IP Strategy: Strategic Management of Intellectual Property

Practically every company possesses Intellectual Property (IP), whether in the form of patents, trademarks, trade secrets, ideas in development, or business processes. Strategic management must decide how to handle this IP: how to develop, maintain, and manage it. To achieve this, it’s essential to understand the individual components of intellectual property in terms of function and impact, laying the foundation for the IP strategy, defining it, and implementing it within the company. This responsibility falls to strategic management.

The development of an IP strategy begins with an analysis and evaluation of the company's intellectual property. Key questions include:

  • What IP rights are available? These could be granted patents, trademarks, designs, or copyrights.
  • What aspects of the company's current and planned market performance are protected?
  • Where and for how long are these rights valid, and what do they cost?
  • What unprotected IP assets does the company have, such as patent applications, unregistered trademarks, trade secrets, processes, and ideas already in development?
  • What are your future plans for IP protection and defense, and how will you handle third-party IP?
  • Are the costs, benefits, and risks of IP protection acceptable, or do adjustments need to be made?
  • How does your competitor manage their visible intellectual property?
  • Do you systematically evaluate information about your competition from publications and the market?

Additionally, it's important to identify who is operationally responsible for different aspects of IP management within your organization. This could involve R&D, sales, marketing, or external partners like patent law firms and literature services. Are reporting processes, triggers, and controls effectively organized?

The answers to these questions and the establishment of necessary processes to remain up-to-date form an implemented IP strategy. The Hightech Zentrum Aargau offers company-specific workshops to help build such an IP strategy, always starting with a Non-Disclosure Agreement (NDA).

The Invention Patent

Patent protection: The strong safeguard for technical inventions

A granted patent is a temporary national or regional (e.g., European) exclusive right to use an invention. This temporary monopoly, granted by the state, lasts for up to 20 years from the date of international filing (up to 25 years for pharmaceutical products upon application) and is subject to several conditions. The invention must be entirely new and fully disclosed.

The requirement of absolute novelty means that all parties involved must have mutual non-disclosure agreements in place. Disclosure occurs through the publication of the patent specification 18 months after filing. Additionally, the invention must differ significantly from prior art and be commercially applicable.

A patent specification is a legal document with technical content, and due to its complexity, it’s strongly recommended to engage a licensed patent attorney as early as possible to draft and file the application. Within the first year, the patent application can be internationalized (PCT application), a process managed by the patent attorney, who also handles examination, granting, and monitoring deadlines. To obtain and maintain a patent, all required fees must be paid, and deadlines set by the patent office must be met.

A patent can be sold, inherited, or licensed (exclusively or non-exclusively). If fees are not paid, the patent or application may be abandoned. Patent owners can legally enforce their rights, but litigation carries inherent risks. Out-of-court settlements are possible at any stage. A patent can also be challenged: within the first nine months of granting, through a written, reasoned objection, and later through a nullity action in each country where it’s granted. As with enforcement, challenges involve litigation risks for both parties.

Global Patent Literature

The patent search: Exploring the world's largest technical literature collection

The global patent literature is the largest collection of technical literature and is freely accessible, as far as electronically available, via platforms like Espacenet or Patentscope. SMEs access this collection for various reasons, such as to understand the patent activities of their competitors or to explore free prior art—technology that is not claimed by valid patents. Conversely, they may want to identify where technology is blocked by valid patents. Another common interest is assessing Freedom to Operate (FtO), which refers to the absence of valid patents that could restrict one's activities within a specific geographic area. Companies may also want to ensure their invention is genuinely novel before applying for a patent.

The structure of patent specifications is standardized. They are classified according to their technical content using the International Patent Classification (IPC) system, which currently includes 70,000 units arranged in a five-level hierarchy. Each patent specification is assigned at least one class, enabling it to be found within the system.

The first page of a patent specification contains all the bibliographic data, including the responsible jurisdiction, a unique document number (which includes a letter and number indicating the document type, such as 'A' for application or 'B' for granted patent), as well as the filing date, applicant (owner), inventor, all associated numbers, title, and abstract. This data is searchable in the databases in any combination. If the document includes graphics or structural formulas, examples are typically found on the title page, along with any citations.

The specification usually starts with a description of the prior art, followed by the problem definition and the proposed solution, including examples. The most critical section is the claims, where each patent has at least one independent claim and often several dependent claims. This is followed by drawings, which are referenced and explained in the text.

For companies in Aargau, the Hightech Zentrum Aargau offers patent search services, including accompanied half-day searches at the Swiss Federal Institute of Intellectual Property (IPI).

The Trademark

Trademark Protection Safeguards the Identity of Products and Organizations

Trademarks serve as identifiers for products, services, companies, organizations, associations, and clubs. A trademark can be composed of words, numbers, graphic elements, or even a short melody, with any combination of these elements being possible. To register and protect a trademark, it must not be descriptive; for instance, using "Holzbau" (timber construction) as a wordmark for a timber construction company would not be permitted. Trademarks must not be misleading in terms of origin, nature, or quality and must not be contrary to law, public policy, or morality. Registered trademarks are denoted by the ® symbol, indicating "Registered."

Trademark registration is a national or regional property right. In Switzerland, trademarks are registered with the Swiss Federal Institute of Intellectual Property (IPI). When applying, the trademark's protection is defined for specific product and service categories, known as the Nice classes, administered by the World Intellectual Property Organization (WIPO), with 45 classes in total. After payment of the required fee, the application is reviewed and, if approved, registered. Trademark details and registration status are available on the Swissreg database, managed by the IPI.

The protection period for a registered trademark is ten years, with the option to renew in ten-year increments. For a trademark registered in Switzerland, the IPI can extend protection internationally. The EU offers the Union Trademark, allowing a single application to cover all member countries.

Trademarks are valuable assets and a critical component of an IP strategy. They can be sold, inherited, or licensed. It's advisable to engage a professional for the establishment, management, and defense of trademarks, such as attorneys specialized in trademark law or patent attorneys with expertise in this field.

Design

Design protection for new two- or three-dimensional designs

Two- and three-dimensional designs with a new form or appearance, not solely determined by their function, can be protected as a design by the Swiss Federal Institute of Intellectual Property for up to a maximum of 25 years (renewable 5 times for 5 years each). A design is considered new if it has not yet been made public, with a 12-month grace period available in certain cases, although this can be problematic. To qualify as new, a design must differ significantly from existing designs.

Third parties can challenge the novelty of a design in court at any time. A design registered for the first time in Switzerland can also be applied for international protection within the first 6 months. Registered designs are published in the Swissreg database.

As with all industrial property rights, consulting a specialist lawyer for design protection is strongly recommended.

Copyright

Copyright Protection for Creative Works

Unlike other forms of industrial property, copyright protection is established automatically upon the creation of a work, without any formal registration process. Copyright covers a wide range of works, including literary texts, images, music, acoustic works, sculptures, photographs, films, plans, maps, graphics, sketches, software programs, and architectural designs. However, certain items, such as mere ideas, legal texts, ordinances, recipes, and operating instructions, are excluded from copyright protection. A claimed copyright is typically indicated by the © symbol, along with the creator’s name and the year.

Using another person's work always requires the consent of the copyright owner or, if applicable, permission from a collecting society. In Switzerland, the term of copyright protection lasts 70 years after the creator's death (50 years for computer programs). For photographs without individual character, the protection period is 50 years from creation.

There is no official copyright registry in Switzerland. As with other aspects of intellectual property, consulting a specialist lawyer for copyright matters is advisable.

The non-disclosure contract

An NDA is mandatory for an invention patent.

We recommend that a nondisclosure agreement (NDA) always be established for collaborations between different legal entities or individuals to protect the parties' interests in their intellectual property. For example, if such a collaboration is expected to lead to a technical development that you intend to patent, an NDA is essential; without it, the invention may be considered disclosed and lose its patentability.

An NDA should include, at a minimum, the involved parties, the scope of the collaboration, and details on how confidential information will be managed, even after the partnership has ended. It should also define what constitutes confidential information, specify the duration of the confidentiality obligation (whether absolute or beyond the project's conclusion), and include the signatures of all parties. Additional elements such as the consequences of breaches and the place of jurisdiction can also be outlined in the agreement.

The Hightech Zentrum Aargau offers its customers a comprehensive NDA that covers all involved parties mutually for effective cooperation.

The trade secret

Confidentiality as a Means of Protecting Intellectual Property

Intellectual property can be protected by keeping it confidential. In many cases, there are no formal industrial property rights available. For instance, ideas in development, business models, or customer data cannot be protected through traditional IP rights. Additionally, a company might decide that enforcing potential IP rights is impractical or unfeasible, especially if proving infringement is difficult or if the resources for enforcement are lacking. In the case of rapidly evolving products, it may be worth questioning whether pursuing patent protection is worthwhile, as the patent process can take much longer than the product’s market lifecycle.

In such situations, maintaining secrecy can be an effective form of protection. Take, for example, the Coca-Cola recipe, which has been kept secret since the 19th century and continues to prevent imitation into the 21st century. It’s crucial for a company to clearly define and manage who has access to confidential information and how this knowledge is safeguarded. Internally, this involves enforcing confidentiality obligations for those with access to trade secrets, and externally, establishing nondisclosure agreements.

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