Natalie Giroux is the business lead of the Innovation Strategy practice at Stratford Managers in Ottawa
The Government of Canada recently unveiled its national intellectual property (IP) strategy. At the same time, it says it’s committed to developing an innovation economy, and wants Canada to be a leader in fields such as artificial intelligence.
Although intangible, IP is one of the most valuable assets a company can possess. But if Canada wants to unleash a generation of startup entrepreneurs, these emerging titans of technology will never see their companies reach critical mass without a proper IP strategy.
An IP strategy is a pro-active, deliberate process that continuously evolves. It includes fostering an innovation-minded culture within the company
To start, simple invention-disclosure processes need to be in place, supplemented by regular mining sessions, in order to identify ideas before it is too late to protect them. The strategy could include incentive programs to reward innovation. These programs do not necessarily have to be monetary in nature and are very useful to make sure everyone buys into the process. All employment agreements should include assignment of IP developed by employees and contractors during the course of employment to the company.
To start, simple invention-disclosure processes need to be in place, supplemented by regular mining sessions, in order to identify ideas before it is too late to protect them. The strategy could include incentive programs to reward innovation. These programs do not necessarily have to be monetary in nature and are very useful to make sure everyone buys into the process. All employment agreements should include assignment of IP developed by employees and contractors during the course of employment to the company.
A company’s strategy should include a decision-making process or committee that decides in a timely manner whether to protect each idea via patents, trade secrets, voluntary disclosures, trademarks, industrial designs, copyrights, plant breeders’ rights or other types of formal IP protection. For software-as-a-service applications – where all of the intelligence and innovation is secured on a cloud server – use of a trade secret offers possibly better protection; in such a case, there is no public disclosure of the innovation, thereby providing a company with a longer lead in the market and possibly worldwide protection. The only way the trade secret is uncovered is if someone hacks the server or an employee leaves and divulges the secret, both of which are illegal offences. Trade secrets are not as useful when the innovation resides in a product or an application that can be purchased legally, since reverse engineering can be used to discover how to make the invention.
A good IP strategy includes efficient filing “recipes”: considering which countries to apply for protection in, what sequence to do the filings in and whether to fast track applications to patent. The recipe will not be the same for all ideas or types of protection.
A solid IP plan also includes regularly searching IP databases in order to obtain industry intelligence on what IP competitors are securing and who are the emerging competitors still operating in stealth mode. Recently expired patents are also a great source of R&D intelligence that can result in new IP for a company. There is a wealth of IP available to license and purchase to expand a company’s IP portfolio. In fact, part of the IP strategy announced by the government will provide easier access to these assets.
Any IP initiative should always keep the end-goal in mind. Is the IP portfolio developed for offensive or defensive purpose? Is the goal to get additional revenue via licensing or asset sales, or will the IP portfolio be used for increased company valuation during an acquisition or an IPO?
The IP strategy should evolve along with the company’s business plan and overall strategy. Formal IP registration (patents, trademarks, industrial designs, plant breeders’ rights, copyright) should be considered the same as products and an IP life cycle management process should be applied to these assets. Regular review of the assets in light of the company’s strategic plan is key to avoiding spending money on assets that could be monetized.
Finally, your company must understand that IP is much more that filing a patent, and should never be a piece-meal, after-the-fact reactive process. An IP strategy is only useful if the company implements a culture of continuous innovation and fosters a climate that rewards the disclosure of ideas.