Every business, from Apple to the local farmer, has intellectual property (IP). Oftentimes non-technology based businesses think of intellectual property primarily as patents for software, drugs and complex machinery that is the playground for the Apples, General Motors and Pfizers of the world. While patents can be an important IP asset, for most businesses their most important IP assets are the assets they use every day. This includes a business’s name, its website, the look and feel of its packaging and products, its customer and supplier lists, and a host of other forms of IP that provide assets to leverage against a business’s competition. In a highly competitive world, how a company uses its IP assets is becoming more and more critical. For large technology companies, having an IP plan in place to assist management in developing protecting, and analyzing the companies IP is common place, but it is more and more critical for companies not historically thought of as technology company’s to actively plan and manage its IP assets to maximize the value of these assets.

In order to approach developing an effective IP plan for a business, the business should first identify and prioritize the fundamental needs of a business into a few basic categories. A typical example of such a list for most businesses would include: 1) the ability to be able to continue to operate the business on a day-to-day basis; 2) the ability to be able to obtain an advantaged market position in the existing markets the business is in; and 3) the ability to be able grow the business into new markets. Intellectual property has a role to play in meeting all of these business needs, and an IP plan for a business should take into account how to utilize and analyze IP to meet these needs for the business.

With respect to the most fundamental need, the ability to operate a business on a day-to-day basis, a business must be able to operate at a level with predictable challenges and opportunities to maximize the efficient operation and growth of the business. To meet this first and most important need of a business, an IP plan must address how a business deals with what IP practitioners call, “freedom to operate”. This means identifying and addressing any IP that would prevent the business from carrying out its regular services and product offerings. The plan should address how a business identifies any possibly conflicting trademarks, trade dress, patents, or other IP of any competitor that could restrict the ability of the business to continue to operate its business in its existing and potential markets. Regular searches of public databases of website registrations, trademark filings and patent filings can be done to see what IP competitors currently have and are filing on. These databases will often provide insight to a business as to what new product names, or products or services themselves, a competitor will be offering in the future, and will identify potential IP barriers that the business may need to deal with so that it can continue its normal operations. Additionally, such searches should be done before the business chooses any new product name, new website, or new products, to identify any barriers of commercializing any such new products or names. A successful IP plan will provide protocols and procedures of when and how a business conducts such searches and analysis in the regular operation of the business.

With respect to the need to obtain an advantaged market position in a business’s principal market, an IP plan should address how a business protects and develops its own IP assets. As to securing the IP assets, the first thing the policy should do is develop the appropriate confidentiality, assignment policies and employee policies and contracts to maintain the trade secrets of the business and to secure ownership of any employee and contractor created materials and ideas in the company. The policy should also develop protocol on how research and development results or other employee ideas are evaluated for IP protection by the business. A system of how such information is provided to management should be developed and a system of how the business evaluates and decides on the appropriate protection mechanism for the information (e.g. patent, copyright, trade secret, trademark, trade dress, etc.) should be established. For example, as trade secret protection requires that the information be maintained in secret within the company, the policy should put into place the appropriate confidentiality protocols to protect information designated by the business as a trade secret. As pursuing patent protection requires that patent filing be made before any public disclosure or sale of the product or process to be patented is done, the policy should have process protocols developed as to the timely submission and analysis of such information. This is done so that the business can decide whether or not it wants to pursue possible patent protection, before it inadvertently loses the chance to do so based on the business’ own disclosures or sales activities. The business should also have a protocol on how it protects its trademarks, monitors its trademarks for possible infringement, and protects and monitors its website and online activities.

With respect to the ability to expand the business into new markets and territories, the IP plan should address new freedom to operate issues in new markets and territories. This includes formalized protocols to perform patent, copyright and trademark searches with respect to new products to be developed and territories to enter into to determine possible barriers before certain expenditures on additional development and expansion is undertaken. The IP plan also can include how a company evaluates the possibility of out-licensing any IP of the business to possible partners and developers in the process of expanding the products, services, markets and territories of the business.

The items above are just some examples of the types of issues an IP plan can address to assist a business in meeting its business needs and more fully protecting and utilizing the IP assets that the business has. Michael Best has worked with a variety of agribusinesses entities in assisting them in effectively developing and implanting such polies.