Creating Intellectual Property: A beginner’s guide

A Beginner's Guide To Intellectual PropertyBefore blazing down the path of idea development, every entrepreneur or development team needs to consider their intellectual property strategy.  You and your team can make more informed decisions regarding your IP by first understanding the basics and then driving toward the right strategy that makes sense for your idea.

I’ve often seen teams get this wrong because they fail to understand the repercussions of certain types of activities up front.  Hopefully, this will help you know avoid sharing information when you shouldn’t or withhold information when you should have shared it with your partners.

Setting the foundation for your intellectual property strategy

To get started, let’s review the types of Intellectual Property:

  • Trade Secrets – Something that is crucial to your business, but you may not necessarily want the word to get out.  Usually because it would be hard to discover if anyone infringes on any patents you would file.
  • Patents – A document explaining how a skilled person could recreate your invention, but attributed to you as the original inventor. This is useful when you want to defend yourself to possible litigation.  Unfortunately, they are also used on the offensive as well.
  • Trademarks and Copyrights – These are more intangible than patents and have a longer lifespan.  These are becoming much more important as the digital world continues to proliferate into the real world.  For example, a patent may have expired a while ago on a Lego brick, but the Lego brand name is as strong (at the time of this writing) as ever.
  • Research & Development – Not quite in the realm of trade secrets and not quite something you want to go and patent.  Your company my get tax credits or have a capital structure for R&D, but the IP itself is governed by Non Disclosure Agreements (NDAs), Evaluation Agreements, Joint Development Agreements, and Master Service Agreements (MSAs).  Basically, all those documents define up front who owns what as IP is created

Assessing the type of ideas

If your idea is good (or if you have a team that you trust will come up with a good idea), you will need to consider what type of help you need to make it real.  As you solicit help, you will need to be aware of some key considerations:

  • Is the idea even patentable?  USPTO, for example has some specific guidelines.
  • Have you Googled your idea?  Have you perused a Patent Index?  Whenever I hear an entrepreneur say that they are the first to have the idea.  It usually takes a about 30 seconds to prove them wrong.  Just sayin’…Has it already been patented?
  • Do you need a co-inventor to help with the details of filing a patent?  If so, you may not actually have intellectual property yet.
  • Who have you talked to about your idea?  Do you have NDAs or other agreements in place?  Has your idea already been shared in the public domain?
  • Venture capitalists typically don’t sign NDAs in the first meeting,  What are the risks of disclosing your secret sauce?  Typically, you can share your idea in 5 minutes, without risking intellectual property disclosure.
  • Is your idea dependent on something already patented?  You may need to look into licensing.
  • What if someone infringes on your idea, what are your legal courses of actions?  Also ask how you would find out if it even happened.  The more difficult it is for you to see someone else, the more difficult it is for them to see you.  Look into trade secret management.

Being consistent with IP over time

Flying machine patent drawing by W.F. Quinby 10/5/1869
Flying machine patent drawing by W.F. Quinby 10/5/1869

After evaluating the type of idea, it is now time to use the right procedures in place. You will have to strike a balance between sharing pieces of information for activities and services and limiting information flow so that you stay at the center of the idea.

At the center of all these considerations is the concept of “journaling”.  Journaling means that your notes are signed and dated so you you can identify the true original of intellectual property.  Note that the patent office only cares about who has filed first, but a journal of notes helps clarify and manage how your ideas are flowing through the process.  At the very least, journals are used to identify inventorship status and how the inventors relate to the proposed claims.

For example,  if your lawyers start drafting your claims in a patent application, contributing inventors can be identified with certain claims according to their journal entries.  The patent office doesn’t care about this, but the inventors may.  Keeping the claims tied to inventors is key to maintaining control over the conversation.

To take another example, let’s imagine that you have determined that your idea is best implemented as a trade secret.  Journal entries can help hold your inventors accountable to the non disclosure agreements that you would have with them.

As a final example, lets imagine that you are setting up an R&D team in your organization.  Journaling becomes the basis of incentivizing and measuring the team’s performance.  Rather than setting expectations on the outcomes of IP processes (which may take years to come to fruition), journals allow you to create goals and objectives around the volume of claims and invention disclosures an inventor contributes during a certain period of time.

Attached is a basic excel template that you can use to begin documenting your IP journal



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  Download a starter journaling template here. ( .XLXS – 12 kb)

IP JOURNAL


Again, nobody in the patent office will ever look at this, but this could become the foundation for your internal IP management process. Also note that this is only the start of tracking ideas.  You will need to put additional thought into the business processes needed to manage and maintain your IP knowledge base.

Conclusion

So, the journal template is a great way to create consistency with your inventors and idea generators.  When it comes down to the actual “Eureka Moment”, though  you may not have the template nearby.  For those moments of inspiration,  I can’t seem to over emphasize the importance of a basic pen and notebook. I discussed on the Basic Ideation Supplies Page, but suffice it to say, I’ve tried to find a digital alternative or countless gadgets to do the job, but a sheet of paper and a sketch lasts for years and years and often increases in value over time.

By understanding the types of intellectual property, assessing the idea, and creating consistant procedures around idea management, you and your team can set a basic foundation for intellectual property development.

 

Daniel Howell

Daniel B. Howell has more than 15 years of consulting and mentoring start ups, building corporate enterprise strategies, and influencing industry trends. His methodology is now available for you to build traction around your ideas. The more people who believe in your ideas, the more your ideas are worth.

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