One of the most important steps in developing an IP plan is to appoint the team that will be charged with developing and executing the plan. Entrepreneurs inherently understand the value of teams and will often create teams for any number of tasks, including finance, sales, marketing and promotions, and product development. An IP team is similar to these other teams but unique in that it will draw together a diverse group of employees from multiple parts of your business.
The IP team serves as the hub for handling intellectual property issues within your company. This group will be responsible for developing the initial IP plan, executing the plan, and continuing to update the plan over time.
At the outset, the IP team’s primary role will be to resolve any pressing issues identified during the audit and to develop the company’s IP plan. In many cases, this will be a multiple-month-long process, as there are likely to be a number of tasks to be completed.
After the IP plan is developed, the IP team will shift its attention to the ongoing execution of the plan and tasks associated with keeping the plan up to date. The IP team will look at the following tasks:
- communicating with the creators to make sure they are up to date about new developments
- making initial cost-benefit analyses to determine whether to seek protection for new innovations
- handling ongoing efforts to avoid infringement of third-party IP
- managing the ongoing monitoring programs to detect infringement
- making recommendations regarding potential enforcement actions
As this list demonstrates, the IP team will continue to serve an important role in your IP management on an ongoing basis. The IP team will effectively be the group within your company that is responsible for handling all IP issues throughout your company’s lifecycle.
Creating an IP team has a number of advantages for your business and has the potential to accelerate your progress towards harnessing your company’s intellectual capital and reducing infringement risks from third parties.
First, creating a team ensures that there is a group of employees who will always be thinking about IP issues relevant to your business. In companies without an IP team, often no employees are focused on the company’s IP issues. The result is an ad hoc approach where IP issues are addressed on a one-off basis, if at all. Put simply, without an IP team, any planning you do is likely to go by the wayside as soon as the plan is put down on paper.
Second, creating a team will avoid overloading any single employee. If, rather than appointing a team, you chose to appoint a single employee to be in charge of IP issues, that employee would likely become overwhelmed with the task (or would need to devote near full-time attention to the task). Appointing a team ensures that the task is achievable.
Third, appointing a team will allow you to bring members of the relevant constituencies together on a regular basis. My recommendation is to create a team that includes members from various groups within your business. This short-circuits the lack of communication between creators and deciders that occurs in many businesses. Your IP team will, ideally, force the various constituencies to come together to discuss IP issues on a regular basis.
Finally, appointing a team will have positive effects on your other employees. Among other things, the appointment of a team will signal to your employees that the company is serious about innovation. This will, in turn, help to foster an innovation culture within your company. The creation of the team will also allow you to clearly instruct employees on whom to approach with questions, comments, and suggestions. Your employees will no longer be left to wonder who to approach with an IP issue (or idea).
The team should be made up of a cross-disciplinary group of employees from the relevant teams within your business. This will generally include at least one employee that is business-focused, one technical team member, and one member of your marketing team. In addition to appointing a team, you should choose one member to serve as the chief IP officer.
Appoint A Chief IP Officer
Every team needs a captain, and your IP team is no exception. You should appoint a member of the team to serve as the company’s chief IP officer. To be clear, this does not need to be an official title. The purpose is simply to appoint a single person who is ultimately in charge of the process.
Appointing a team leader ensures that the team stays on task and completes its work. Specifically, the employee who is appointed as the team leader is ultimately responsible for the success or failure of the team. Thus, appointing a team leader will create an additional layer of accountability. Appointing a team leader will, therefore, bring accountability and a single point person to make sure that nothing falls through the cracks.
Given the role played by the chief IP officer, I recommend appointing a business-side employee to this position. Your chief IP officer will ultimately be responsible for leading your team’s efforts and creating an overall direction for the IP team. This overall steering function is best performed by an employee who is cognizant of the company’s overall business objectives, rather than an employee who is enmeshed in a single area (e.g., product development).
The selection of a chief IP officer has the potential to create tension amongst employees if you are not careful in choosing your team members. Should you choose senior product-development or marketing officials for your IP team, you will need to appoint a similarly senior business-side employee to serve in the role of chief IP officer. If the chief IP officer is relatively junior or lacks authority, that employee will have difficulty taking charge of a team that includes more senior team members. Ultimately, this is a team-dynamics issue, rather than an IP issue, but I raise it to ensure that you consider it when developing your team.
Include At Least One Business-Side Employee
Regardless of whom you choose as the chief IP officer, you need to include at least one business-focused employee on the IP team.
Your IP plan should be framed in view of your overall business goals. Technical employees tend to be focused on the innovations without considering the value (or lack of value) these innovations may have to the business. Similarly, marketing employees will tend to believe that every slogan or catchphrase is the best thing since sliced bread.
Business-side employees, on the other hand, tend to be focused on the big picture. As a result, these employees can provide guidance to the IP team on the competing costs and benefits of seeking protection for each potentially protectable intangible asset. An IP team that does not include a business-side employee will be prone to overprotect assets without considering the costs and the overarching business goals.
Include At Least One Technical Team Member
To the extent that your company develops products or services, you should include a member of the technical-product-development team on the IP team.
Your product-development team will be a source of considerable innovation in your business. Indeed, the vast majority of inventions that are potentially patentable will come directly from the product-development team. These technical employees will be creating new and useful products, machines, and designs that will likely warrant protection.
Including at least one of your technical-product-development employees on the IP team will ensure that your team is aware of any ongoing innovation efforts. Moreover, this employee will be able to help the remaining members of the team understand the technical side of any new inventions.
Include At Least One Member From Marketing
To the extent you have an in-house marketing team, you should include at least one member of the marketing team on the IP team. Your marketing team will be responsible for branding material—a natural source for trademarks. This team will also be responsible for creating promotional material and other creative works that are subject to copyright protection.
If the IP team does not include any marketing members, it increases the chances that the team will not be aware of branding initiatives and creative works. By including a marketing employee, you can be ensured that the team will know about the development of these intangible assets and can, in turn, integrate these developments into the IP planning process.
Consider Outside Counsel
You should also consider whether to include outside intellectual property counsel on the team. If your company can bear the expense, I highly recommend getting IP counsel involved in your planning process from the outset.
Outside counsel can be invaluable in helping your IP team create and execute an IP plan. Intellectual property attorneys have dealt with these issues before and, as a result, can immediately spot trouble areas and opportunities. If you take the time to choose a good outside lawyer at the outset, the IP plan your team develops will almost certainly be stronger than if it was developed exclusively by in-house personnel.
Adding IP counsel at the outset will also have benefits down the line. The counsel you add will gain first-hand knowledge of your company, will become familiar with your company’s technology, and will understand your company’s business goals. This knowledge will allow your counsel to make better, more cost-effective decisions as they arise in the future.
Most entrepreneurs are reluctant to involve counsel out of concern about the costs involved. This is a legitimate concern but one that can be managed. Every case will be different, so it is impossible to predict the exact costs for your company. That being said, most attorneys will be willing to engage on terms that will work for your budget.
For companies on a truly shoestring budget, it might be feasible to retain a lawyer who is available as a sounding board for a couple of hours a month. Even this availability can be beneficial (assuming your IP team uses the allotted time wisely). Although an attorney will not be integrally involved in the initial planning process, a commitment of only a couple of hours per month should be ample time to review your IP audit results and provide feedback on where the team should focus its initial efforts.
If your company has the resources to retain counsel, you should consider doing so. The expense involved will generally be repaid multiple times as a result of the guidance the attorney provides.
Having chosen your IP team, you may wonder how the team should operate. Ultimately, there is no magic here. The team should decide for itself, within your business’s culture, how it will operate. At the outset, the team will obviously have a full plate creating an IP plan from scratch. During this phase, the team will almost certainly be engaged in regular, ongoing discussions with the individual members completing tasks during the process.
After the flurry of the initial planning phase, the work of the IP team will decrease significantly. Once the plan is in place, the team’s work will relate to executing and updating the plan. At this point, there may be a tendency to lose focus. Although the amount of work to be done is not as significant, the IP team should strive for consistency. The team should meet (whether in person, by phone, or by WebEx) on a regular basis. This will ensure that the team is able to consider new developments, review and update policies to address changing needs, and avoid the tendency of going dormant.
Ultimately, your team will decide how it will operate within the structure of your business. The only requirement is to ensure that the team continues to serve its purpose.
Click on the links below to navigate between pages of intellectual property resources.