IP Strategies for Changing Times

By Louis Carbonneau

With all the recent and well documented turmoil weakening the US patent system at the same time Europe is moving toward a unified patent, the imminent passage of the Defend Trade Secrets Act and the White House finally recognizing the extensive damage to the US economy caused by cyber hacking, just to name a few, the IP landscape is changing fast and traditional intellectual property strategies are looking a lot like investment strategies back in 2008-2009; they probably no longer work!

In case anyone forgot, intellectual property is still the cornerstone of most technology centered businesses: the vast majority of the assets developed and owned by technology companies are intangible assets, i.e., they reside in their internal information and employees’ brains  (Intellectual Capital or “IC”) and the output thereof (Intellectual Property or “IP”). It is estimated that in excess of 85% of the valuation of the Nasdaq Index companies (and of the new global wealth being created) lies in intangible assets. With smaller technology companies, this percentage is sometimes close to 100%. Not convinced? Try selling your office equipment and your computers and see how much money you will raise…

Nowadays, most technology based companies eventually fail or succeed in large part because of the way they handle their intellectual capital assets and convert those into strategic intellectual property assets (we call this the “IQ to IP Conversion Ratio”) that allow them to enjoy a sustainable competitive advantage over their competitors. As the saying goes: “Innovation without protection is philanthropy!”

We have been reviewing and conducting IP strategies for companies for years and there are certain common mistakes we keep observing that most companies make and which are worth mentioning.

  1. Filing Invalid patents. Most companies we know will readily file patents on ‘inventions’ they made without reflecting upon their strategic value (or absence thereof) to the business and without knowing whether these will indeed lead to  valid and enforceable patents. In other words, businesses pay significant money (up to 25K per patent) to secure  rights that may be irrelevant or illusory (often both) when they most need it, giving them and their investors a false sense of security about the strength of their IP position. When one simply considers that US patents are currently being invalidated at a rate of 70-80% based on the existence of prior art, it is mind boggling to think that any new patent can still be drafted without having done a full prior art search which, for about 10% of the cost above, would have indicated whether it is worth going any further.
  2. Filing Undetectable Patents. Most companies do not understand when an innovation is better protected by patent, by trade secrets or by making a defensive publication (to present others from patenting it). We use great tools to help make that decision easier. Without entering into the details, suffice it to say that if it is practically impossible to detect of someone else is practicing your invention, the patent you obtained at great cost is most likely to be unenforceable as you cannot make your case of infringement based on publicly available information. Worse, you will have told the rest of the world how you perfected your innovation over the years without any of the benefits of having a patent thereon. Remember, innovation without protection is…
  3. Neglecting Other Types of IP Protection. IP is a lot more than patents and trade secrets. As many startups have proven, neither the value of a brand (e.g., Angry Birds), which is the buzz word for trademarks, nor that of “eyeballs” (or goodwill), i.e. the amount of people using your products, even if for free (Facebook being the poster child) should be overlooked. Therefore, the branding strategy of any company is paramount. Trade dress and industrial designs (called “design patents” in the US) are also available to protect nonfunctional elements of products or services. In the fierce mobile patent war waged these past years between Apple and Samsung, it is ironic to remember that what really carried the day in court at the end had to do with the following look alike icons, Apple’s being protected by a design patent.    Funny how things work sometimes…
  4. Not knowing if They Infringe Someone Else’s IP. I am always amazed to see how many billions of dollars are invested in new businesses each year without the slightest regard to whether they might not be able to offer their products or services without infringing the IP rights of others. We are not talking Fortune 500 who couldn’t possibly review all of their competitors’ IP before launching yet another product; I am referring to startups who are one trick ponies for the most part. Conducting a tailored Freedom to Operate, when done right, is neither expensive nor complex and it can bring a very high level of comfort (or discomfort in certain cases) knowing it like it is. Yet, very few investors are focused on this and they routinely invest in products that are ‘dead on arrival’ or whose profitability could be severely hampered by future ongoing royalty obligations.
  5. Having Inadequate Protection for Confidential Information. In a world where IP protection is currently shifting back to fewer patents and more trade secrets as a response to the perceived weakening of the patent system, it is very scary to know that this is happening at a time when hacking and cyber espionage (nation sponsored in many cases) have never been so rampant. Companies like Target, Sony and Premera, to name a few, who spend millions each year protecting their network (and your data) are being hacked routinely. Where does that leave the thousands of startups who generally rely on unsecured networks or free cloud services like Dropbox to store and protect their most secret documents? Pretty much all companies we reviewed so far had vulnerable networks, and no document sharing and retention policies were in place. Use of non-networked storage for trade secrets is often the poor man’s best solution to sophisticated IT security.
  6. Having Weak or Inexistent Contractual Protection. Contracts are also powerful tools to create and protect rights and they stand a much better chance to be declared valid than patents in court in case of a dispute. Most companies we reviewed over the years had entered into flawed NDAs (limited to single purpose, short duration of protection, etc.), and into employment or consultant agreements. that left the ownership of some of their core IP uncertain at best. Those are the kind of documents that will be reviewed with a fine-toothed comb  by others during due diligence for any liquidity event, when it is alas often too late to remedy the situation.
  7. Granting Rights that Are Not Required. Many companies we assessed so far had conducted some level of consulting activities in their initial years or had entered into ill-conceived distribution or sales agreements that effectively licensed some IP rights that they didn’t really need to grant to conduct their business. This may impact valuation down at a liquidity event, if the acquirer realizes that some of the addressable market for the acquisition is already licensed under the coveted technology.

Those are some of the most common examples of why it is so crucial to define and implement an IP Strategy early in the life of a company, plan for the long term and be ready to revisit it often when conditions are changing. In short, treat it the way you’d treat your own retirement plan and you won’t go wrong. A well-articulated strategy will play a significant role in allowing a company to achieve and maintain a long term competitive advantage and return value to its owners and investors over time.

[This post originally appeared at Tangible IP.]

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