As a small or medium-sized enterprise (SME), you do not always have the competitive advantages held by more established firms, like name recognition or a wide-ranging market presence. At least not yet. So you need all the help you can get. Setting up strong Intellectual Property protection for your organization's physical and abstract creations is vital if you want to safeguard your team's hard work. Here is how to get started and keep going:
Understand the IP protection option you need
You will want to begin by determining which form(s) of IP protection apply to what your business has created - patent, trademark or copyright - and, then, select the specific application that best fits your work. These vary by region:
- U.S. patent law delineates between utility, design and plant patents for physical inventions, blueprints and uniquely bred plants, respectively, and trade or service marks and copyrights.
- Meanwhile, the European Union (EU) has more possibilities: trademarks, copyrights, industrial or general designs, patents, utility models (shorter-term and thus cheaper patents), database copyrights, domain names and geographical indications (such as appellations affixed to region-endemic wines).
- If you seek to register your IP according to the global standards of the World Intellectual Property Organization (WIPO), be sure you are choosing the right process: the Hague System (for designs; applicable in 90 countries), the Madrid System (for trademarks; effective in 122 countries) and the Patent Cooperation Treaty (PCT) that is upheld by 153 nations.
It is also vital to know major IP gray areas, primarily if they involve regional variance. Software, for example, cannot be patented on its own in European member states unless it is directly related to a machine the software's creator is also responsible for. In the U.S., the software can be patent-protected at the discretion of the U.S. Patent and Trademark Office (USPTO) if it works in conjunction with a unique method or device not in and of itself. Only the source code is protectable in either region, by copyright. So if you had a U.S. patent and an approved PCT application for software, it still would not apply in the EU, or various other regions, because the WIPO's systems always defer to regional or national law.
Taking the latter fact into account, if you have plans for your SME to export its products, either immediately or in the near future, it is critical to have domestic IP protection in all of those markets - and not solely through a PCT application, but in specific countries.
Maintaining the novelty of IP
Keeping your valuable IP away from other parties who might use it for themselves is by no means limited to completing and filing the appropriate patent or trademark applications. You and others in your organization must also be sure to discuss the IP assets you hope to protect in any public forum, particularly any media publication. Doing so can jeopardize the IP's novelty, which is a crucial criterion to meet for patentability in most major IP regulatory bodies.
But such discussions are sometimes unavoidable - e.g., a key business partner for your company needs to know the gist of your idea to participate in a joint initiative between you two. In such cases, be sure to demand that all parties outside of the organization agree to a non-disclosure agreement (NDA) that protects your discussions' contents as trade secrets. Also, if the IP asset you intend to protect stemmed from any joint research with a partner firm, you will need another agreement in writing that explicitly details how ownership of the IP is shared between all parties.
Portfolio organization and valuation
Once you have an IP catalog of more than just a handful of patented products, designs, methods and trademarks, organizing and classifying it is essential.
Delineating between assets using all pertinent criteria - everything from protection type to market distribution (i.e., exported and domestic products) - will be invaluable as your SME grows, especially in identifying which of your offerings is seeing the most return on investment. Furthermore, auditing it for accuracy and exhaustiveness from time to time serves as wise due diligence in multiple ways, mainly if you operate in a particularly competitive sector or one prone to legal disputes.
A little help from a friend
If you just went through all of that and feel daunted by the prospect of adequately managing your IP - perhaps because your business is just getting off the ground - there is no need to panic.
Dennemeyer has been providing IP services - legal, administrative and advisory - for more than half a century to organizations of all sizes and across numerous sectors. We can and will help you keep your IP assets protected every step of the way, with everything from tailored valuation and monetization services to developing comprehensive IP and IPR strategies and even collateral for raising funds.
Originally published August 14, 2020.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.