Hopefully, my previous post convinced you that every startup needs an intellectual property plan. That probably leaves you wondering what exactly you should include in an IP plan. This post provides a brief overview of what you should include in that plan. In future posts, I will address the parts of the plan in more detail.
Identify Your IP Team
The first goal of developing an IP plan is to identify the members of your intellectual property team. You should create a team of your internal personnel who are in charge of intellectual property issues. The purpose of the team is to develop your intellectual property in light of your overall business objectives. That purpose helps define who should be on the team:
- A Chief IP Officer — This is the person who is in charge of the team and ultimately responsible for your firm’s IP. Ultimately, the buck has to stop somewhere, and that is with the Chief IP Officer.
- Technical Team Member(s) — The team should include at least one member of your technical (product development) team. Including technical team members ensures that the IP team will have insight into the innovation pipeline.
- Business Team Member(s) — The team should also include at least one member of the business side of the company. Including business-side employees ensures that the IP team will remain focused on you company’s overall business goals.
Aside from your internal team, you should consider whether it makes sense to integrate outside IP counsel. Adding counsel will include a cost, but the expense does not need to be excessive. Integrating counsel from the outset will ensure that the IP team has the legal guidance it needs and will allow your chosen IP counsel to develop institutional knowledge before a dispute or crisis arises.
Plan To Harness Your Intellectual Capital
Now, to the substance of the plan. One of the primary goals of your plan should be to develop systems and processes to harness your existing and future intellectual capital. As part of this planning, you should:
- identify current holdings (slogans, trade, names, inventions, etc.);
- audit the level of protection of the current holdings;
- decide whether there is a need to file trademark and/or patent applications for existing holdings;
- set up a process to identify new IP as it is developed;
- set up a process to determine whether to file patent and/or trademark applications for new inventions;
- set up a process to review IP holdings on an ongoing basis to determine their continued value (or lack of value);
- develop a general enforcement plan; and
- create a plan to monitor for infringement and consider enforcement actions on an ongoing basis.
At the outset, the IP team will have its hands full with collecting the existing work, getting it protected, and setting up processes for the future. Once this initial work is done, the team’s work will shift to the ongoing task of evaluating new innovations and monitoring for infringement.
Plan To Minimize Your Exposure
In addition to setting up a process to harness your intellectual capital, your IP plan should involve elements intended to minimize your exposure to a claim of infringement by others and to deal with any such claim. The goal here is to take steps to minimize the chance that you will have to spend a significant portion of your hard-earned capital paying legal fees.
The defensive side of your IP plan should include:
- developing a process to vet your current products, methods, slogans, and trade names for potential infringement;
- developing a process to vet new innovations for potential infringement;
- developing a plan for how to respond to any claim you receive;
- developing a consistent licensing position; and
- considering whether there are ways to insure against the risk.
A thoughtful IP plan should have the effect of reducing the chance that you will be sued but will also involve a plan for how to respond if you are sued.
Developing an IP plan is like any other planning exercise — by devoting some time up front to develop a process, you will reduce the time and aggravation you face in the future.