Benjamin Franklin. Author, printer, political theorist, politician, freemason, postmaster, scientist, mathematician, inventor, civic activist, statesman, diplomat, and the happy face smiling back at us on the $100 bill, Ben Franklin is known throughout the world as a political leader. Locally, we know him as our first innovator; and the culture of our region continues to be filled with his spirit of creativity and originality.
Mr. Franklin takes credit for inventing the lightning rod and understanding electricity, the Franklin stove, bifocal glasses, odometer, swim fins, and a flexible urinary catheter. Today, our region boasts inventions ranging from #2 pencil to Monopoly, and from software and mobile applications to pharmaceutical drugs and the latest in healthcare apparatus. It’s no surprise then, to consider the astounding amount of intellectual property created here. The United States Patent Office is the busiest in the world, with over 300,000 patents granted and 300,000 trademarks registered each year.
Being that we are a region of innovation, collaboration and design, the management of our intellectual property (patents, trademarks, copyrights, and licenses) is important. When choosing a firm to manage your company’s intellectual property, or “IP,” make sure they employ the following strategies to protect the IP portfolio.
- IP Inventory. Extract as much information as possible about the company’s IP from the executive leaders, scientists, and marketing department. Compile and organize this information, including a list of issued patents, pending patent applications, acquired patents, licensed patents, foreign patents, registered trademarks, pending trademark applications, acquired trademarks, licensed trademarks, foreign trademarks, filed copyrights, pending copyright filings, acquired copyrights, licensed copyrights, trade secrets, clients lists, recipes, and any co-operative marketing arrangements or other licensing agreements.
- Monitor the IP. Although the USPTO will often send a reminder (the Copyright Office will not), the burden of making timely patent and trademark filings and payments remains on the IP owner. It is imperative to track when renewals, maintenance payments, and other filings and fees are due, as a missed deadline at best will result in additional fees, but at worst can cause an owner to lose their rights. On the other hand, if the company decides to stop protecting a trademark or patent, why keep paying for it? Make sure the company business strategy and the IP strategy align.
- Mark the IP. To properly protect a company’s IP, it must be marked. Patented inventions must be labeled with patent numbers, or “Patent Pending,” and trademarks and copyrights should be designated as such. Any trade secrets and recipes should be marked “Confidential” and shared with the fewest number of people possible.
- Building IP Assets. Look for ways to grow the company’s IP portfolio. Perhaps an invention was updated or improved, and a continuance should be filed; or perhaps a new logo was designed to refresh a product and it should be trademarked. Maybe there is an opportunity to license a product to a manufacturer on the other coast, or maybe the company’s confidential client list just doubled from a marketing effort.
- Work with Third Parties. Companies can use third parties to grow their IP as well. Some companies have programs to accept external submissions for ideas; some purchase existing IP from other companies; and some commission work from third parties.
- Watch for Infringement. Ensure that the company’s IP rights are not diminished by the unauthorized use of it by other parties. Be aware of others using a protected patent or trademark for their own benefit, or importing copy-cat goods from other countries. Watch for copyright infringement and employee theft of trade secrets, recipes, and client lists. The more closely the IP is protected, the stronger the rights become. The stronger the rights, the more valuable the IP; resulting in dramatic increases in the value of the company.
As Benjamin Franklin once said, “By failing to prepare, you are preparing to fail.” The growth and protection of a company’s IP portfolio is essential to their success. Mr. Franklin also noted in his autobiography that “…we enjoy great advantages from the inventions of others, we should be glad of an opportunity to serve others by any invention of ours…” Keep the spirit of our region alive inventing, collaborating and innovating, and keep the spirit the spirit of innovation strong.
For more information on IP portfolio management, or to help you reap the benefits of trademark registration, please call or text 484-801-0021 or reach out to Cassandra Ortner at cassandra.ortner@peytonlaw.com. We proudly support the nation’s business owners.
*Janelle Peyton is the CEO and Managing Partner of Peyton Law, a leading boutique law firm designed to provide the highest quality branding, business, and legal services to companies via quarterly subscription called Strategic Legal Solution. Peyton Law offers brand building strategies through corporate and intellectual property law, including business entity formation, buy+sell, contracts, joint ventures, trademarks, patents, licensing, and other growth-related transactions.
