Intellectual Property, It's Worth Keeping An Eye On

Dec. 21, 2004
Making sure intellectual property is protected can reap benefits and prevent hassles.

If you have, or are considering, a global business strategy, better re-evaluate the infrastructure that protects your intellectual property (IP) assets. Why? Consider what's at stake. IBM Corp., for example, earned $2 billion in 2001 in IP-related payments, most of that in cash and nearly all of it in profit, says Alexander I. Poltorak, president, General Patent Corp., and co-author of "The Essentials of Intellectual Property" (2002, John Wiley & Sons Inc.). Or consider the recent Wall Street Journal coverage of IP suspicions concerning a vehicle introduced in the Chinese market that resembled one that General Motors Corp. was planning. Here's Poltorak's checklist:

  1. Develop a global IP strategy.
    • Identify key technologies.
    • Develop a protection plan -- which technologies, how to protect, where to protect.
    • Create incentives for employees to invent and to disclose inventions to the employer.
    • Establish a strategic patenting program.
    • Leverage and monetize IP through licensing and enforcement.
  2. Know what you have.
    • Conduct periodic IP audits.
    • Maintain up-to-date IP inventory.
    • Perform IP portfolio mining.
    • Identify the "low hanging fruits" that easily can be monetized.
  3. Protect what you have.
    • Patents: Pay maintenance fees and assure proper patent marking.
    • Trade secrets: Mark the documents where the trade secrets are disclosed as "confidential" and keep them under lock and key.
    • Trademarks: Verify proper use, register trademarks in the countries in which you market products and services and maintain registration.
    • Copyrights: Assure proper marking and register under the local rules.
    • Employees: Review all employment agreements for confidential clauses and make sure they comply with the local laws and are enforceable. Also make sure that all key employees, particularly in R&D, sign an employment agreement or at least a confidentiality and non-disclosure agreement.
  4. Be aware of local laws, practices and business culture in all countries in which you do business.
    • Review with your patent counsel the invention disclosure and patent application procedures pertinent to the inventions made in the R&D centers outside the U.S.
    • Review all employment agreements. Use local counsel knowledgeable in the employment laws of each country where you do business.
    • Review your global license agreements and business contracts with local IP counsels wherever you do business.
  5. Police IP.
    • Monitor the official gazette of the United States Patent and Trademark Office (USPTO) for patents that cite your issued patents or pertain to your technology or markets. Monitor USPTO, European Patent Office and other international and national patent filings for publication of patent applications that cite your issued patents or pertain to your technology and markets.
    • Monitor trade publications, trade shows and exhibitions to identify products that may be infringing your patents or other IP.
    • Vigorously prosecute any instances of IP infringement and enforce your IP rights.

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