IP Series: Protecting the Right IP

This article is the first in a 5-part series on Protecting Your IP. Check out other parts in the series:

• Part 2: I Got My IP; Now What?

As a business owner, protecting your intellectual property (IP) can be daunting, especially if you’re unfamiliar with the landscape. IP legal protections are crucial to the success of your business, designed to spur innovation and facilitate the exchange of goods and ideas. However, innovators often pursue IP protections that fall short of this goal. While it’s important to protect your market share, it’s equally important to avoid expending resources on protections whose value propositions don’t warrant the expense. To do that, you need to clearly define your IP portfolio and be proactive about protecting it. How do you pick what to protect? Dedicate time to inventory, categorize, and prioritize what IP you want to protect. This exercise can typically take just a few hours. You can also repeat the exercise as your IP develops to keep you aware of your IP position and up-to-date on any actions you may need to take to protect your IP.

IP protection is usually in the details. A single discriminating feature could be the difference between a registered trademark and a multimillion-dollar lawsuit.

Inventory

The first step in creating an IP portfolio is identifying potential IP. Remember that what an IP right protects is different than what protected IP does. For example, a patent might cover a formulation that cures cancer, but does not cover curing cancer. It’s also important to think small: IP protection is usually in the details. A single discriminating feature could be the difference between a registered trademark and a multimillion-dollar lawsuit. As a small business without the resources to cover every detail, the best approach typically includes focusing on small but differentiating IP. A patent on the way a piece of sheet metal is folded into a pen clip can impress investors. When in doubt, rely on the guidance of an IP professional, who can evaluate the IP protection and commercialization potential. Even if something is not protectable, it can spark an idea of what is.

Categorize

When categorizing and protecting your IP, there are generally three regimes of copyright, trademarks, and patents in addition to the contract-based trade secret. Individual components of IP may be protected by multiple categories or none. Refer to the following chart for a description of each category. As with the inventory exercise, list the IP in all potential categories and refine the list with the guidance of an IP professional. Copyright Trademarks Patents Trade Secrets What it Protects Literary, dramatic, musical, or artistic works Indicators of source Art, process, machine, manufacture, composition of matter, or improvement Methods, information, data Restrictions Inheres in the author without requirement to register Demonstrated use and distinctiveness Useful, new, non-obvious, not prohibited subject matter No protection from reverse engineering What it Costs No official cost if not registered but may involve admin fees. Registration: $50 fee +~$450 agency/work Clearance search: $1200 Registration (optional): $530 fee +$1900 agency Prior art search: $2000 (min) Registration: $750 fee +$4000 agency Maintenance: $50 - $225/yr Contract drafting fees based on complexity

It is important to determine which opportunities to protect, which to forego, and which to take steps to leave open for later consideration.

Prioritize

IP protection is a forward-looking exercise and you must take care to avoid missing a significant opportunity. However, not all IP is valuable or can be protected. Understanding that your IP strategy will change over time, it is important to determine which opportunities to protect, which to forego, and which to take steps to leave open for later consideration. An experienced IP professional can help you evaluate the commercial potential of each piece of your IP and weigh it against the various costs of protecting them. This will allow you to allocate your available resources for optimal gain. ventureLAB’s IP Retention Program Intellectual property is a critical pillar for Canadian companies commercializing transformational solutions to have a truly sustainable competitive advantage in a global market. The ventureLAB IP Retention Program is a comprehensive program helping tech businesses develop a pipeline of investment opportunities and ultimately keep valuable IP in Canada. The program helps you navigate the right combination of timing, tools, and talent, to give you the speed and strategy to develop your IP and compete on a global scale. Join now.About the Author

Jared Sues joins ventureLAB as a law student at Osgoode Hall Law School where he serves as an IP Osgoode Innovation Clinic Coordinator and focuses his studies in intellectual property. Prior to law school Jared practiced as an engineer for 9 years in Canada and the US. Most recently, he summered at OWN Innovation, an IP law firm, and looks forward to helping the next generation of innovators with their IP strategic needs.