Mind Your IP, Please. (The Road to Valuable IP Never Did Run Smooth.)

Gilda Radner should have been an IP lawyer.  She certainly would have understood the feelings of the clients (‘It’s always something.’   ‘What’s all this fuss…? Oh, that’s very different. Never mind.’).   IP law is abstruse.  It constantly changes.  Its convoluted details can drive even the lawyers nuts.  Business teams don’t have much time for the convoluted details, let alone the nuances.  It’s why they hire lawyers.  Unfortunately, they don’t consult the lawyers early enough or often enough and don’t make the lawyers explain IP clearly enough when they do hire them.  Now that every business seems to want to pride itself on its IP as proof of ‘innovation’ and ‘cutting edge’ leadership, business teams rush to claim IP where actually it’s not so clear or, worse, they actually have no IP at all.  As Gilda understood so well, business teams feel overwhelmed.  Feeling burned and confused, the business teams may dismiss IP altogether.  Perhaps most dangerously, the business team may dismiss the other guy’s IP and wilfully, and expensively, infringe.  Not a cheap ‘oops’.

So what are the basics business teams have to keep in mind all the time?  If someone else invented or created it, you might illegally infringe if you use it, copy it, imitate it, reverse engineer it, or think you have bought rights you did not buy.   You need to comprehend who actually invented it, created it, registered it, patented it, licensed it, bought it, sold it, and assigned it in various permutations.  The real owner of IP has the right to exclude you from use for various periods of time, all of which must be carefully calculated: roughly 20 years for patents, up to even 120 years (and potentially more) for copyright, and potentially forever for trademark.  

Don’t think that you can produce or distribute someone else’s protected products just as long as you prominently credit that someone else.  That’s the whole point:  if they have valid IP, they alone get to use it or license someone else to do for them for the life of the IP. 

However, don’t think that just because someone was issued a patent, registered a trademark, or registered a copyright that this is the person who can still give you the right to use or distribute the product.  This person might have assigned some or all of the rights away.  You have to know with whom and with what you are dealing.

Don’t give up on IP rights and just go do what you want.  Don’t confidently assume that if you get caught transgressing, you can just have the IP invalidated–or that you could afford to do so.   It doesn’t work that way, regardless of how smart a lawyer you hire or how much you pay.  And you will pay, a lot, whether you succeed or not in invalidating the IP.  You may well pay twice, for the invalidation process and the infringement.  The costs rack up.

So, what if you do have some neat idea that you would like to protect as your own?  Don’t assume that you can have your team just go on doing what they do every day and that later you will be able to bring the lawyers in to do whatever they do.  What is the potential value of your idea?  What’s the market?  What are the costs?  It’s all complex.

Potential value is, moreover, tenuous because the essential commercialization steps may never be completed. What can go wrong in getting to completion?  The invention or creation may die on the vine. The invention may be obsoleted by someone else’s invention. The invention or creative work may ultimately have too small a market or no market.  Costs of commercialization may outstrip estimable sales.

Say you really believe in your idea and you plan to go ahead; where are you now?

Is your underlying research incomplete?  Is the inventive or creative process incomplete?  What does your team really understand about the steps of the essential legal process  and what have they done so far?  

Under the patent first to file or first inventor to file (new US system as of 2013) rules, someone else may file first and win any challenges. Even if you gets there first and think you’ve won when the USPTO issues you a patent, under the new US post grant review, you may still lose without being sued for infringement. Your now potential IP even if eventually secured, may later, and quickly, be invalidated.

Assuming everything else, is your  commercialization structure complete?   What’s the potential market?  What would it take physically and financially to produce the product?  How would you ramp it up?  Could you?  What would it really cost?  What would be the barriers to entry?  Are there substitutes for your product or other options?  Could another team with deeper products simply roll over and take your space without infringing?  

For that matter, who else may be working on your idea even as you read this?   If you have had the idea, chances are, someone else has had it too.  In fact, where did you get your idea, again?

© 2012. S. Caroline Schroder. All Rights Reserved.
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