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John B.
Farmer

 

Lawrence E. Laubscher, Jr.

 

Ian D. Titley

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Try the Government’s New, Free IP Assessment Tool

Monday, September 24th, 2012

The U.S. Patent and Trademark Office recently launched a free online tool that enables businesses to identify and learn more about intellectual property (“IP”) issues that may affect them. You should give it a spin.

The tool is located at www.USPTO.gov/inventors/assessment.

In it, you answer questions about your business’s situation and, afterward, it provides information about areas of IP that may be relevant to you.

I look at the tool the same way as online health websites, such as WebMD. It’s a good place to gather fairly reliable information, to open your eyes to things you may not have noticed or considered, and to learn about some potential good habits. But it’s not a site that will enable you to do it yourself, and it doesn’t try to be one.

You start by deciding whether to take a “pre-assessment” or to dive into a “full assessment.”

The pre-assessment asks only five questions about your business. It identifies which major IP rights and best practices you should learn more about.

That by itself teaches you little. Also, the way most businesses will answer the questions will usually cause every area of IP to be flagged as relevant.

I’d skip directly to the full assessment. It asks you questions about nine aspects of IP – about five major IP rights and about four areas of best practices in handling IP.

It takes you through these major IP rights: trademarks, copyrights, trade secrets, utility patents and design patents.

It then leads you through four IP strategy issues: using technology of others, licensing technology to others, international IP rights and IP asset tracking.

The Office claims it should take you about 30 minutes to do the full assessment. I took it twice with my small business in mind. Each time the questionnaire took me about 10 minutes, but I probably got through it faster than average due to my familiarity with the subject.

The questionnaire has a lot of if-then branching – answering a question one way will lead to a certain additional line of questions while answering it another way will take you in a different direction.

Unfortunately, in some of the cases none of the multiple choice answers may fit your situation well. But it appears the only downside here is you might get less information on a topic than you should, or you might get a lot of information about a topic that’s not important or even applicable to your business.

At the end of the questionnaire, you are given several pages of information about IP issues that the tool determined to be relevant to your situation.

The tool does not write from scratch an assessment of your situation. Instead, it decides which form paragraphs from its library to provide to you.

The first time I took the assessment, I got 9 pages of information, and I got 11 pages the second time.

Within that information there frequently are links to deeper information on the topic at issue. All of the linked information presented to me was elsewhere on the Office’s website or on the website of the U.S. Copyright Office.
That linked information probably existed before the tool, so the value of the tool is to save you time by to directing you to the stuff that may be relevant to you. Think of it as a knowledgeable host at a visitor’s center.

How did the tool do? I give it strong marks for stating the law clearly and correctly. In each test assessment I found only one statement of law that I though was potentially misleading and dangerous.

Yet, it did generate a lot of information about an area of law – patents – that isn’t relevant to protecting my company’s business and assets. The wording of some of the questions and the desire of the tool designers to be information inclusive in the output will cause some users to either put priority on the wrong issues or to explore issues not worth pursuing.

The tool does a good job of repeatedly reminding the reader of areas where you really need the services of an IP lawyer. It didn’t try to give the impression that you can do certain IP things yourself where you really can’t.

Give it a try. It might alert you to IP issues that you didn’t know about. It won’t enable you to self diagnose and self treat, but it might help you become a more knowledgeable consumer of IP services and a better steward of your current and potential IP.

by John B. Farmer

Published in the Richmond Times-Dispatch