Creating value Featured

7:36am EDT February 28, 2006

From corporate names to product lines, software to research data, every company has unique intellectual property. And while the majority of business people realize the need to protect their company from the threats of trademark and patent infringement, knock-off artists and claims of software piracy, at least as many are unaware that intellectual property (IP) also represents a valuable asset just waiting to be tapped.

By viewing intellectual property just like other capital assets, companies can harvest and use IP as a valuable market resource, says Mark Terzola, an attorney in Roetzel & Andress LPA’s Akron office and the Intellectual Property Practice Group manager.

Smart Business spoke with Terzola to learn how intellectual property can translate into opportunity for its owners, and how to manage IP assets to their highest potential.

What kind of intellectual property do business owners often fail to recognize?
Intellectual capital only exists if you look for it. For example, every business has a name. A lot fewer have a brand or brands, which serve different but coordinated, strategic functions. Very often business owners don’t recognize a company name as an intellectual property asset that can be used to create value.

There are also other overlooked IP assets such as those relating to innovative products or processes, the look and feel of a particular product line or even a marketing strategy aimed at specific price points or to a specific distribution channel.

How can business owners identify and evaluate IP assets?
Every company’s CEO or president says that its employees are their company’s most important asset. Capture the creative output of those employees. Employees love to have their employers see value in what they contribute every day at work.

And their creative ideas — whether in product design, manufacturing, marketing or any other field — are what they would most like to see valued. The trick is to create a system to harvest that creative output and bring it to the attention of management.

How can such a system be initiated?
Every company is different. There is no one-size-fits-all answer. For some companies, personnel and department meetings work; in other companies, a patent committee or IP coordinator works. Companies also need some ability to monitor the financial investment into those ideas.

In the end, companies need to communicate the fact that they recognize the value of existing intellectual property in the business and emphasize the development of new intellectual property.

How can business owners determine which IP assets have revenue-generating potential?
Businesspeople are very adept at figuring out how to use an asset once they know what it is. IP is no different. Generally, value is easy to see; it’s a question of how much value.

The first step in assessing value is to determine if the IP asset can be protected with legal tools. If the asset can be protected, the next step is to identify value generation models. When appropriate, there are professional consultants that can help companies value their IP assets and commercialize them.

Once IP assets are identified, what can businesspeople do to protect them?
Hire counsel who is good at working with businesspeople. Generally, in the U.S., IP assets are protected by copyright, patent, trade secret, trade dress, trademark and a host of other laws.

Businesspeople should first seek counsel to recommend ways to aggressively protect assets while understanding the company’s vision, culture and operations. Counsel can then help shape direction and strategy consistent with those core values. Such a strategy would include being vigilant against infringement and to take action, whether that is litigation or seeking a license arrangement, the very first time unlawful use of their protected IP is discovered.

Businesspeople who act quickly and firmly soon become recognized as intolerant of IP infringement. Consequently, infringement is not likely to happen as often

How can businesspeople start discovering and capitalizing on their IP assets?
Business owners should ask themselves a few questions: Do I have a system to take advantage of the creative output of our people? Do I have a system to bring those ideas to management’s attention, and a system to evaluate their value?

Answering those questions helps businesspeople begin to recognize that their companies do have IP capital. Once businesspeople recognize assets, they almost always find ways to use them to create value.

Mark Terzola is an attorney and Intellectual Property Practice Group manager for Roetzel & Andress LPA. He works with companies to harvest and use IP as a valuable market resource. Contact him in Akron at (330) 849-6607 or mterzola@ralaw.com. Roetzel & Andress has nine offices throughout Ohio, Florida and DC. Find out more at www.ralaw.com.