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Advantage "IP" Profit from Your Great IdeasLearn from True Stories of Success & Failure
By Jean D. Sifleet
Infinity PublishingCopyright © 2006 Jean D. Sifleet
All right reserved.
Chapter OneAdvantage "IP" Part 1
IP Basics - What Business People Need to Know
Intellectual property ("IP") is the core of competitive advantage and the springboard for profits.
What you do, how you do it, and the works that you create, are your intellectual property and competitive advantage. Protecting your IP is critically important to competitive advantage and profits. In Advantage IP, we learn from both the successes and the mistakes, from those who won and those who lost.
For example, we can learn a great deal from the creators of Liquid Paper and the Snugli. These products sprang from an inspired new solution to an old problem. We can learn from Legal Seafoods and Jordan's Furniture, how an innovative approach distinguishes a traditional business (restaurant, furniture). We can learn from the successes, such as Johnson & Johnson's handling of an employee's at-home invention of band-aids to help his wife with her kitchen wounds. We will learn how hugely profitable businesses sprang from crazy concepts like Teenage Mutant Ninja Turtles and SpongeBob SquarePants.
In addition to true stories of success and failure, this book provides practical "how to" dos and don'ts for protecting and leveraging your creative ideas. Whether you are tinkering in your garage or working in a large corporation, this book provides you with the tools to recognize and evaluate an invention, and guidance about how to proceed.
I. RECOGNIZING IP IN BUSINESS SITUATIONS
IP issues pop up in many business situations, and how you respond can profitably protect, or painfully diminish your rights. The following mini-scenarios highlight common examples and provide some tips for handling IP situations effectively.
1. At the beginning of a job or project, you are asked to sign a confidentiality, non-compete, and assignment of rights agreement.
Tip: Read the document carefully. It's reasonable for a company to want to protect their confidential information so that you won't leave and take it to a competitor. Be careful of broadly written language that can severely limit your near-term and future business opportunities. Your "know how" and the methods and tools that you have developed over the years are your "IP" and should not be restricted by a client engagement. Perhaps you can narrow the scope of the agreement to a specific project, technology or geographic area. Or, ask that the agreement be restructured as a "non-solicitation" agreement. This means that you would not solicit customers/employees for a reasonable period of time following termination of the project.
2. You've always done business on a handshake, but now you want to ask a contractor or employee to sign a confidentiality and non-compete agreement.
Tip: It's difficult to ask someone to sign an agreement after they have been on the job/project for a while, so proceed carefully or you risk damaging your relationship. You may want to position this as a change in office practice to be more protective of company confidential information. You will also need to provide "additional consideration" for the agreement to be legally binding. This means giving the person something more than the compensation (usually extra money) that s/he would receive in the normal course of your business relationship.
3. You are meeting with a key customer and want to discuss "new" product plans.
Tip: If it is possible, without offending the customer, ask the meeting attendees to sign non-disclosure agreements ("NDAs").
4. You are going to a trade show and want to show a "prototype" of a new product.
Tip: Consider whether this disclosure will start the "patent time clock." If a provisional patent application is filed, the prototype can be marked "patent pending" and the date of patent filing is established. You still have to complete the patent within one year.
5. You are invited to give a talk to a business meeting. You prepare a slide set that you think could later be turned into a course or a book.
Tip: It's a good business practice to put a copyright notice on the materials that you prepare. This puts people on notice that you claim copyright protection and should discourage blatant copying (e.g., (c) 2004 Jean D. Sifleet, Esq. All Rights Reserved). Registering the copyright for the work provides additional protection (copyright.gov).
6. You come up with a distinctive name and tagline for a product/service offering.
Tip: Search the Web to see if the name is being used. Check the Network Solutions Web site (networksolutions.com) for Internet domain names that may be similar. Search the registered Trademarks database (uspto.gov). If the name does not appear to be taken, consider registering the domain name and filing for a trade/service mark.
7. You hire a contractor to pull together a training program for your company.
Tip: To be sure that you own the content that you are paying to create, you should prepare a contract that says the contractor's work is "work for hire." It's reasonable for contractors to reserve the rights to reuse components of their work as long as they protect the confidentiality of your business information.
8. You and a group of friends have come up with a clever new game. People really like the character you created.
Tip: If your character turns out to be the next Harry Potter, Mickey Mouse, Ninja Turtle - there will be many who will want a piece of the action. It's important to document who created the work and determine what legal protections are appropriate. Definitive agreements are critical to protect rights in creative works.
In conclusion, protecting IP is not a one-time activity. Protecting your intellectual property is a key business skill. It requires being alert for situations in which IP may be created or lost and then taking advantage of legal protections.
II. PRACTICAL WAYS TO PROTECT AGAINST COPY CATS
Imitation is supposed to be flattering.
But, once you've invested time and money to develop a name, brand image, business methods or other 'intellectual property,' you don't want someone else copying and 'cashing in' on your hard work.
Take steps to protect against Copy Cats, by:
Using smart business practices, and
Taking advantage of legal protections.
Secrecy is the most basic way to protect your work from being copied.
Trade Secrets are legally recognized as long as you take careful steps to keep the secret. Secrecy works in some circumstances, such as the formula for Coca-Cola.
For many businesses, secrecy is not a workable option.
So, it's a good idea to adopt smart business practices such as:
Mark 'Company Confidential' on important documents (for example: mark product specs, customer lists, manuals "Company Confidential");
Have employees sign confidentiality and non-compete agreements;
Require suppliers or vendors to sign confidentiality agreements; and
Require independent contractors to sign agreements that say "work for hire" and assign rights in work product.
These business practices are inexpensive and can prevent many problems.
III. LEGAL PROTECTIONS
Also consider other protections provided by law: Patent, Trademark, Trade Dress and Copyright.
The government grants exclusive rights for 20 years in exchange for complete disclosure or description of the invention. This means that you can stop others from making, using or selling products or technology that use the invention. Or, you can 'license' (grant rights to use) the patent for royalties.
The scope of what is patentable has expanded greatly in recent years and includes business methods and processes as well as more traditional 'inventions.'
If your idea is 'novel and unobvious,' it could be patentable.
Jerry Lemelson showed his (patent pending) concept of a kid's mask to be printed on the back of cereal boxes to the big cereal companies, but they didn't bite. When Kellogg used the idea four years later, Lemelson sued-and lost (back in 1958, patent cases were often heard by unsympathetic and undereducated local judges). Lemelson learned his lesson the hard way-and spent lots of time in court. Hopefully, the outcome would be different today
Excerpted from Advantage "IP" Profit from Your Great Ideas by Jean D. Sifleet Copyright © 2006 by Jean D. Sifleet. Excerpted by permission.
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