Stand out from your competitors

Business Opportunities

Developing strategies for protecting and exploiting IP

Take stock of what you have

Explore trade secrets and confidentiality agreements

Licensing opportunities

Successful exploitation strategies and effective searches

Developing strategies for protecting and exploiting IP

The real value of intellectual property (IP) resides in your capacity to use it as an integral part of your business. An innovative business will make effective use of IP to market itself, sell more products and services, and leverage its resources and skills in order to gain a competitive advantage in the marketplace.

Protecting your creations by using the formal IP system is just the tip of the IP iceberg. The IP you have developed as a tool or asset may be protected in various ways — more than one type of protection may apply, depending on the type of business you are in.

Businesses, innovators and creators should take the appropriate steps to exploit their IP assets and protect them to the greatest extent possible. Like physical assets, IP assets must be acquired and maintained, accounted for, valued, monitored closely, and properly managed in order to extract their full value. But before this can be done, you must first acknowledge the value of IP and begin to see it as a valuable business advantage.

You can protect your IP, develop useful exploitation strategies, and start integrating it into your business using a mix of combinations that best apply to your situation.

Here are a few avenues to explore:

Take stock of what you have

In an innovative, dynamic business, the value of IP can be much greater than the value of its physical assets. When a company is conscious of the use and value of IP, it creates an environment that provides a foundation for mergers, joint ventures, or research and development agreements.

Developing effective IP protection strategies will depend on your particular business. An effective strategy may involve a range of IP protection options. As an example, you may seek patent protection for your product, register its design and develop a branding strategy based on a registered trade-mark.

You may decide patent protection is not worthwhile and that maintaining secrecy and using confidentiality agreements will provide enough time in which to develop brand recognition and loyalty or develop new products and services. Or you may only focus on a trade-mark to develop your position in the marketplace. As an example, a strong brand equity, of which a registered trade-mark represents the main component, is a useful adjunct to a rapid production and development strategy because once your product is in the marketplace, you cannot prevent others from copying it.

Using a range of protective measures gives you layers of protection and strengthens your position in the marketplace. Whatever strategy you adopt to protect your IP, it should ideally be integrated into your overall business plan. Explore all the options available and seek professional advice if required. You would normally turn to a professional for the production of legal documents such as a will or rely on a real estate agent to sell your house. Integrating IP in your daily activities should be viewed as a long-term investment, so why not consider professional help with the management of your IP assets?

Explore trade secrets and confidentiality agreements

A trade secret can provide effective protection for some technologies, know-how and other forms of IP. Ideally, it should be backed up by signed confidentiality agreements to preserve secrecy and proprietary knowledge. Relying on trade secrets is useful when the IP is unlikely to result in granted patent rights or you wish to retain exclusive use beyond the term of a patent. A trade secret strategy is appropriate when it becomes difficult to copy the construction, manufacturing process or formulation from the product itself.

Secrecy, however, does not stop anyone from inventing the same product or process and commercializing it. It does not give you exclusive rights and you are vulnerable when employees sworn to secrecy leave your firm. Furthermore, trade secrets are difficult to maintain over long periods or when a larger number of people are privy to the secret. Secrecy is harder to enforce and protecting it is potentially more costly than granted rights because it relies on the complexity of proving a breach of confidence under common law or civil right.

Licensing opportunities

Taking out a license on someone else's IP can be an effective exploitation strategy. You may have a good idea but realize someone else has already thought of it. Acquiring a license is a cost-effective alternative to investing in development which has already been done.

Another approach is licensing your IP to another party, particularly if you do not have the resources or experience to develop and market your product or service. As with all the other aspects of commercializing your IP, licensing needs to fit in with your business strategy and practices.

Successful exploitation strategies and effective searches

Reviewing relevant literature can save a lot of time, money and effort. With the emergence of new technologies, a number of IP databases are available on the Internet. When Web site searches are not possible, searches can be conducted at CIPO's headquarters in Gatineau, Quebec.

The information contained in IP databases can provide your business with important insights that may be used to:

Prepare feasibility studies
Most inventions are disclosed to the public for the first time when a patent application is published. Thus, patent applications and patents provide a means of learning about current research and innovations often long before the innovative products appear in the marketplace. You can find this useful information by browsing through patent databases. If there are multiple patents for a particular type of product but no such product is in the marketplace, you can be assured that there is little interest in such a product.

Find possible partners and markets
If you are interested in developing and marketing a particular type of product, you can search the patent and trade-mark databases to find companies that already own patents or trade-marks in related areas. Similarly, you may be able to find information about IP that you could purchase or license to market or improve your products or services.

Avoid possible infringement and identify potential competitors
When selecting a trade-mark for example, you should find out whether the mark you are proposing, or similar ones, have already been registered by other enterprises for the category of products, services and markets you are interested in. This type of information is obtained by conducting a trade-marks search. Doing it early is crucial so as to avoid unnecessary conflicts with other enterprises and loss of resources. You can find out who is in the same business by conducting a trade-marks search for particular products and services.

Anticipate changes in your line of business
Keeping track of patents in your field can help you plan for changing market conditions. For example, a number of large players have patented technology that makes long-distance surgery possible. A company that supplies technology or technical support services to hospitals could use this information, which it would locate in patent databases, to prepare products or services to meet the new needs of hospitals that adopt this technology.

Obtain permission to use copyrighted work
Conducting searches in the copyrights database will allow you to find material of interest and enable you to get in touch with the creator of the work to obtain permission to use or reproduce copyrighted material. As an example, a firm interested in producing a technical procedures manual may contact a few authors and obtain special permission to use or reproduce various sections of their manual.

Keep in mind...

When dealing with valuable property or complex property issues, it is standard practice to seek expert help, and IP is no different. There are a variety of professionals ready to help you, including business and legal advisors, registered patent agents or lawyers (who can also help with industrial designs), registered trade-mark agents or lawyers, and copyright lawyers. They can give you strategic advice about developing an effective strategy. You will find out when and how to apply for IP protection and how to save money by avoiding pitfalls.

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