Michael D. Moberly, Founder – Principal, kpstrat and ‘Business Intangible Asset Blog’

The intent – purpose of this paper is to message the importance to-for developers – holders (of innovation, inventions, etc., who aspire issuance of intellectual property (IP) by the US Patent-Trademark Office (USPTO), to…

• describe – scrutinize – discuss their innovation, in detail, ala, the various enabling – facilitating components of knowhow, process-procedure, collaborations, origins, etc., and verifiable references to each.
• increase the probability a desired outcome will emerge, i.e., the issuance of IP with few, if any challenges, modifications, or delays.

When addressing business leaders, management teams, boards, and inventors-innovators about pursuing application – issuance of IP, parties are encouraged to recognize their aspirations are often ‘realitied’ by demands – requisites to (a.) being favorably considered for, and (b.) actually, receiving an initial round of (external) investment in-to-for their project…

• particularly projects judged to be ‘promising’ wherein prospective investors would seek-negotiate-demand, (a.) relatively rapid ROI’s (return on investment) and (b.) exit strategies in return for a ‘first round’ investment, ala 2-3 years.

Inventors – innovators who pursue the issuance of IP and are also, vying for investors – investments to support – progressively sustain their work, are obliged to recognize the entirety of most R&D projects-initiatives, etc., emerge from and are collectively dependent-reliant on…

• the propriety and sustainability of various forms-contexts-applications of the right intellectual, structural, relationship capital, ala intangible assets,
• introduced in the right way, at the right time, at the right cost.
• which can predictably – collaboratively converge to deliver a predicted (lucrative – competitive, sustainable) outcomes, which are
• deemed novel, valuable, and are-capable-of producing scalable competitive advantages and sustainable streams of revenue, ala ROI.

For these reasons, developers – holders of the ‘foundational – mission essential’ intangible assets related to their R&D and the aspired issuance of ‘intellectual property’, remain ‘products and property of one’s mind’.

These are essential preludes to making application for IP, which will require‘unraveling and inventorying’ and have a bearing on any outcome. Necessarily, this translates as each party who contributes to originating-developing-testing-executing an innovation, is obliged to engage in detailed (in-the-weeds) discussions to discern and assess the various…

• contributory roles, components, and aspects related to the innovation – invention – discovery, this includes,
• methods, processes, procedures, and experiences relied, used, and deemed unique and/or novel, which
• individually-collectively-collaboratively enabled – facilitated (led to) developing, testing, and applying the innovation and its potential commercialization.

Respectfully, such internal discussions are obliged to commence in advance of engaging legal (IP) counsel. Discussions designed to ‘iron out’ the various and essential nuances to an innovation, i.e., who-how-why-when-where the innovation will render future discussions with IP counsel more efficient insofar counsels’ contractual agreement to develop the application for IP issuance, forward same to USPTO, and respond affirmatively to any questions and/or challenges which may arise.

Too, it is exceedingly difficult and challenging for an individual or a group of ‘like-minds’ to independently conduct proprietary research and develop an innovative product ‘in a basement or university research lab’ without some aspect reaching open source, irrespective of confidentiality and/or non-disclosure agreements being in place.

A driving rationale for sequentially executing the above system described above, is that each IP counselor whom I am familiar, enter an initial (first-time) meeting with a prospective (IP) client, holding scripted versions of conventional templates of inquiry and assessment (of the innovation – invention they are being introduced).  IP counselors essentially ‘paint a portrait’ of the practicality and potentiality of the innovation – R&D ‘work product’ relative to drafting (in excruciating detail) the application for IP and its submission to the USPTO. 

In most instances, the objective for the innovators, when they engage IP legal counsel, a favorable outcome of the aforementioned – discussions, will be fewer ‘hiccups’, costly – reputational delays, or challenges to IP issuance…anyone of which can stifle – hamper – set back (project – R&D) momentum and potentially inhibit needed investment going forward.

Experientially, dismissing – disregarding any of the above, may materialize as entrées to personal-professional frustrations, embarrassments, challenges, and expensive – protracted debates regarding the who-when-how-where-what-why related to any innovation’s outcome, more so, when contributors recognize there may be lucrative outcomes.

Intellectual property is explicitly addressed in Article I, Section 8, of the U.S. Constitution which all innovators are obliged to read.  Article I, Section 8, draws attention to the significance which ‘the Constitutions’ framers attached conceptually to intellectual property.

For business leaders – entrepreneurs, and innovators, etc., who put forth the time, effort, and expense to ‘pursue the possible issuance of IP’…it’s important to recognize – differentiate – consider each type of IP relative to a particular business purpose or objective, e.g.,

• how-ways either can-may ‘fit’ and/or serve their personal-professional aspirations, interests, circumstances, etc.
• business – product – service branding – marketing objectives, revenue generation needs,
• etc., and
• ‘the innovations’ receptivity – capability to being converted – scaled to-for business valuation, competitive advantage, generating revenue, or perhaps opportunities for ‘licensing’.

There are four distinct types of intellectual property which innovators may seek application to the U.S. Patent and Trademark Office (USPTO), i.e., (1.) patent, (2.) trademark, (3.) copyright, and (4.) trade secret.

• Designating specific business information as a ‘trade secret’ carries specific requisites and obligations to-for the holder.
• Enforcement of ‘trade secrecy’ is largely ex post facto, if-when challenges arise.
• Holders of ‘trade secrets’ must demonstrate a ‘trade secrets’ (a.) on-going relevance to (b.) specific business operations, products, services, brands, or processes, (c.) the information deemed ‘trade secret’ must bd commercially valuable and/or conveying a competitive advantage based on its ‘trade secrecy’, and (d.) the information held as a trade secret is subject to reasonable and consistent steps to sustain its ‘trade secrecy’.

Those fortunate to hold – celebrate an issued patent, are obliged to consider, standing alone, it seldom translates readily as a sure, easy, or rapid path to riches and notoriety.  Hence, aspirers to – holders of IP, are encouraged to frame ‘the IP process’ akin to developing a business plan…

• in which there is considerable input of thought, research, strategizing, listening, and receptivity to an array of possible options for a range of possible outcomes.

 Otherwise, the issuance of a patent, for example, may become interesting conversation at a dinner party, ala ‘I hold a patent’, but little else accrues to the holder and that a very small percentage of inventions – innovations, ala applications for IP are favorably assessed and issued.  Hooray for those who succeed.

Lastly, those who aspire, seek, and may be issued IP, are (fiduciarily) obliged to…

1. avoid presuming (a.) IP issuance constitutes ‘stand-alone protection of one’s innovation’ or (b.) the issuance of IP will broadly deter others from seeking to misappropriate same.
2. practice relevant safeguards and risk mitigation (consistently) for the duration of its value – materiality (life) cycle.
3. recognize holding issued IP, serves primarily as ‘standing’ to bring legal action against those who are alleged to have misappropriated – stolen same (ex post facto).
4. acknowledge, the issuance of IP variously serves as a ‘general, not a specific deterrent’ to-for economic – competitive advantage – technological adversaries (globally) who-which are inclined, programmed, and possess the capability to misappropriate same @ will – @ keystroke speed.