When business people plan a save harbor of intellectual property (IP) they consider a wide spectrum of legal tools to maximize the protection of IP assets. The main point is that IP protection strategy should be kept from the beginning of creation, during its development until a design is complete. The strategy of securing design ownership starts with recognizing a design as a potential asset, and continues to carefully plan its protection throughout the lifetime of a design optimizing IP protection and reducing infringement risks. It may include these specific goals.

Goal 1: “Generate design research. It should be done prior to the design challenge early in the long- term planning phase and in the concept generation stage of new product development. This general research includes a state of-the-art search of patent literature (patents and published patent applications), which is analyzed by the IP counsel and shared with the development team to spark design innovation. Just as the iPod design team would have looked to Sony’s 1979 Walkman and related patents for inspiration, design development teams benefit from studying past design efforts.” The good example of such research could be list of the following questions:

What’s the core intellectual idea or invention?
How easily can it be duplicated?
How did the idea/invention come about? Was the inventor working at another company? Was she a university researcher?
How might you protect against duplication via a patent, trademark, copyright, or some other vehicle?
How visible will the invention be within your product or service?

Goal 2: “Avoid designs owned by others. Identify IP risks associated with the proposed design concepts-ideally, in the feasibility stage of new product development-so that risky design concepts can be screened out early. Once a design concept is selected for further development, a targeted search looks for patents relevant to that design concept. As needed, the IP counsel facilitates a “design around” to place the final design outside the scope of IP rights of others.”

Goal 3: “Secure IP rights. IP counsel leads the development team’s efforts to protect selected design concepts in the feasibility stage of new product development. IP protection is sought not only for the preferred design concept but also for alternative concepts that may later be preferred by the company or the company’s competitors. Before product launch, the IP counsel ensures that IP protections are in place, including foreign protection when a product will be sold or licensed overseas. And upon product launch, the IP counsel establishes procedures for monitoring the activities of competitors to police IP rights.”

Goal 4: “Enforce and expand design assets. Even after design protection has been secured, steps should be taken in the active lifecycle phase to enforce IP rights. New competitive advantages can also be sought during the active lifecycle phase in connection with design improvements.”

Goal 5: “Harvest design assets. In the decline or exit phase in which a design reaches its sunset, the IP counsel can help extract value from IP assets. Instead of allowing them to go unused, IP assets can be harvested at this final phase by licensing or selling IP assets to other companies or by using those assets as leverage to settle disputes with other companies.”

The best way to protect IP assets is to follow the simple rule of “Be aware!” In other words, it is the responsibility of business people dealing with their intellectual property to manage IP assets protection by the implementation of the effective corporate intellectual property strategy. Undoubtedly, afore mentioned 5 steps of this strategy will help to save a lot of money.

Stanley Pogach has an idea. He is a seasoned engineer. He knows something that other business people don’t. Oh, he is so close to make his dream come true. He found somebody who will help him, somebody from the mysterious invention promotion firm. They promised him two services in a two-step process: one involves a research report or market evaluation of the idea and other involves patenting or marketing and licensing services. The cost of those “services” was $3,000.

Next offer was the invention assistance or marketing services that indeed isn’t provided. The advanced fee was $5,000. He was told that his idea has a market potential, where usually most ideas don’t make any money. But since the company claimed a great record licensing its clients’ inventions Stanley believed he is in the right hands. It’s okay that in another hand, the company doesn’t disclose its success rate, the names and telephone numbers of their recent clients, as well as rejection rate of unacceptable inventions. His dream is going to be a reality very soon!

All inventors want to promote their ideas and commercially market them. The main goal is to sell the idea to manufacturer and to get royalties. Some of the inventors use services of invention promotion firms which promise to evaluate, develop patent and get marketplace for the invention. There are many well known reputable companies which provide valuable service. However, there is certain concern in the industry. Since inventors are very enthusiastic for a new product or service unscrupulous promoters take advantage of them. Indeed such services can be costly and most likely wouldn’t provide wishful result. They try to make false claims of market potential of the invention and urge inventors to patent their ideas or invention making expenses.

What the strategy of preventing a fraud? It is essential to use common sense, when an inventor makes usual purchases and contracts for the services of an invention promotion firm. Avoiding the deal with unscrupulous invention promotion firms will protect intellectual property and save money for its owner.

The recent case Federal Trade Commission (FTC) v. Davison Associates, Inc. demonstrates the thoughtful policy to avoid services of questionable invention promotion firms. The FTC brought an action against promoters of an invention marketing service that had engaged in deceptive practices in connection with their invention promotion business in violation of section 5 of the Federal Trade Commission Act. The plaintiff sought a permanent injunction and ancillary equitable relief.

Since 1989, the defendants had been in the business of selling services to amateur inventors who have no money or knowledge of marketing their inventions. The defendants advertised their services in magazines and on the Internet. After clients contacted the defendants, the defendants sent clients an initial form of general description of client’s invention. The defendants’ services have always been sold under the Pre-Complaint and consisted of a Research Agreement. Under that agreement, defendants would “prepare” a portfolio that included a patent search, an engineer’s review, a conceptual drawing, industry related data, and a search of competing products and could include a Virtual Reality Presentation, which raised the cost significantly. The final cost of this service was in the range of $800-$3,500. The Pre-Complaint phase also included a Product Representation Agreement under which defendants promised to locate a company interested in licensing the client’s idea which had a two years term. Most of the clients use to purchase the agreement, which cost about $12,000 under defendant’s false support that the client’s idea should be commercialized.

The court held and accordingly ordered that: (1) promoters made material misrepresentations to consumers in violation of the Federal Trade Commission Act’s deceptive practices provision; (2) promoters’ ongoing violations made permanent injunctive relief appropriate; and (3) ancillary equitable relief in the form of consumer redress in the amount of $26 million was appropriate.