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Prepping for Protection: First Steps to Developing an IP Strategy

May 16, 2017
Post by Caitlin M. Andersen

Whether you are an individual, a start-up company, or an existing business, two of the hardest (and most important) questions are: “Do I have intellectual property?” and “How do I protect it?”

First, having a qualified attorney will help make answering these questions significantly easier and they can help guide you through the development of an IP strategy that not only protects your current IP, but allows for growth of new IP and business ventures through licensing and sales.

At the outset and prior to meeting with your attorney, the singular most important thing you should do is document what you believe to be your IP and your business goals.Include items that answer who, what, when, where, why, and how:

  • Who invented or created the IP? Was anyone else present or involved?
  • What is the IP? Is it a new product, a new name, a new creative work? What are my business goals with the IP?
  • When did the development occur? (be specific on the date, if possible)
  • Where did the development happen?
  • Why did you decide to do this? Was there a need in the market?
  • How did you develop the IP?
  • Has the IP been publicly disclosed, such as a sale, a trade show display, or use in a commercial activity?

Armed with this information, you and your attorney can then analyze what you are free to practice and/or use, what has already been made public, and what is likely protectable. This step will include things like prior art or trademark searches, invalidity searches, and non-infringement analysis.

Once this analysis is complete, then you and your attorney can decide on the best strategy to provide protection, while achieving your business goals. This may include keeping an invention as a trade secret, filing for a patent, dedicating the invention to the public, seeking a license for a piece of IP, or doing nothing. There isn’t a one-size-fits-all approach to IP protection, so it important to consider all your options and how they will impact your business goals and financial well-being. Also, timing is critical, and delay can potentially result in loss of IP rights.  Therefore, thinking about these initial questions and having a meaningful discussion with your attorney about what is best for you and your goals, is a step in the right direction.

Caitlin Andersen is an Associate Attorney in the Chemical/Biotech Patent, Mechanical Patent and Trademark Practice Groups at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Caitlin directly via email at caitlin.andersen@ipmvs.com.


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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole.

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