We often find that businesses are not aware of the IP assets they have or, if they have IP assets, have not taken a portfolio approach to managing them. Does your business have a process for identifying inventions that are created in the company? If so, and you have protected some of your intellectual property, do you find yourself receiving letters from your lawyers, one by one, asking for decisions on whether to file or maintain a patent or trademark? When making decisions on what to file or what to maintain, are those decisions tied to some strategic business plan?

It is intellectual property that provides an owner rights which grant a noteworthy advantage to a holder of those rights. Companies that appropriately manage intellectual property rights create improved opportunities to cultivate, protect, and exploit their intellectual property as valued assets. Developing and maintaining intellectual property, as a management strategy, has proven to be an effective tool for any company, and having such a strategy may be essential for a business to gain and maintain a competitive advantage, especially in today’s economy.

Maintaining intellectual property first requires identification of intellectual property the business already possesses. An innovation should be dissected, so that all types of IP protections available under the law can be considered. While this classification step is crucial, businesses often fail to fully perform it. Intellectual property rights are classified into various categories, each protectable by different legal instruments such as patent, copyright, trademark, and trade secret.

A United States patent provides protection for novel and useful processes, machines, manufacture, or compositions of matter. An issued patent provides the owner the right to exclude others from making, using, selling, and/or importing a product that is covered by a patent. It is important to recognize that this protection is one of exclusion, granting a company’s innovations value and validity. As society has developed and progressed, the definition of what can be patented has become more liberal, expanding patentable subject matter to living matter, software, and business methods.

The U.S. government further provides intellectual property protection for an original work of authorship in literary, audio-visual, and other works of expression in the form of copyright.

The owner of a copyrighted work may exclude others from reproduction, distribution, public performance, public display, or preparation of derivative works. Fundamentally, a copyright will protect an original and creative way an idea or procedure is expressed from the moment it is fixed in a tangible medium of expression. Unlike patent protection, registration with the United States Copyright Office is not required. Nevertheless, a registration of a copyright provides additional benefits to a business, including statutory damages and evidence of the ownership of the work.

Trademark and unfair competition laws protect the trade identity associated with a business’ goods and services. Assuming that a trademark qualifies for protection, rights to a trademark can be acquired in one of two ways. Actual use of the mark in connection with the sale of goods and services establishes ownership, at least with respect to geographic area of use. However, by being the first to register the mark with the U.S. Patent and Trademark Office (USPTO), the owner of the mark receives additional benefits, including nationwide constructive notice of ownership, an ability to bring infringement suits in federal court, and prima facie "incontestability," establishing the exclusive right to use the mark. Trademark laws provide owners with judicial remedies to prevent others from using confusingly similar marks.

A trade secret is any information that can be used in the operation of a business or other enterprise and that is sufficiently valuable and secret to afford an actual or potential economic advantage over others. A trade secret or confidential information has an indefinite life if it can be kept secret and confidential. A court decides whether a piece of information qualifies for trade secret protection by examining a variety of factors, including how well known the information is to the general public and the steps taken by the owner to protect it from being disclosed.

Acquiring rights through the application process and/or registration, especially for patent protection, can be extremely expensive. Estimating costs is difficult because of uncertainties in the application process, and much depends on the value of that asset once protected and enforced. Logically, it is necessary and desirable for a business to protect every piece of intellectual property; however economically, it is not generally feasible to obtain protection for everything. After matching products and services with the appropriate intellectual property protections, a company can perform a cost-benefit analysis to determine whether securing and maintaining intellectual property protection for each of the identified pieces of intellectual property is warranted. Cataloging the type of intellectual property into portfolios provides further guidance when budgeting for protection.

A global review and evaluation of an intellectual property portfolio provides enhanced value and security. Portfolio maintenance should be performed on a global basis, rather than an asset-by-asset basis. The key to success is being able to tie the IP portfolio to those products/projects likely to bear fruit, or those which are required to keep competition from making infringing products.

The owner of intellectual property must become increasingly savvy about the value of its portfolio, and more educated about the best ways to identify and manage intellectual property. Armed with portfolio management and strategic decision making processes in place, an IP owner will approach business, marketing, licensing, negotiating, and litigation decisions from a position of knowledge and power. Failure to monitor an intellectual property portfolio may lead to waste and even compromise certain valuable rights. The most common danger of ignoring intellectual property is the loss of business opportunities, because the business owner was not attentive to whether those opportunities were worth pursuing. For example, an issued patent requires maintenance fees periodically through the life of the patent. Failure to pay a maintenance fee will cause the patent to expire. The business owner must make an informed decision as to whether or not maintaining that patent is in the business’ best interests. On the other hand, the unnecessary payment of a maintenance fee may result in a lost opportunity to invest those funds in new projects or patents. It is therefore critical to maintain a portfolio of patents which is driven by the business’ needs, strategy, and long-term goals.