Overall IP strategy

Strategic publication should not be used on its own, but rather as part of a company's overall Intellectual Property strategy (IP strategy). Although for certain applications it may be appropriate to rely exclusively on strategic publications (e.g. in the case of open source projects), the most productive strategy for a company is usually a combination of making applications for strategically important property rights, making strategic publications of less significant ideas, improvements and further developments, and, in some cases, in addition keeping secret certain process steps and process-related knowledge.

In this context there are three key objectives which are pursued by way of the various forms of exploitation of an invention:

  • Protection of your own freedom to operate in respect of products and processes,
  • Assertion of exclusive rights against competitors,
  • Use of a head start in terms of knowledge over competitors.

The relative importance of these three objectives differs depending on the nature of the relevant invention and the orientation of the company. If the three objectives are assigned to options for the exploitation of an invention, then, on a simplified view, the following relationships are arrived at:

  • Strategic publications primarily protect freedom to operate.
  • Exclusive rights are associated with the granting of property rights.
  • A head start in terms of knowledge can be protected by successfully maintaining secrecy.

In this regard it should be noted that there are overlaps between the individual types of exploitation of an invention as far as the effect is concerned. For example, a patent not only provides exclusive rights, but also a possible 18-month head start in terms of knowledge during the period for which the application documents are kept secret by the Patent Office, and, after the application has been published, it also offers complete freedom to operate since at this point in time the application documents become publicly available prior art.

Five steps for an up-to-date IP strategy

  1. Establish an evaluation committee which evaluates every invention that is made in the company. Ensure that members of different specialist departments (e.g. Legal, Development, Marketing and Finance) come together so that the inventions can be evaluated in an all-encompassing manner.
  2. Identify the key objectives and the orientation of your company and your IP policy. Establish parameters which militate in favour of and against the patenting, keeping secret and strategic publication of certain types of inventions.
  3. Introduce a reward system which provides your employees with incentives to make inventions. In doing so, bear in mind the legal provisions of the German Employee Inventor Act (Arbeitnehmererfindergesetz) and also allow yourself the opportunity to make strategic publications. Train your employees so that they are able to have an accurate appreciation of the potential value of ideas and inventions.
  4. Promote awareness regarding secret data and internal knowledge. Create a work culture of personal responsibility so as to protect your company's unpublished intellectual property.
  5. Always use the most expedient form of exploitation. For each individual invention, use the form of exploitation of an invention which appears most conducive to the achievement of the company's objectives.