IP Strategy
Intellectual property is most valuable when it is treated as a business asset — not a legal formality. A well-constructed IP strategy protects what you have built, supports your market position, and creates options for the future. A poorly constructed one wastes money and leaves gaps that competitors can exploit.
With 30 years of Canadian IP practice across a broad range of industries, I bring a strategic perspective to every file — not just a prosecution perspective. IP strategy is not a single decision; it runs along a spectrum, from a defensive posture that protects your freedom to operate and keeps costs modest, to an offensive posture that builds an owned inventory of exclusionary rights and market position. Where your business sits on that spectrum depends on your risk appetite and your commercialization goal, and the right mix of patents, trade secrets, trademarks, copyright, and design protection follows from that placement rather than from generic best practice. The following outlines the advisory and strategy work available to clients on a standalone or ongoing basis.
The sections below work through the specific pieces of that advisory practice in more detail — from the initial audit that tells you what you have, through the ongoing decisions about licensing, portfolio management, and competitive positioning that keep a strategy current as your business changes. None of it requires committing to every service at once; most clients start with a single piece of work and expand the relationship as the file and the business grow.
The Defensive-to-Offensive Framework
IP strategy is not a single decision, and it is not the same decision for every business. I place every strategy conversation on a spectrum running from a defensive posture at one end to an offensive, or exclusionary, posture at the other. A defensive strategy is built around freedom to operate: it favours modest, targeted filings, careful clearance work, and protection against being blocked by someone else's rights, and it keeps ongoing cost manageable. An offensive strategy is built around market position: it favours broad, early, exclusionary filings that build a company-owned inventory designed to keep competitors out of the space you intend to occupy.
Where your business sits on that spectrum is not a matter of doctrine — it follows from your own commercialization goal and risk appetite, and I ask about both directly before recommending anything. A company planning to build and defend a dominant market position needs a materially different filing program than one focused on getting a product to market quickly and cheaply while staying out of other people's way, even where the underlying technology is similar. Once that placement is clear, the protection mix follows from it: how much to patent, what is better kept as trade secret, when design protection is worth adding once the product's appearance stabilizes, and where trademarks and copyright do the commercialization work that patents cannot. The result is a hybrid, layered strategy — most businesses use several protection types at once — built around your actual objective rather than a generic template, and sequenced so you have an ordered plan rather than an open-ended menu.
IP Audit and Inventory
An IP audit is the logical starting point for any business that wants to understand and maximize the value of its IP assets. The audit identifies what IP exists in the organization, who owns it, what is registered and what is not, what agreements affect it, and where the gaps and risks lie. The results inform a prioritized action plan.
Audits can be scoped narrowly — a single product line or a single category of IP — or conducted on an enterprise-wide basis. Either way, the output is a clearer picture of what you have and what it is worth.
The output takes the form most clients find useful in practice: an asset-type table setting out what falls under patents, industrial design, trademarks, copyright, and trade secrets, what is currently done about each, and what the next concrete step should be and when. That structure lets a founder or executive see the whole protection picture in one place, rather than working through a series of disconnected observations. For growth-stage companies preparing for financing or an acquisition, the audit is often the first exhibit a purchaser's or investor's counsel asks to see.
An audit is also the natural entry point for a client who has never worked with the firm before and wants a low-commitment way to see what the advisory relationship looks like in practice, without committing to an ongoing engagement up front.
Freedom to Operate
Before launching a new product or entering a new market, it is worth understanding whether doing so creates IP exposure. A freedom to operate analysis identifies relevant third-party patents and other IP rights that could affect your ability to commercialize, and assesses the risk they present. It is not a guarantee — no legal analysis is — but it is the foundation of an informed launch decision.
The analysis is scoped to the markets where you actually intend to sell or manufacture, since patent rights are territorial and a clearance that matters in Canada may be irrelevant in a market you have no plans to enter. Where risk is identified, the options are rarely limited to abandoning the product: a design-around, a licence, or an assessment of the referenced patent's validity are all part of the toolkit, and I present those options together with the risk each is meant to address rather than leaving you with a single yes-or-no answer.
Timing matters as much as scope. A freedom to operate opinion commissioned before tooling is ordered and marketing materials are finalized gives you room to adjust; the same opinion requested after launch narrows your options to living with the risk or absorbing the cost of a late-stage change, which is a materially worse position to negotiate from.
Trademark and Brand Clearance
Adopting a new brand name, logo, or product identifier without a clearance search is a significant business risk. A clearance search identifies conflicting registrations and pending applications before you invest in brand development, packaging, and market entry. A registrability opinion tells you whether the mark you want to use can be protected.
Clearance work is most valuable early, before packaging is printed, domain names are registered, or marketing budgets are committed, since the cost of changing course after launch is many times higher than the cost of a search beforehand. Where a conflict does turn up, the options range from adjusting the mark, to negotiating a coexistence arrangement, to proceeding with an accepted level of risk — the right answer depends on how much is riding on the name and how close a competing registration actually sits.
Clearance and registrability work also feeds directly into the freedom to operate and portfolio-grooming services described elsewhere on this page; a mark cleared and registered today becomes an asset that later needs to be maintained, licensed, or enforced, and building it correctly at the outset makes each of those later steps easier.
Portfolio Management and Grooming
An IP portfolio is not a filing cabinet. It is a living asset that requires periodic review to ensure it remains aligned with your business objectives. Portfolio grooming involves identifying which rights to maintain, which to let lapse, where gaps exist, and where new filings are warranted. For businesses with active R&D programs or evolving brand strategies, this is an ongoing exercise.
A portfolio built up over years often carries filings that made sense at the time but no longer track where the business actually makes its money; grooming identifies those and lets them lapse deliberately, rather than by accident when a renewal notice goes unanswered. The review works in the other direction as well — a status report mapping every active matter against upcoming deadlines and decision points gives management a single current picture of the portfolio, which is particularly useful heading into a board meeting, a financing round, or a periodic budget review.
Grooming is also where the defensive-to-offensive placement described above gets revisited over time. A company that started with a defensive, cost-conscious posture may shift toward an offensive one once it has secured funding or established market traction, and the portfolio review is the natural point to recalibrate the filing program to match.
Licensing and Commercialization
IP rights are only as valuable as the revenue and competitive advantage they generate. Licensing — whether inbound or outbound — is one of the primary mechanisms for extracting that value. We assist clients with licensing strategy, term sheet review, agreement drafting and negotiation, and the structuring of IP ownership models that support commercialization objectives.
The commercial terms of a licence — royalty structure, exclusivity, territory, field of use — matter as much as the underlying IP right, and getting them wrong can leave value on the table even where the IP position itself is strong. I work alongside the business terms your team and any outside advisors are negotiating, focused on making sure the IP ownership and licence structure actually deliver what the deal is meant to accomplish, rather than treating the licence agreement as a form to be filled in after the commercial deal is done.
Licensing decisions rarely happen in isolation from the rest of the portfolio; a licence granted on favourable terms can fund further filings, while one granted carelessly can foreclose options the business did not realize it was giving up, which is why licensing strategy belongs alongside the broader portfolio and freedom to operate work rather than being handled as a one-off transaction.
Chain of Title and Ownership
IP ownership issues are among the most common and most damaging problems encountered in IP due diligence. Inventor assignments, employee agreements, contractor arrangements, and corporate restructurings all create chain of title risk if not handled carefully. We review and remediate ownership issues, and advise on ownership structures for new ventures and collaborations.
A missing assignment from a departed employee or a contractor engaged without a written agreement can surface years later, at the worst possible moment — typically during due diligence for a financing or a sale, when there is little time left to fix it cleanly. Reviewing chain of title before it becomes a transaction issue, rather than during one, is the difference between a straightforward remediation and a negotiated concession that costs you leverage or money.
This work sits closely alongside portfolio grooming and licensing: a right cannot be licensed, sold, or enforced with confidence if the chain of title behind it has never been checked, and the earlier that gap is found and fixed, the less it costs to remedy.
Competitive Monitoring and Due Diligence
Understanding what your competitors are doing — what they are filing, what they are registering, and what they are enforcing — is a legitimate and valuable part of IP strategy. We assist clients with competitive monitoring programs and IP due diligence in the context of acquisitions, investments, and commercial transactions.
On the transactional side, IP due diligence follows the same logic as the audit work described above, applied to someone else's portfolio: what exists, who owns it, what is registered, and what risk or value it represents to the deal at hand. Competitive monitoring is the ongoing version of the same discipline — watching a competitor's filings and enforcement activity over time rather than as a one-time snapshot, so a shift in their strategy is identified while there is still time to respond to it.
Where monitoring turns up a competitor's filing that appears to encroach on your own market position, the appropriate response — an opposition, a freedom to operate review of your own activities, or simply continued observation — depends on exactly the same defensive-to-offensive placement that organizes the rest of your strategy, so the two pieces of advice are never given separately.
Industries Served
Furman IP has provided IP advice across a broad range of industries and technical fields. Experience includes marketing and branding, mining and oilfield, agricultural equipment, computer software, importers and exporters, and legal professionals seeking Canadian IP counsel. This breadth of experience means that industry-specific IP considerations are understood and accounted for — not learned on your file.
Marketing and Branding
Mining and Oilfield
Agricultural Equipment
Computer Software
Importers and Exporters
Legal Professionals