--- name: IP Strategy & Licensing description: Build and defend an intellectual-property position — patents, trade secrets, trademarks, and copyright — and structure technology licensing and cross-border deals, so a company protects what it builds and monetizes it, with patent and IP counsel making the filings and the legal calls. audience: founder · product leader · CTO · deal owner --- # IP Strategy & Licensing ## What this is A method for treating IP as a business asset: deciding what to protect and how (patent vs trade secret vs trademark vs copyright), mapping a portfolio to the product roadmap, and structuring licensing so the right rights move on the right terms — a strategy that counsel then executes. ## What this is NOT - **Not legal advice, and not a patentability, freedom-to-operate, or infringement opinion.** Those require a qualified patent attorney; the skill frames the strategy and routes the legal determinations out. - **Not a filing service.** It shapes the *decision* (protect / disclose / license); the attorney drafts and files, and clearances are theirs to give. - **Not jurisdiction-blind.** Patent scope, trade-secret protection, and trademark rights differ by country; cross-border deals raise export-control and enforceability issues the skill flags for counsel. ## When to use Deciding whether an invention is a patent or a trade secret; planning a patent portfolio around a roadmap; clearing or selecting a trademark before launch; structuring an in-bound or out-bound technology licence; preparing a cross-border licensing negotiation. ## Operating principle Protect the thing that is hard to copy and central to the moat — and disclose (patent) only when the teaching value is worth losing secrecy. Every protection choice is a business trade-off with a legal execution that belongs to counsel. ## Capabilities - **Protection strategy** — Goal: right mechanism per asset. Method: for each asset weigh patent (novel, non-obvious, worth disclosing) vs trade secret (protectable by secrecy, e.g. an algorithm or process) vs trademark (brand identifiers) vs copyright (code, content); map to roadmap and competitive threat; note timing bars. Output: an IP protection map with the mechanism and rationale per asset. Quality bar: the patent-vs-trade-secret call names its trade-off; patentability itself is flagged for counsel, never asserted. - **Portfolio & trade-secret hygiene** — Goal: a defensible position. Method: align filings with product direction, identify white space and defensive gaps, and set trade-secret controls (access, NDAs, marking, exit protocols) that courts actually require to uphold secrecy. Output: a portfolio plan + a trade-secret controls checklist. Quality bar: trade-secret status depends on demonstrable controls, and the checklist reflects that — not just a "confidential" label. - **Licensing & cross-border deals** — Goal: rights move on defensible terms. Method: structure scope (field, territory, exclusivity, sublicensing), royalties, improvements/grant-backs, and termination; flag export-control and withholding-tax issues on cross-border deals. Output: a licensing term sheet + a negotiation brief. Quality bar: every granted right is intentional and bounded; cross-border legal/tax issues are routed to counsel, not assumed. ## A worked example "Patent our matching algorithm?" → Strategy flags that a patent would *publish* the algorithm and be hard to detect infringement on → recommends trade secret instead, with an access-control + NDA + exit-protocol checklist to make the secrecy legally defensible, while the *brand* and a novel UI interaction are routed for trademark and design-patent filing. Patentability of the UI element is left to patent counsel; the strategy just says where to spend. ## Guardrails & escalation Patentability / FTO / infringement opinions, and all filings → qualified patent & IP counsel. Cross-border licensing → export-control (EAR/ITAR where relevant) + international IP counsel. Trademark clearance → trademark counsel. The skill decides *what to protect and how to deal*; the lawyer decides *whether it's protectable*. ## References 35 U.S.C. (patents) §101/102/103; the Defend Trade Secrets Act / UTSA; the Lanham Act & USPTO practice (trademarks); 17 U.S.C. (copyright); WIPO frameworks for cross-border; EAR/ITAR for export-controlled tech. Verify all determinations with qualified counsel.