16 Common Mistakes When it Comes to Intellectual Property Strategy – Mistakes #1 & #2

by: Natalie Giroux

For 10 years, we’ve been working with organizations to build, protect and get the full value out of their intellectual property.  With our unique blend of IP and business expertise we’ve noticed that organizations tend to make the same mistakes causing costly or irreversible errors that lead to missed business opportunities and lost investment dollars. Innovation is our passion, and we’d hate to see anyone loose out on their innovation investments through IP mismanagement, so we’ve put together a series of blog posts to share with you the 16 Common Mistakes When it Comes to IP Strategy. This first post looks at the first two common mistakes:

Employment agreements without IP assignments.

Companies that are founded by two or more trusted partners (often friends) often overlook creating an agreement between founders on IP assignment. This causes issues specifically when one of the founders leaves in a disgruntled way. If this founder was involved in filing a patent application it can create a lot of issues, or even lead to abandoning the patent application.

The same applies to employees and contractors, however, most employment and contractor agreement templates include an IP assignment clause. It is important to note that if someone refuses to sign any IP related documents in the future, the contractual clause can be used in the patent office in lieu of the signature.  There are many other important components relating to IP to cover in an employment agreement including strong NDAs related to trade secrets. Simple templates found on the web may not be sufficient to protect the company’s IP.

How can we help?

At Stratford we have both IP and Human Resource expertise, so we can approach this mistake from both directions. We can help ensure your employee contracts are developed to protect your IP and that your HR team is onboard to make the necessary changes.

Waiting until after public disclosure to file for patent protection.

Since Intellectual Property is an intangible it is sometimes an afterthought instead of being a strategic initiative before you release your product to the world. Everyone is busy implementing, marketing and selling the product and no one is thinking about whether or not there is intellectual property (patent, trade secrets, trademarks etc) that should be protected BEFORE it is shown to the public. Very few countries offer a one-year grace period for public disclosures, so waiting to file for patent protection could prevent you from getting protection in some countries (e.g. Europe). Also, given the “first to file” rule in most countries (including USA), waiting too long to file for protection could mean that someone else has filed beforehand. What’s worse (and we’ve seen it happen too often) is that one waits more than a year to consider patent protection which then makes it impossible to obtain.

How can we help?

At Stratford we have IP, Sales, Marketing, R&D expertise. We understand what is takes to get a product to market and we can approach it from all angles. We can help ensure your products have the right protection so that your sales, marketing and R&D teams can continue developing your product and getting it into the hands of your customers.

 

How can we help you avoid these and other common IP mistakes?

Acting as your part-time in-house IP counsel, our team proactively tailors, implements and executes an IP strategy specific to your business plan. We lead brainstorming sessions to extract new ideas and enhance existing ones, all with the aim of maximizing the value of your portfolio at the most efficient cost possible. With this approach, we do the heavy lifting — freeing your busy executives so they can focus on other areas of the business.

 

16 Common IP Strategy Mistakes Download Document

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