While there is no one-size-fits-all approach to intellectual property management, a new study says having an integrated IP strategy is vital for companies that create innovative products.
The federal government unveiled an IP strategy for Canadian companies Thursday that helps businesses apply legal tools to protect their IP.
An IP strategy focuses on the individual needs of a particular business and integrates the different types of IP protection that are available, such as trademarks, patents, copyright or trade secrets.
“Canada has a lot of innovation going on, but not a lot of businesses were aware of the IP tools — the legal tools — available to both protect their business and help it grow,” says Timothy Gilbert, founder of boutique IP firm Gilbert’s LLP, which compiled a report, commissioned by the government, looking at the issue.
Gilbert says the concept of an IP strategy focuses on how a business plans to make money and what tools can be used to expand and protect its product.
Such a strategy would also include exploring how a competitor might look to attack that product or idea, he says.
He adds that early stage companies often see lawyers as a big expense, which deters them from seeking consultations with IP lawyers and patent prosecutors. Once companies get to a certain size, this often results in them receiving a demand letter, saying what they are doing infringes on another business’ rights, or in another company ripping off their product.
Gilbert says companies often don’t get in touch with a lawyer until it’s too late.
“If they haven’t found a way to protect it early, they’re out of luck,” he says.
The study lists recommendations for best practices when it comes to a successful IP strategy, including building an IP portfolio early, limiting disclosure from day one and monitoring competitors’ IP. The report compiled case studies from eight companies that successfully employed an integrated IP strategy.
The study also recommends companies should use IP lawyers “efficiently and strategically,” and that, while it is essential to use lawyers for all legal tasks, it advises companies to do their own research on the IP process and prepare documentation required by counsel.
The report says that a starting point for an IP strategy usually is comprised of a combination of various “IP instruments.”
“Which instruments are available for a particular concept will be influenced by the subject matter of the concept and whether it has been publicly disclosed,” the report says.
Gilbert says the takeaway for lawyers from the report is that they should look to emphasize the value of what they create for companies, who might just view their services as an expense.
Understanding a client’s business and taking the time to listen to them are key to tailoring such a strategy, says Gilbert. Lawyers also need to look at IP as a holistic opportunity and not just within a box as a patent lawyer, trademark lawyer or copyright lawyer, he says.