This post originally appeared on the IICIE blog and has been modified by the RIC Centre for their blog.
Taking the time to plan an intellectual property (IP) strategy appropriate for your technology startup can yield a substantial return. It can help your business secure its competitive advantage, grow its market share, and increase its valuation. For most businesses, an effective IP strategy will prioritize the IP that protects their core assets:
- Trademarks protect branding
- Patents protect inventions
- Copyright protects original works, and
- Trade secrets protect confidential information
As your business grows and evolves, so should your IP strategy. It’s an important part of your business plan that should, ideally, be revisited often—especially at key milestones.
When developing and reviewing your IP strategy, there are three critical questions to answer:
Is branding critical to your market success?
If your brand is key to market success, trademark protection should be a priority in your IP strategy.
Trademarks include a design or expression that associates a product or service to the trademark owner. When a brand garners goodwill in the marketplace, consumers will most likely associate that goodwill to future products or services from the same brand. By taking steps to properly clear and protect your brand (e.g., through a trademark search and application), your business is one step ahead of competitors who may try to appropriate the goodwill your business has earned with respect to its brand. This also helps reduce the likelihood of encountering problems with your brand later on, and any future associated corrective action costs.
Are innovations critical to your competitive advantage?
If innovations are the distinguishing factor, then patent or trade secret protection can play a key role in securing your competitive advantage.
Patents help protect any new process, machine, manufacture, or composition of matter that your business develops. Patent rights can be asserted to stop another party from making, using, selling, or importing the patented invention. They can also be transferred or licensed, making patents a critical tool in your plan to commercialize innovations—whether the plan is to grow market share or license the innovations to third parties.
Trade secrets are information that a business can keep confidential and has commercial value. Examples of trade secrets include a secret recipe or internal business data. An advantage to trade secrets is that the term of protection lasts as long as that information is kept confidential. This is in contrast to patents, which provide only a limited term of protection. However, there are risks in relying on trade secret protection. The moment the information is disclosed, it’s no longer protected as a trade secret. Trade secrets will not protect against independent development of the invention by third parties.
Does your content or design distinguish you from competitors?
If it’s your content or design that attracts customers, industrial design and copyright protection should be a focus in your IP strategy.
Industrial designs (also known as design patents) protect the “look and feel” of a product. If customers choose your product over a competitor’s because of aesthetic design considerations, then industrial design protection should be a key component of your IP portfolio. This applies to finished products, as well as designs intended to improve user experiences, such as graphical user interfaces.
Copyright protects original works and exists the moment the work is created. An author of an original work has the exclusive right to control most uses of the work. However, copyright is focused on protecting how a work is expressed (e.g., the wording used in a novel, or lines of code in a software program), rather than ideas (e.g., themes used throughout the novel, or functionality provided by the software program). Furthermore, infringement of a copyright often occurs only when access to the original work can be shown and when a substantial part of the work is copied.
A typical IP strategy will involve several forms of IP protection. If you want to maintain rights to your innovation, designs and creative work, then understanding the fundamentals of IP strategy is crucial for ensuring the maximum return on your IP investment. For example, the success of a new consumer product likely relies on product research and development and branding, in which case trademark and patent protection is likely critical. Your patent counsel can guide you in developing an IP strategy that is aligned with your business goals and budget.
Stephen Beney is a partner with Bereskin & Parr LLP and Head of the Medical Devices practice group. He focuses on diverse technologies, including: automotive; medical devices and imaging systems; electronic devices; communication systems; video and signal processing systems; mass spectrometry; solar power devices and systems; fuel cell technology; internet systems; business methods; and clean tech devices and systems.
Joanna Ma is an associate with Bereskin & Parr LLP. Her practice focuses on drafting and prosecuting patent applications related to software-based technologies, electrical innovations, and medical devices and applications. She enjoys learning about new technologies from inventors and advising clients on the development of an effective IP portfolio.