There is arguably no more specialized and simultaneously siloed area of law practice than Intellectual Property (‘IP’). First, there are segmentations in subject matter, and even further rare and unique qualifications to even practice in one (patents). Most often, when a business has an IP issue, it often is interrelated with other, sometimes, superseding priorities within that organization. IP tends to be vaguely understood, particularly as it relates to those who are not scientists or creatives, such as songwriters. Businesses are guided in their decision-making by a constant balancing of near-term and longer-term strategic priorities and resources. *
Accordingly, IP must be approached with an eye toward how a solution can be crafted that meets the needs of the business within the available (and/or planned for) resources. Timing is a key for IP decision-making. When should IP considerations be factored in and ultimately be decided upon during any given business cycle, be it funding round, fiscal year or product/service
launch? There is a clarity that can be achieved by simply ‘recognizing’ that an IP issue even ‘exists’. Therefore, initial and periodic discussions with your IP counsel can help identify ‘when’ and ‘what’ IP issues are currently present and with what degree of urgency they should be treated, along with the resources needed to address the same.
Drawing back to a wider perspective, the business owner must consider Corporate Governance, Data & Privacy, and Taxation consequences, beyond just IP issues. The most efficient approach to IP decision-making is to be fully informed and supported by those ‘other’ business considerations. Data & Privacy may be the driver in deciding upon the technology development or acquisition that may ‘implicate’ IP. Actually, technology and policy must be fully considered to maintain regulatory ‘compliance’ as well as avoiding patent infringement actions in federal court. One of the most important corporate functions has to do with financial outlays, i.e., Taxation.
One of the most dominate considerations in any IP decision-making has to do with the tax consequences of those determinations. Should technology be purchased, leased or developed? The cost-benefit analysis will be key to deciding how to acquire new and accelerating technical capabilities, both for internal corporate operations and the delivery of customer products and services. What is tax deductible? To what extent can the full or partial amount of the purchase or
development of a technology be capitalized or amortized? This leads to a clear and stirring question: “How could a reasonably informed IP decision be made without factoring in these other impactful corporate considerations?” The short answer is: IP decision-making takes place often without clarifying context that is needed to support and fully resource such long-term corporate commitments.
At a minimum, good corporate governance must seek an integrated and interdisciplinary approach to IP decision-making with both owners and shareholders demanding such reasoned oversight. **
* After observing a long-felt need for integrated intellectual property (“IP”) and taxation and technology management services, The Lilley Law Firm was formed as an innovative approach to managing and performing the myriad of activities surrounding enterprise management.
** The Lilley Law Firm is dedicated to an interdisciplinary approach to providing practical business solutions to IP acquisition, assessment, management, commercialization, and taxation.
