Your Intellectual Property lawyer should ask several initial questions so that he or she can best serve your needs. IP legal counseling services became somewhat commoditized after the 2008 recession. Your lawyer is your advocate, on your side. His or her hard questions, although difficult to address, are designed to reduce misconceptions and to provide legal services to suit your needs. Consumers drive the price of counseling services in today’s market, yet few understand in depth what they are buying. Coupled with the ability to negotiate low prices for volume work or simply to choose among a variety of services, the IP consumer may purchase a compromised product only to regret it at a later date.
What property have you created? Proprietary IP potentially can be protected by any of several types – utility, design, or plant patents, trademarks, copyrights, trade secrets, and know-how among them. Determining the approach is critical. It is important to understand what each of these forms of protection can and cannot do for you and to know which among them is best suited to your needs and the property you have created.
Who owns the property? Failure to correctly assess ownership can be fatal to certain types of IP, including federal trademark registration, and can negatively impact the patentability of inventions. Getting ownership wrong can be a very costly mistake, the damage from which may not show up for some time.
Can use of your IP infringe the superior rights of others? Related to both the type of property and its ownership, this question seeks to determine whether you are willing to undergo the cost of a clearance search and legal opinion about the potential consequences of placing your IP into the marketplace. Neither patents nor trademarks offer a positive right to do anything, only to stop others from using yours.
What does “IP protection” mean to you? Patents and trademarks, for example, can provide a barrier to entry to competitors – a powerful tool in the market place. A common misconception is that “protection” means no one else can practice the invention or use your trademark. Obtaining the IP, although significant and necessary, is only the first step in the right to exclude. You must also enforce your IP against infringers, which typically is of far greater cost than obtaining the IP. If obtaining the IP is all you can muster, then it is appropriate to ask whether you need it. One solution is to license valuable IP to a company of a size to enforce it.
Why do you need the IP? Sometimes clients misunderstand the value proposition in maximizing IP assets. Even for fixed fee services, time is still a factor and value is a factor of the services performed. The “diamond in a lump of coal” approach to maximize assets while minimizing expenses typically produces only coal. It is important to know the endgame, to remember that you are purchasing services to provide a custom product, and that the product is an intangible, not a tangible asset like a parcel of land backed by a deed or an automobile backed by a warranty.
How long do you plan to use the IP? Trademark rights are established in use, so if you do not use the mark over a significant time to establish a source-identifying function, then obtaining a trademark registration may not be worth much. Patents can take years from filing to issuance, so if the market for your product is short-lived, then patent protection may not be the best option.
Are you seeking investment capital for your business based on the IP? If so, be aware of and carefully comply with disclosure requirements, particularly where securities are offered, and be wary of disclosures that could compromise future IP rights.
What are your budget constraints and what is it you are not getting for your budget? As important a business tool as is a budget, a more important matter may be to know what you aren’t getting for the budget you provide. Your lawyer should explain to you the various options and the potential consequences. Unlike a tangible asset, you cannot replace a species of IP and there are many matters that cannot even be repaired if a problem develops after an application for protection has been made.
Multiple forms of IP protection, including multiple patents and trademarks can build a fence and provide a significant barrier to entry for competitors. Barrier to entry is much harder to maintain with only one or a few properties, yet it is also true that many aspects of IP cost money to protect but do not provide a direct return on that investment unless there is a market. It is important to carefully assess both a property and the market to determine value before making an investment.
If you are interested in speaking with an IP Attorney, these highlights will help you know exactly what to expect. Contact Pedigo Law to see what IP protection would mean for you.