Wednesday, July 20, 2011

How To Toolbox

How to handle a big IP challenge

It is a given fact in any business based around a successful intellectual property — that business will eventually be hit with a legal challenge to its core IP. Whether it comes from a smaller competitor looking to make a name for itself, or a large industry giant looking to squelch competition before it gets too big, challenges to the validity of a company’s IP happen with amazing regularity.

Some of those challenges are clearly frivolous attempts to somehow seize onto the company’s success, but others raise serious concerns over things like the validity of patents, competitive practices and other issues that could have a major impact on the company’s future.

Lisa Adams, a partner in the intellectual property department and life sciences practice group at Nutter McClennen & Fish LLP, says that information is key to dealing with any big IP challenge. Adams should know: she specializes in medical and life sciences technologies, as well as materials technologies and has handled patent issues for companies ranging from startups to the Fortune 500. Below, Adams shares her top tips for dealing with particularly vexing IP problems.

How to handle a big IP challenge

• Assess the facts: What are they asserting? What does it mean? Which facts are true/false?

• Assess your risks: Given the facts that exist, what does that mean? For example, how could a patent infringement suit impact important assets and your business strategy?

• Determine a good resolution: How do you want it to end?

• Develop a strategy: Determine the best steps to take to reach your resolution.

Adams pointed out that the best way to handle particularly troubling IP challenges is to head them off at the pass — implement plans to keep them from cropping up in the first place.

“In the first instance, it is best to avoid surprises,” Adams said. “By understanding your business and the competitive environment, you can anticipate and plan for potential IP threats. If something unanticipated does occur, you first need to understand the threat by assessing the seriousness of the situation and any risk that it presents to your IP portfolio and business strategy.”

Alternatively – How to avoid surprises

• Know your business and the competitive environment: What is your market? What are your products? Who are your competitors?

• Understand the risks: Assess your IP portfolio and assess your competitors’ IP portfolios; which competitors have IP that they might assert against you? Where do you lack IP protection?

• Develop a plan: Have an IP strategy and monitor it periodically; have a plan for minimizing risks

John Calvert, an administrator with the U.S. Patent Office’s Inventor Assistance Program, agrees on the value of getting it right the first time, and has these tips:

•  Patents are expensive to obtain, so choose what to patent strategically in both U.S. and international markets.

•  Be sure to file a patent immediately if you plan to sell worldwide; once it is on the market, it can’t be patented outside of the U.S.