5 Ways Your IP Counsel Can Help Mitigate Risks To Your IP
Feb 7th, 2023 by Thomas DeFelice | News |
In the innovation space, intellectual property and other intangible assets have emerged in the 21st century as the leading enterprise value-driver, accounting for an estimated 90% of the value of the S&P 500. The intangible nature of IP, however, makes securing these critical assets challenging, both in terms of the sophisticated technological safeguards needed, as well as the legal protections necessary to protect your IP assets from risks such as infringement and theft.
An enterprise whose intellectual property isn’t sufficiently secure puts in danger nothing short of its very existence. Unprotected IP assets can lead to a precipitating decrease in market share and a loss of leverage over competitors.
Perhaps the most important role your IP counsel plays is in identifying and mitigating risks to your company’s valuable intellectual property assets. Following are five areas in which your IP counsel can use their specific expertise to help you protect against the ever-present risks and allow you to thrive.
Audit Public and Internal IP Assets.
The first step in any risk mitigation effort is to enlist your IP counsel to perform a comprehensive audit of your IP assets. This audit should cover the entire range of assets including publicly disclosed patents as well as internal assets like in-development inventions, proprietary in-house software and processes, and other trade secrets.
The cataloging of IP assets should encompass the assets themselves as well as their associated transactions such as partnerships, development agreements, and licenses. Your IP counsel should also consider coordinating with your company’s security stakeholders to identify and develop strategies to lock down and protect any physical or electronic files containing IP details pertaining to these assets.
To keep track of your IP assets and associated information going forward, your IP counsel’s team will document their audit in a secure IP asset database.
Ensure Clearly Defined Ownership Rights.
Once a full audit of your IP assets is complete, your IP counsel will want to dig into the language of the IP-related clauses within any agreements that specify the ownership rights of your assets. These documents can include contracts you have with employees, outside contractors, and clients, as well as agreements you may have with manufacturers, licensees, vendors, and joint development partners.
Weaknesses found within existing legal agreements, can help you to navigate your IP strategy in light of current relationships, and serve as a guide to revise language so future binding relationships will have stronger protections for your assets.
Similar to your IP audit, your team will want to create a secure database of your contracts and agreements that is regularly updated to ensure these important legal protections are kept current.
Define and Implement IP Protection Protocols.
There are IP stakeholders in many departments throughout your enterprise, all of whom should align their particular workflows with your company’s overall IP strategy. Your IP counsel, working through your innovation committee, can provide guidance to the policies, procedures, and protocols each relevant department should follow to optimize the capture and protection of your IP assets. Codifying these processes will help to ensure your IP assets are prioritized as revenue drivers.
Your R&D team will be a natural place to start optimizing workflows for the capture and protection of nascent assets. Formalizing processes around invention disclosure forms, for instance, is a crucial place where your IP counsel can insert their expertise.
From development to marketing, anywhere in your organization where IP plays a role will need processes in place for the protection of those assets. The more you grow and the broader your IP portfolio becomes, the more professional development training of your stakeholders will be required to maintain a solid culture of IP awareness throughout your enterprise. Your IP counsel can help develop and execute that curriculum to keep your team aware of the most current policies regarding your IP protection regime.
Monitor the IP Landscape For Infringement.
While the other measures on this list involve internal strategies for risk mitigation, one of the most crucial steps your IP counsel will take is to look outward. Establishing a plan to monitor and analyze your broader competitive landscape will allow you to create an evolving picture of the patent activity within your market space, which in turn helps you to understand your company’s own competitive positioning.
When your IP counsel focuses on the broader market landscape, they’ll look not only for areas where the IP assets you own may be at risk of infringement by your competition, but they will also assess areas where your own innovation could be risking infringement of others. Understanding these risks from both perspectives can help you define the monetized value of your IP assets, direct the development of your company’s innovation initiatives, and identify possible opportunities for licensing or acquisition.
In addition to patent monitoring, your IP counsel should also consider a routine of global trademark monitoring. While keeping an eye on patent activity helps to protect your innovation assets, ensuring your trademarks are respected – especially in markets outside the U.S. – helps keep your brand image strong and undiluted.
The work of competitive monitoring and analysis is ongoing. In an ever-shifting marketplace, your IP counsel will work to keep you and all relevant stakeholders abreast of any actionable data concerning IP activity in your market.
Pursue Proactive Enforcement.
Since your enterprise value is tied so closely to the value of your IP, a willingness to enforce your ownership rights is vital to the overall health of your company. Put another way, your IP, and therefore your enterprise, is only worth as much as you’re willing to defend it.
Enforcing your rights to your IP assets can take several forms. When possible infringement is detected, your IP counsel can engage the offending party with cease and desist requests before moving on to more formal legal remedies. In many cases, the discovery of patent infringement can actually lead to revenue-generating opportunities wherein your counsel can propose a licensing arrangement to avoid costly litigation, thus allowing the outside party to legally use your asset while you collect revenue in the form of royalties. If none of these actions serve to redress the infringement issue, your IP counsel will take action with the courts to litigate for your rights.
In the case of outright IP theft, such as stolen trade secrets or other proprietary information, the role your IP counsel plays is vitally important. Their job is to assess the nature of the breach, identify the culprit, and take measures to reestablish the security of your assets. Further, they can help to quantify any harm caused by the theft and begin efforts to redress that damage. Finally, they can take the necessary legal steps to hold offending parties responsible.
Your IP counsel brings specialized knowledge, operational expertise, and technical capabilities to protecting your valuable IP assets. They approach all of these areas with an eye toward executing your overall business strategy by making sure the foundation beneath it, although intangible, is solid.
This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. The opinions expressed in this article are those of the author only and are not necessarily shared by Dilworth IP, its other attorneys, agents, or staff, or its clients.