最佳知识产权管理任务清单
这是大岭为您分享IP英文的第59天：今天带来一家总部在加拿大的管理咨询公司Stratford Managers总结的最佳知识产权管理任务清单。清单适用企业从创立、天使投资到成熟运营的各个阶段，我认为非常实用，而且也基本适用中国的企业。
原文如下：
IP MANAGEMENT BEST PRACTICE CHECKLIST
Optimize Your IP Strategy Follow Stratford’s comprehensive checklist of best practices for companies at all stages, from inception to maturity. Consistently implementing these practices are critical to the success of any innovative or innovation-based company
THE FIRST 6 MONTHS…TO ANGEL FUNDING
Day 0-30
Set up employment agreements between all founders, employees, contractors that include IP assignment clauses and NDA’s
大岭注：NDA-Non Disclosure Agreement 保密协议
Set up ongoing process for signing and keeping track of all NDA’s signed by the Company with their expiration date. Limit the number of people who are authorized to sign NDA’s
Set up ongoing process to document and maintain an upto-date log of innovative concepts and who has been creating them
Minimize disclosure of innovative technical details to an absolutely as-needed basis. Only disclose information under NDA
Budget for one (1) provisional filing within the first 6 months ($3000-$6000).
Perform a trademark search on USPTO and CIPO site before adopting a visible identity. Use ™ on any identity terms (e.g. company and product names) to show intent to own a trademark
Secure any relevant domain names
Enforce that no one discusses 3rd party IP in writing
Enforce a clean desk and clean white board policy
Day 31-180
Find a good IP advisor willing to work on a fixed-price basis for drafting and office actions and providing strategic advice without a money clock running. Take into account foreign associate fees and PTO fees
Establish company as micro or small entity depending on the situation of the inventors
Perform a high-level prior art search on key inventions to assess patentability
File an umbrella provisional application covering all the innovative concepts in as much detail as possible including one claim per innovative concept ($3000-$6000)
Periodically assess the need to file other provisional applications based on the updated log of innovative concepts and file accordingly
Perform competitive landscape and identify the areas of IP protection opportunities
Never discuss any technical details not disclosed in the provisional application(s) to anyone that has not signed an NDA and only on an as needed basis
Treat everything being developed as a trade secret and protect accordingly
TO SERIES A OR TO COMMERCIALIZATION AND ONGOING
If not already done, implement the best practices from the “First 6 months” as outlined previously.
Grow the Assets
Set portfolio growth objectives and review quarterly
Perform quarterly brainstorming sessions with different groups of employees. Ensure that relevant ideas held by employees are disclosed and captured (even those which may not be immediately relevant to operations or product development) using a well defined invention disclosure process
Explicitly value and promote innovative thinking (i.e. bonuses, IP incentive plan, etc.)
Maintain IP landscape and correlate with competitors
Strategically target innovation to fill gaps
Document all inventions in Record of Invention or Invention Disclosure forms
Form a patent committee including different functional areas in the company and involve Subject Matter Experts to review ROIs
Hold regular patent committee meetings to review the inventions and plan patent filings.
Formalize all provisional applications as soon as possible
IP Protection
Consistently use a signing book for all visitors
Enforce a clean whiteboard policy
Ensure systematic shredding of all classified documents
Implement detailed IP policy approved by management team
IP policy shared with all employees and signed when joining the company. Enforce consistent and careful use of lab books (with page #s).
Archive lab books of employees leaving the company
Assign a single point of contact for IP related issues/questions
Implement process to mark “patent pending” and patent # marking on all public documents and/or set up and maintain a marking web page
Employ mechanisms to identify, log and protect trade secrets
Policy on inclusion and tracking of shareware/freeware in products
Include copyright statements on all public documents
Implement a trade secret protection strategy
Freedom to Operate
Maintain IP landscape of competitor’s IP
Monitor innovation announcements from competitors
Sign purchasing contracts with proper indemnification clauses
Review key design elements against competitors’ IP, plan contingency designs or design round (Optional – depends on company policies)
Register key trademarks
Efficient Portfolio Management
Establish and update quarterly importance rating of patent families
Establish filing location strategy per patent family + update quarterly based on importance rating
Establish prosecution time strategy per application + update quarterly based on importance rating
Update strategies when business plan is updated
File continuation when a US application is allowed
Maintain 4Q rolling short and long term budget portfolio to include in funding requirement
Monthly review of legal bills and track expenses per application/ correlate with budget
Maintain IP due diligence package ready to showcase to investors or possible acquirers
Review entity status (micro,small, large) depending on growth and contracts
Maintain a secure log of trade secrets
POST SERIES A OR PREPARING FOR AN EXIT EVENT
If not already done, implement the best practices from the “First 6 months” and “To Series A” as outlined previously
IP Acquisition
Proactive monthly search for patents available to acquire
Proactive monthly search for innovation that can improve products
Proactive monthly search for expired patents of interest
IP Enforcement
Proactive monthly search for infringers
Proactive monthly search for possible licensing opportunities
Proactive monthly search for misuse of trademark
Portfolio Valuation
Track portfolio value evolution quarterly
Proactively strengthen claims based on known competitor’s products
Review portfolio quarterly and identify families to divest or allow to lapse
Build an inventory of litigation-ready claim charts
Source:http://info.stratfordmanagers.com/acton/fs/blocks/showLandingPage/a/18820/p/p-001d/t/page/fm/0
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