Spring 2015 issue of Horizons

The following are some of the key IP considerations for operating in a global economy.

IP Protections One of the most important parts of your IP strategy is to ensure that you have the proper protections in place to turn intellectual assets into intellectual property, and to maximize the value of that intellectual property. Most IP protections (patents and trademarks, for example) are territorial. That means they only apply in the countries in which they are filed and granted. For example, a patent granted by the U.S. Patent and Trademark office provides protections and rights only in the United States. It is critical to consider all markets where you may want to compete and consider the implications of those plans when setting your IP strategy. If your technology is critical to successfully competing, then you may need to seek out IP protections in each of the markets in which you are planning on commercializing. This will require knowledge of the application requirements. This includes an understanding of differences in disclosure requirements and the impacts of technology disclosure on patent eligibility. You will also need to consider the costs involved in obtaining and preserving the protections (and how they may impact returns on investment). Additionally, you will need to explore the rights conferred by the international protections. It is also important to know how those rights impact commercialization efforts and the creation and maintenance of competitive advantages.

corporations are becoming true multi- national corporations.

These trends offer increasing opportunities for IP transfer, both in-licensing (licensing a third-party’s technology) and out-licensing (licensing your technology to a third party). In-licensing technology can help establish freedom to operate in your target markets. Out-licensing non-core technologies can provide additional revenue streams. You may even consider out-licensing core technologies in markets you are not currently or planning on competing in as another way to boost revenue. Opportunities for value-added IP transfer strategies increase exponentially when a company expands its focus beyond domestic borders. Competitive Intelligence Analyzing U.S. Patent and Trademark Office data for competitive intelligence can provide insight into competitors’ R&D efforts, up and coming technologies (and declining technologies) and industry trends. The same holds true with international patent office data.

IP Transfer Foreign economies are increasingly becoming sources of innovation, technology and IP. Also, an increasing number of

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