Bootstrapping an IP Program at an Innovative Company
Capturing and protecting innovative activity is crucial for any business looking to maximize the value of its intellectual property. Without the right people, processes, systems, and technology in place, IP management tends to be ad hoc and reactive. Implementing a formal IP program will integrate IP management into the overall business, providing the necessary support for innovative activity.
What is an IP Program and Why Have One?
An IP program is an organizational approach to actively managing resources that support innovation. IP programs (i) manage IP protected by patents, trademarks, copyright, confidential information, trade secrets and data, (ii) increase the pace of innovation and (iii) make decisions consistent and efficient, freeing up resources to better serve the business in other areas.
An effective IP program is multi-pronged and must identify valuable innovation, capture and protect that innovation as IP, and manage any IP risks that arise.
Components of a Successful IP Program
Corporate Governance Integration
Frequently, IP is labeled as a purely legal issue. However, an organization’s leaders need to be taught that IP issues intersect with every facet of business. A functioning IP program requires a corporate culture that consistently considers its IP holdings. IP needs to be integrated into the budgets and overall strategic vision of the organization to ensure it is managed appropriately for the needs of the business.
Supportive In-house Counsel
In-house counsel must actively develop an IP culture within their organization by:
· educating management and employees about IP;
· promoting a strong IP culture throughout the organization;
· ensuring that all IP documents are accessible and up to date;
· scouting out the opportunities and risks associated with different classes of IP; and
· communicating the value of the organization’s IP to those outside the corporate structure.
Structured and Repeatable Processes
Developing consistent and reliable approaches to IP challenges will streamline processes and reduce waste. These include processes for
· Publish-or-patent decisions for innovative technology;
· Product and Brand clearance;
· Third-party agreements;
· Tradeshow preparation; and
· Employee training.
Automating workflows also ensure no time is wasted manually tracking IP obligations. Automatic contractual obligation reminders ensure the right people are informed. Specialized software can organize IP portfolios in a dynamic and meaningful way. Running routine IP searches ensures that the organization has an up-to-date idea of the IP landscape.
Seeding and Growing IP Culture
A healthy and robust IP program will pay dividends in the long run to any business, whether large or small. First steps to creating an IP culture are:
· Educating the workforce to always consider the IP consequences of their role
· Incentivizing good behaviour through a patent incentive program,
· Weaving IP into organizational workflows through meeting templates
· Calibrating sales playbooks to sell IP without revealing any sensitive information
· Designating an IP cheerleader in each department to consider ongoing IP
The more an organization invests into IP now, the more they can invest in the future.
The content for this article was inspired by a webinar hosted by the Intellectual Property Institute of Canada – Bootstrapping an IP Program at an Innovative Company – which originally aired on October 16, 2019. Jeffrey Kang, Tracey Stott and Jordan Scopa were speakers. This blog post was originally published for the Ontario Bar Association at https://www.oba.org/Sections/Information-Technology-and-E-Commerce-Law/Articles/Articles-2019/November-2019/Bootstrapping-an-IP-Program-at-an-Innovative-Compa
About the Authors
Tracey Stott is IP counsel at Irving Shipbuilding Inc. Jeffrey Kang is an IP Strategist at Norton Rose Fulbright Canada LLP. Jordan Scopa is a partner at Goodmans LLP practicing in IP litigation. Tom Sutherland is currently an articling student at Norton Rose Fulbright Canada LLP.