Founders’ Friday: What’s Your Big Idea?

In addition to spending time creating business plans, marketing plans, and succession plans, founders should make sure that they are developing a sound plan for handling their company’s intellectual property (aka your big idea).  The reality is that every startup began with an idea.  Existing businesses typically come up with new ideas as well.  Regardless of the stage of your business, when an idea strikes, you, as a founder, must ask: (1) Does my idea qualify for any intellectual property protection; and (2) If I use my idea, could I be infringing someone else’s idea/business?

In order to determine whether an idea qualifies for any intellectual property protection, founders must first understand which type of intellectual property is necessary since different intellectual property options offer different forms of protection.  The main areas of intellectual property to consider are as follows:

• Patent: Protects an invention based on the idea, such as machines, industrial processes, and chemical compositions.
• Copyright: Protects original works of authorship fixed in a tangible form, such as novels, movies, songs, and computer software.
• Trademark: Protects a word, phrase, and/or logo that identifies and distinguishes the source of the goods or services of one party from those of others.
• Trade Secret: Protects confidential information that has economic value.

Founders are often faced with having to decide what types of intellectual property protection is best or most appropriate for their company.  A common dilemma is whether or not to pursue patent protection for an idea or to maintain it as a trade secret.  Each offers distinct benefits and risks, so the founder will need to make an informed decision based on the business goals/objectives of the company.  It is always best to obtain the advice of an intellectual property attorney in order to truly make an informed decision.

Once a founder has determined the type of intellectual property protection that he/she is interested in pursuing, the next step involves working with an intellectual property attorney to determine the likelihood of achieving such protection and the relevant processes and costs involved.  As an example, conducting thorough patentability searches are vital for determining whether you are likely to obtain a patent for your invention.  In other words, the patentability search helps determine whether it makes sense to move forward with the cost and time involved with preparing and filing a patent application.  Similar types of searches may be conducted when evaluating the likelihood of achieving trademark or copyright protection.

After addressing the likelihood of achieving intellectual property protection, the next issue involves determining whether or not the use of an idea could be infringing someone else’s intellectual property.  The threat of infringing someone else’s intellectual property is perhaps the largest potential liability looming for founder.  Sticking to the patent realm, a patentability search (as described above) will not help founders determine whether they can move forward without fear of being sued for infringement.  A patent clearance search or freedom to operate opinion would need to be conducted to determine whether a legitimate claim of patent infringement can be made.  Similar types of searches and opinions are relevant when evaluating potential liability for trademark or copyright infringement.

Assuming that there is a likelihood of achieving the desired intellectual property protection without a true risk of infringing on someone else’s intellectual property rights, developing a strategy for registering a founder’s intellectual property becomes essential.  Founders should work with an experienced intellectual property attorney to determine what type of applications need to be filed and the countries/jurisdiction in which these applications need to be filed.  As a result, founders can hopefully obtain intellectual property registrations that provide additional value to their businesses.

Founders’ Friday is a series published by attorney Brian A. Hall of Traverse Legal, PLC d/b/a Hall Law on Fridays dedicated to legal considerations facing founders and start-ups. This week’s post contributed by patent attorney Tony Klemptner.