Written by: Dr. Angela Keuling How do I best protect my invention, by patenting or keeping it as a trade secret? Do I need to register my product name as a trademark or are common law rights enough? Will copyright protect my website? Every business, regardless of whether they are just starting out or have years of experience, can benefit from having an IP strategy. A good IP strategy takes stock of your IP assets, identifies opportunities for and barriers to IP protection and provides a roadmap for how to optimize the value of your IP, linked to your business plan. An IP strategy can be used internally to direct and inform IP related decisions and can be a formal document that can be shared with investors and other stakeholders. The following steps can be used and adapted to develop a strategy that fits your business now and as it grows: 1. Take Inventory The first step in developing your strategy is to figure out what IP you already have or in the process of developing. The inventory should include not only registered IP rights (e.g. patents, trademark registrations) but also unregistered IP (e.g. unregistered trademarks, copyright) as well as IP that could potentially be the subject of future protection (e.g. new inventions, designs, methods, etc.). As part of the inventory, also look into the ownership of your IP assets to see if they are all owned by the company or if there are any IP rights you need to secure from another party. 2. Assess the IP Landscape To help guide your strategy, it can be valuable to assess the overall landscape and check what competitors in the field are doing. For example, conducting a broad patent search of the technical field can help to identify areas where the IP space is crowded and areas where there is potential “white space” for you to play in. Looking at your competitors’ patent (and trademark) applications can also give you a sense of where their focus is and how they’re trying to protect their innovations. 3. Identify IP Protection Strategies Now that you have a sense of what you have and what others are doing in the space, you can start to decide how to protect your own IP assets. For each item in your inventory, consider what possible protection mechanisms are available and what would provide the strongest protection. Investigate the costs and timelines for obtaining that type of protection and weigh that investment against the value of the IP to your business. Prioritize protection of core IP that gives your business the greatest competitive advantage. 4. Determine What Agreements You Need Often, the IP inventory will reveal gaps in the ownership of your IP assets where rights still reside with the employees (or contractors, etc.) who created it or in the wrong corporate entity. Make a list of any assignment agreements you’ll need to transfer those rights to the correct entity. Also consider if you need to in-license any IP from another party or if you need an agreement to formalize a research collaboration. 5. Outline Your IP Policy As your business grows and takes on more employees, it’s important for everyone to be on the same page about how IP is to be identified and protected. Develop an IP policy so employees know what to do when they create a new invention, design a new logo, etc. as well as how to treat sensitive information like trade secrets. 6. Align Your IP Strategy with Other Strategies The best IP strategies are ones that aren’t developed in isolation but integrated with your overall business plan as well as your other strategies for regulatory approvals, marketing, etc. Make sure the steps in your IP strategy align with the activities in your other strategies to avoid potential pitfalls like disclosure of an invention before filing a patent application. 7. Implement and Adapt Now it’s time to get started and implement the tasks that you outlined in your strategy. Monitor the progress of your IP activities in relation to the rest of the business and continually adapt as any changes or issues arise. Remember that your IP strategy is a living document and should be updated to meet the needs of your business. The IP team at Parlee McLaws has experience in developing IP strategies for companies of various sizes and stages of commercialization. We can also assist with implementation activities, including preparing and filing patent and trademark applications and drafting IP agreements. If you are looking for funding for developing your IP strategy, the ElevateIP and IRAP IP Assist programs are available for small and mid-sized companies in Alberta, and our team has experience working with both programs.