Welcome back! In our first blog, we provided the basic information to understand the ABCs of intellectual property (IP) and its different forms. As promised, this second blog with Bereskin and Parr (B&P) will emphasize ways of developing an effective strategy for your startup.
This blog was co-written with Joanna Ma, a technology lawyer at B&P, where we talked about crucial questions that will help define a company’s IP strategy.
Joanna emphasized that a company’s intellectual property (IP) strategy should evolve as it does.
In Joanna Ma’s words:
Taking the time to plan an IP strategy and continue revisiting it at key milestones will show investors that the company is aware of its competitive advantage and is focused on securing that advantage to maintain and grow its market share. Early on, a company may only be able to seek limited IP protection. As the company matures, its IP strategy should adapt to its business opportunities and funding.
When working with clients to developing their IP strategy, we often ask:
1. Is branding critical to your market success?
When your brand is key to your market success, trademark protection should be a priority in your IP strategy.
Trademarks include a design or expression that associates a product or service with the trademark owner. When a brand garners significant goodwill in the marketplace, consumers are likely to associate that goodwill with any future products or services with that same brand. By taking the steps to clear and protect your brand properly, your business can be one step ahead of competitors who may try to appropriate the goodwill that your business has developed concerning its brand.
2. Are innovations core to your competitive advantage?
If innovations are key to distinguishing your offerings from that of your competitor, patent or trade secret protection can play a crucial role in securing your competitive advantage.
Patents can help protect any new process, machine, manufacture, or composition of matter your business develops. Trade secrets are information a business can keep confidential and have commercial value. An advantage to trade secrets is that the term of protection lasts as long as that information is kept confidential. This is in contrast to patents, which provide only a limited term of protection. However, there are risks in relying on trade secret protection. The moment the information is disclosed, it is no longer protected as a trade secret. Trade secrets will also not protect against the independent development of the invention by third parties.
One approach to balancing the scope of patent protection and the cost of obtaining that protection is to implement different patent filing strategies for different products or technology within the business depending on the priority of those products or technology.
3. Where is your business, and where will your business be going?
Patent and trademark filings are jurisdictional. For technology entrepreneurs based in Canada, the United States is typically the best starting point, as it is relatively cost-effective and generally provides the most valuable patent in a patent family. Beyond the US, Canadian entrepreneurs should consider countries where the company does or will soon do business, where direct competitors do or will soon do business, and where monetization opportunities such as licensing are likely to arise. When considering where these monetization opportunities may take place, we recommend looking forward at least five years, and possibly up to 10 years.
A typical IP strategy will likely involve several forms of IP protection. A patent counsel who understands your technology and business can assist with developing an IP strategy that is aligned with your business goals and budget.
How can NuBinary and Bereskin & Parr help?
Our fractional CTO services can help define your company’s IP strategy, from aligning it to your business strategy and development within the industry to allocating the right resources to achieve an effective and investable IP plan. We also assist in identifying new IP and improve on the strength of it, and as we lead on tech development overall process and the evolution of the proprietary aspects of your core technology. With our close partnership with Bereskin and Parr, we will bring together relevant technology, business inputs, and legal perspectives with an understanding of the competitive landscape and market environment you operate in.
Joanna Ma Bio –
Joanna Ma is a technology lawyer at Bereskin & Parr LLP. She offers her clients strategic advice on developing and growing intellectual property (IP) portfolios that are aligned with their business opportunities and goals. Joanna also assists her clients with commercializing and monetizing these IP rights, and with developing a balanced approach to the enforcement of their IP rights. Joanna has an electrical engineering background and specializes in patenting software-driven technologies and associated systems (including artificial intelligence, audio systems, autonomous vehicles, cybersecurity, medical devices and imaging systems, neural networks, telecommunication systems, and robotics). She is experienced in drafting and prosecuting patent applications in these technologies and closely follows the various Patent Offices’ guidance and trends on patenting software-driven innovations to increase prosecution efficiency. Joanna has also written on various aspects of patenting software-driven technologies, including co-authoring Canada’s Chapter in Intellectual Property in Electronics and Software: A Global Guide to Rights and Their Applications, Second Edition.
Bereskin & Parr LLP is a leading Canadian full-service intellectual property law firm serving clients across all industries around the world. Founded in 1965, the firm has grown to be one of the largest IP firms in Canada, with offices located in major economic and technology centers. Bereskin & Parr is made up of more than 80 lawyers and patent and trademark agents, many of whom are recognized as leading practitioners in their specialized fields. The firm has established a depth of legal talent and systems to service clients in every aspect of patent, trademark, and copyright law and IP litigation. Bereskin & Parr and its award-winning professionals are consistently ranked as the benchmark for IP law in Canada.
Talk to one of our CTOs today to discuss your company’s IP strategy.