Introduction to IPM

Intellectual Property Management is all about maximizing profitability. For the

high tech venture, intellectual property is the lifeblood of the enterprise.
Managers should develop a corporate culture which understands the
importance of this. Engineering managers should be looking at licensing out
that IP which is not commercially critical to the enterprise, thereby generating
additional profits for the company from "old" technology. And, they should also
be looking at licensing in technology which might tie in to their own.
Furthermore, technical managers are well served if they make it a practice to
review disclosures (patents and others) frequently in order to augment their
knowledge base.

The Reality of IP Protection

Before getting into the details of how to protect our intellectual property, let's
consider some hard truths about the competitive environment in which we
work. Suppose we are a small, emerging company with a ground-breaking
software technology that is protected by an airtight patent. Bill Gates decides
that this new technology could very well be the technology that could
challenge Microsoft's stronghold on operating systems. He asks us if we're
interested in selling out to him, but we refuse (our egos are bigger than his).
Bill decides to use some of our ideas in clear violation of our patent. We sue.
Bill fights. He has dozens of patent attorneys. We have one. But we have a
patent!

WHY TO PROTECT

in order to be successful have some other asset working in their favor such as a huge
capital investment, market dominance, marketing resources, etc. Notwithstanding this,
it is the IP asset repertoire which keeps profitable technology companies in their
leadership positions. There are some crucial questions which must be addressed. The
bottom line question is: what if a competitor uses my know-how to compete with me?
How important is that to my business? How do I prevent or delay that from occurring?
On the other hand, is it possible that I might be preventing from using my own know-
how? For example, if I neither disclose my invention nor patent it and someone else
does patent it, I might end up having to pay another party for the right to use my own
invention.
What is IP and how can we protect it?

Intellectual Property is the know-how that comes from our creative thought processes.
It is the knowledge of how to do something better. And, that "something better" may
very well be worth a fortune if we can successfully commercialize the IP while at the
same time preventing others from doing the same thing. So, how do we prevent
someone from doing the same thing? There aren't many options open to us: we don't
disclose our know-how (i.e. keep it secret), we obtain some form of legal protection or
we sell the idea. Sometimes secrecy is the best way. For certain types of technologies,
there may be a lead time advantage which will be a disincentive for others to copy or
imitate in some way. It may be possible to establish market dominance because it will
simply take too long for other entries to produce alternatives.With respect to legal
protection, i.e. the use of patents, copyrights, trademarks, etc., one must always bear
two very important points in mind: 1)where (e.g. in which countries) is the protection
valid? and 2)how enforceable is the protection (e.g. you may have a patent but cannot
afford to defend it). Since lawyers are involved, rest assured that legal protection is a
costly and complex matter! Since the legal rules are constantly changing and evolving
and since the laws differ from country to country, even though there are many
similarities between Canada and the USA for example, this article will avoid being
overly specific from a legal perspective.

Patents
Rights, granted to inventors by the federal government that permit them to exclude others from m
aking, using, or selling an invention for a definite, or restricted, periodof time.Patents
give the
user a form of legal protection, i.e. a monopoly, which prevents others from
commercializing an invention without permission from the patent holder. Patents
provide protection for only a limited period of time, i.e. 20 years. Patents are only
granted if inventions meet certain criteria and tests. Three necessary conditions for
patentability are 1)novelty, 2)utility, and 3)non-obviousness. Patents are only valid in
those countries in which they are granted and the degree to which they provide any
form of protection will depend on that jurisdiction's legal system. For example, in the
USA, there have been some recent changes. Protection now extends for 20 years
from the date of filing. Additionally, besides infringement liability for making, using,
and selling a patented invention, there is also liability for even offering to sell an
infringing product or for importing such a product into the USA.

Trade Secrets

As an alternative to patenting, you can use the trade secret method to protect IP, i.e.
you keep it a secret. Most certainly if something is not patentable, for whatever
reason, it would be prudent to protect it by trade secret. Anything at all of a
proprietary nature can be protected in this way. Companies must be diligent in
ensuring that all employees maintain secrecy and confidentiality. It may not be
sufficient to have them sign employment and non-disclosure agreements. In the case
of a product like Coca-Cola, for instance, it is unlikely that many employees would, in
fact, know the famous formula.

Copyright

A copyright is a legal means of protecting an "expression", e.g. a literary work or an

art form. It does not in any way protect the ideas or the principles expressed - only
the expression thereof. Copyright does not prevent others from doing similar work
or creating inventions based on a copyright work. In simple terms, it prevents others
from "stealing" one's creative work. e.g Software programs are automatically
protected by copyright. It is illegal for people to make copies of computer programs
unless specifically allowed to do so by the software's creators. The period of
protection for copyrighted works is longer than it is for patents. The protection
period is 50 years for published works.
Trademarks

Trademarks are identifiers, like corporate logos or product names, which are used to
promote products or services. Trademarks are not limited to designs. Trademarks
could also be colors, smells, and sounds - to name a few. The value of a trademark
should not be underestimated. Names like Coca-Cola have substantial intrinsic value
which has arisen from years of promotion, use, adoption, reputation, etc. Trademarks
can be registered and be used exclusively by the registrant.
Industrial Designs

A particular shape, configuration, or pattern for an object such a coke bottle, intended
to appeal to the viewer, is an industrial design. The Industrial Design Office, will
accept registrations for industrial designs. It does not pass judgment on the aesthetics
of a design, i.e. it may be ugly! There is no protection without formal registration. To
qualify for registration, an industrial design must be original with respect to design
features not dictated by function, and must be applied to a complete product. Watches,
tools, and machines are examples of IP which qualify as industrial designs. Computer
icons also qualify. Before registration is granted, the item must have been in use for
more 12 months
Summary

The regulations and practices regarding the management of intellectual property are
constantly changing. It behooves the IP Manager to cultivate his/her ties with
professionals and practitioners. The internet serves us well in this regard. Chat groups,
email lists, and informative web sites make the job easier

Conclusion