Why you need a more strategic approach to IP protection.

There is little argument that intellectual property protection creates value for entities especially as the business grows. Over the years, I have formed the belief that tactics to protect intellectual property such as prosecuting trademarks, copyright, patents, trade secret, and drafting non-compete agreements, without a well thought-out strategy, potentially leads to missed opportunity and inadequate or misplaced protection.

An effective intellectual property approach involves more than prosecution/documentation Many times, clients come to EmergeCounsel with a specific business and/ or intellectual property need. For example, in this hypothetical:

  • Balloon Boy had been selling balloons near the NY Empire State Building and seeks help in securing a trademark in the US and subsequently internationally as it opens kiosks near London Bridge, the Acropolis, and the Taj Mahal. EmergeCounsel uses its flat fee systems and processes to conduct a search for Balloon Boy and prepare the trademark applications. It either uses Madrid or lines up counsel in the various countries to prosecute.

It is fairly easy for any experienced intellectual property counsel to execute in light of the Madrid Protocol, the WIPO Patent Cooperation Treaty, the Berne Convention, cross-border dispute resolution arbitrationservices through e.g. the International Center for Dispute Resolution, and broadly available legal data bases containing cross-border contracts.

Strategy really matters

But is doing the above (which is exactly what the client wanted) without digging deeper really cost or otherwise effective? My experience suggests probably not.Each business has a unique raison d’exister which, assuming the business is positioned towards success, involves some sort of competitive advantage. Maybe it is a unique product or service offering, a unique user experience, ties the business to a famous founder, a business-togovernment play with vast government connections, a business-to-business play with an amazing supply channel, a business-to-consumer play focused on a need that has to be solved, etc. Maybe it is a solopreneur, a team of five or five thousand. It may be bootstrapped, venture-backed, or a subsidiary of a larger entity. Obviously, with this combination of relevant factors, each of those businesses is going to have its own specific needs when it comes to protecting its intellectual property and business assets.

  • I set up a Zoom call with Balloon Boy and start asking questions as I build a relationship. I find out that many of the designs for the balloons are unique and potentially edgy works of art which do not have copyright registration. The reason for the organisation reaching out relates to knockoffs that may be emulating from the PRC where it buys its balloons through a customised supplier whom it has never met and does not have a formal written agreement with. The balloon designs seem fine for the US market etc. but it has gotten some negative press in India, especially the one imposing Bollywood star Priaynka Chopra’s image in a compromising position. The company contacted me because it has been approached by a balloon business roll-up company and just sent them financials.
  • Armed with this additional information, almost as sitting in a law school exam, I can quickly determine Balloon Boy is a growing entity who needs its legal strategy to catch up to its business strategy. It has IP exposure that is more copyright related. It may be violating the Indian Indecent Representation of Women Act of 1986. It has a potential investor who presumably in the near future is going to do some due diligence before investing, and will not be impressed.
  • create a strategic plan which takes into consideration the play, the jurisdictions, the copyright, the infringement, the supplier agreements and the brand protection. I line up and communicate with foreign counsel, draft and maintain the budget, and execute and counsel tracking through the plan in short order. My team maintains periodic connections with foreign counsel at set timeframes and maintains the master file, as well as bills, and makes sure everyone is paid and the client receives timely communication.

Strategy as a way of thinking

It is generally going to be less expensive to just file e.g. a trademark application than to think out a strategy. Strategic filings involve counsel taking into consideration information it needs to collect from the client, cross-border counsel and the market. However, this strategic approach doesn’t need to add significant time or cost. Generally, EmergeCounsel clients are small and medium-sized growth companies who have progressed because they have strategically focused on planning their businesses. They are generally able to summarise their business, value propositions, challenges, and goals in very short order if they feel like I am not wasting their time. They are generally receptive to the focused, strategic advice, even if it is not what they originally asked for. And finally, the outcome is far better for them when I take the time and effort to understand them, craft a strategy and execute against it.