Developing and implementing an effective intellectual property strategy is much more complex than simply filing the occasional patent or trademark application. Instead, development of an effective IP strategy requires that a company identify and obtain the most appropriate types of protection for the various pieces of its technology and business to create a portfolio of IP rights with multiple distinct parts integrated into a whole to serve the commercial objectives of that business. An effective IP strategy must also take into consideration the types and strength of IP rights held by the company, its competitors, and/or a potential acquisition target. The team at Panitch Schwarze provides its clients with the counseling, opinions, and legal advice necessary to help those clients develop and implement IP strategies to help move their businesses forward and obtain the most value from their innovations and business practices. Some examples of the types of counseling and opinions that we routinely provide our clients are discussed below.
Helping clients build a strong, multi-layered IP fence The legal areas of patents, trade secrets, trademarks, and copyrights can be used in combination and in a complementary fashion to provide a range of types, scope, and duration of protections to promote the operation of and monetary return from a commercial venture. By combining multiple types of protection that cover a single product or process, a company can gain a competitive advantage in the marketplace, for example by increasing the value of its licensing programs or by making it increasingly difficult for competitors to encroach on the market. For instance, by protecting a product with a trademark or trade secret in addition to a patent, a company can create a licensing scheme that does not come to end when the patent coverage expires. Similarly, by protecting a product with multiple overlapping patents, a company can make it increasingly difficult for competitors to design around their patent coverage. The team at Panitch Schwarze routinely counsels clients on which types of protection should be used to protect the various aspects of a client’s business and how those IP rights can be used in combination to “build a stronger fence.”
Effective use of trade secret protection Innovations are often protected using patent rights (both domestic and international), and for many innovations a patent is truly the most appropriate type of protection. However, some innovations can be more effectively protected using trade secret protection. There are numerous factors that must be considered when making that patent vs. trade secret decision, including the useful life of the innovation, whether it is a method or apparatus, whether it will be used internally or externally to the company, the number of people who will have access to the innovation, etc. The team at Panitch Schwarze is well versed in helping clients examine those factors and work through the various considerations to help them arrive at the most appropriate decision for how a particular innovation should be protected. And, when the decision is made to protect an innovation using a trade secret, we can help clients design and implement an effective trade secret program by assisting with the preparation and implementation of non-disclosure agreements, employee agreements, training programs, etc.
Opinions and due diligence No business exists in a vacuum, but rather it exists within an ecosystem defined by the actions of its competitors and requirements of its customers, the government, and society at large. As such, a business decision is best made based on a prediction of how that decision will affect these actors in the ecosystem and how those actors will respond. To provide this foreknowledge, the team at Panitch Schwarze assists its clients by performing the appropriate IP analyses and preparing relevant legal opinions to give clients the necessary foresight before making various business decisions. For example, we prepare freedom-to-operate opinions for which we review the state of the art and counsel on the risk that a particular course of action may result in a suit for infringement of a competitor’s patent. We prepare patentability opinions that help predict the relative strength of a patent that can be obtained to protect a given technology. When a business plans to acquire or sell IP, such as a patent portfolio, we will conduct a due diligence review of that portfolio to determine its value and strength. Such a due diligence review is critical for determining the advisability and acceptable price range for making an acquisition of a portfolio or a target price range for selling a portfolio. With our ability to deeply understand your business objectives combined with our thorough knowledge of the law and relevant technology, we at Panitch Schwarze can provide the types of well-reasoned opinions and due diligence analyses that are critical to a business’s determination of the best course of action in a given situation.