the employees creating assets and those making the decisions protecting those assets, and plans to provide the proper incentives so employees identify protectable assets.
Assess your assets: The second element is a system and method to assess the identified assets. Not all assets are worth protecting, and you will likely have to make decisions about what to protect based on budgetary constraints. Your plan needs to incorporate methods to prioritize the assets that are identified. Once assets are prioritized, you can start with the most important assets and move down the list.
Protect your assets: Your IP plan will also need to include systems for protecting the assets that warrant protection. Protection may include filing for a patent, registering a trademark or copyright, or making sure your company is making reasonable efforts to protect confidential business information. Creating systems to protect your assets will generally involve creating processes for hiring counsel and making the necessary filings.
Monitor for infringement and enforce your assets: The final element of a plan to harness your intellectual capital is to develop a method to detect infringement and a plan regarding how to respond. This aspect of your plan will involve making decisions about how aggressively you intend to police your intellectual property based upon your budget and the value of the individual assets.
A Plan To Minimize Your Risks
Beyond developing a plan to maximize the value of your assets, your IP plan should include plans to minimize your exposure to a claim of infringement by others. A plan minimizing exposure should involve elements to reduce the risk of being accused of infringement and minimize the impact in the event you are accused of infringement.
Create clearance and due diligence programs: The first goal of the risk-minimization plan is to avoid an accusation of infringement in the first place. This requires that you adopt systems and procedures to avoid making or using intellectual property that belongs to third parties. The particular procedures that you will need to develop are addressed in future chapters.
Develop a licensing stance: Your plan should also include developing your company’s stance on licensing. As a general rule, it will make sense to develop a general policy towards licensing third-party IP (i.e., obtain authorization for its use) in the face of an accusation of infringement. There are reasoned arguments for multiple licensing approaches, but consistency is generally the best approach.
Develop a plan to respond to accusations of infringement: The final element of your plan will involve developing a procedure to respond to accusations of wrongdoing. This will generally involve considering how to respond if and when you receive a letter accusing you of infringement, developing a plan for responding to a lawsuit, and considering counsel as part of the planning process. Taking these steps in the planning process will reduce the stress that comes with an accusation of wrongdoing and will allow you to make important decisions when you are not under the stress of a lawsuit.
You also need to address the question of who is responsible for creating and executing your IP plan. The answer to this question will depend on where you are in the cycle of your business's life.
If you are a solopreneur, the answer is pretty simple. Time to look in the mirror because creating an IP plan is another issue that you will need to handle yourself. On the bright side, creating a plan will be easier for you because you will not need to collect information from multiple sources. You should have all the information you need to create the plan. Similarly, you will not need to weigh the opinions of multiple constituencies. You are it.
If you are an early-stage startup with only a handful of founders and employees, you will likely want to involve the entire team in the planning process. This will ensure that you have complete visibility, allow you to delegate certain tasks, and help you to encourage an innovation culture at your company.
If you are running a larger business, you should appoint an IP team. I recommend that your IP team consist of a mix of technical and business-side employees, that you appoint a chief IP officer, and that you strongly consider retaining outside IP counsel to guide your team. From your perspective, the beauty of the process is that you will have delegated the task to others. This will allow you to continue to focus on driving your business forward while the team you appoint will focus on making sure you are maximizing the value of your assets and minimizing the risks you face from third parties.
Developing a plan does not have to be overly complex. As an entrepreneur, you have certainly taken the time to develop plans to address other aspects of your business. You can develop an IP plan using many of the same techniques.
Plan With Your Business In Mind
The most important aspect of the planning process, other than actually creating the plan, is to constantly remember that the plan should be a tool for your company’s overall business success. Creating an IP plan is not about protecting every last intangible asset. Indeed, attempting to formalize protection for all of your company’s potentially protectable intangible assets would be a costly plan (and would create significant management headaches).
Rather than seeking to protect all possible intangible assets, the purpose of creating an IP plan is to ensure that the intangible assets that are important to your business are protected. This means taking into account your company’s objectives, values, and resources. During the planning process, you (or your team) should always be considering the relevance of assets to your overall business.
As with many decisions you face as an entrepreneur, decisions about how to handle IP issues often involve cost-benefit analyses that consider the time and money involved in protecting assets and the value that the assets bring to your business. You should obviously be willing to spend more time and money to protect intangible assets that are crucial to your business (e.g., your brand name and your critical innovative products).
Don’t let the process of planning take on a life of its own. Use the planning process to further your business objectives. Always remember that this is a business-strategy process, not a legal undertaking.
Step 1: Start With An Audit
Developing a plan has to start with taking stock of where your business stands currently. Your business certainly has some intangible assets, and some of those assets have likely been converted to protected intellectual property along the way. You also may have set up some systems or procedures to guide your IP decision-making.
No two businesses are the same, and developing a plan for your business requires an honest assessment of where it currently stands.
The best way to take stock of your current position is with an IP audit. Don’t let the name scare you off; an IP audit is a relatively painless experience that you can complete quickly. This process requires you to answer a series of questions related to your IP planning to date, the systems you have in place, and the steps you have taken to protect you intangible assets.
Learn more about this first step by visiting the IP Audits Page.
Step 2: Fix Any Glaring Issues
During the course of the IP audit, you may discover major issues that warrant immediate correction. Did you fail to run a trademark clearance on your brand name (or a major product name)? Are you using copyrighted material without the proper license? Do you have holes in the chain of ownership for any of your assets?
Depending on your particular circumstance, you may discover issues that need to be addressed right away. Although developing the overall plan is important to your business, you have to put out any existing fires before taking the time to create the plan. Thus, if you discover significant gaps or issues, correct them. Don’t wait.
Step 3: Develop A Plan For The Future
Once you have fixed any glaring issues that you uncovered as part of your IP audit, it is time to create the systems and procedures that you will use on an ongoing basis to harness your assets and to minimize your risks. The planning process will generally focus on developing communication protocols, standards for assessing potentially protectable assets, systems to prioritize the various assets, and general procedures for obtaining the necessary protection.
The planning process will also involve creating systems and procedures to minimize your exposure to infringing IP owned by third parties. This will include developing procedures to vet your products, brands, logos, and slogans against existing patents and trademarks. It also involves creating procedures to ensure that your employees are not infringing copyrighted material or using trade secrets from prior employers. Finally, the plan should include procedures that address what you will do if and when your company is accused of infringing IP held by others.
Click on the links below to navigate between pages of intellectual property resources.