1 – Assess which aspects of your business are worth protecting
What Unique Selling Point(s) distinguish your products or services from the competition? Your product characteristics, your brand, your commercial reputation? How much of those USPs account for your commercial success?
If those USPs do, then they are what your business should seek to protect and monopolise with relevant types of IP rights, to ensure your business alone can continue to exploit them.
2 – Document, diary and archive your creative process
Ideas and concept are at the root of any form of business venture, yet cannot be protected by IP rights until they have been expressed in one form or another. Any creative process is usually iterative, during which the idea or concept undergoes refinement over a period of time.
To facilitate IP identification and, importantly, to clarify IP ownership from the onset, it is best practice to rigorously document who invented, authored or designed which concept or idea at what time, and what has been contributed to the concept or idea by whom during the entire creative process at what time.
Good practice as suggested above will substantially reduce your registration and enforcement costs, in addition to greatly facilitate due diligence processes by investors or prospective business partners.
3 – Establish a clear chain of ownership for your IP
From employment contracts to contracts for services with suppliers, make sure your business owns what it pays employees, creators and authors to devise on its behalf.
Ensure that any contracts which your business enters into or awards, from which any IP may result, have clear and unambiguous clauses governing ownership of IP.
Prefer written contracts in all instances, as incontrovertible evidence of a transfer of rights, as again this will substantially reduce your registration and enforcement costs.
4 – Preserve all chances of registering your IP
A fundamental requirement of the validity of several types of IP rights is novelty over public disclosures.
Never disclose new concepts, technological developments, designs, brands, ideas to any third party without a Non – Disclosure Agreement (‘NDA’) in place, signed and dated by all parties.
Whether an NDA is in place or not, preferably do not disclose any of the above to any third party before filing applications to register appropriate forms of IP rights (patents, trade marks, registered designs), to avoid expensive issues of entitlement or litigation for breach of contract, if any such third party were to unduly file their own application for your IP.
5 – Pay me a penny now, pay me a pound later: cost – effectivenes of IP registration
The main difference between registered and unregistered forms of IP is often perceived as cost: unregistered forms (design right and copyright) are automatic by operation of law and therefore ‘free’, registered forms (patents, registered trade marks, registered designs) must be applied for and obtained at a cost.
Yet, if and when circumstances dictate that IP rights be traded or licensed with commercial partners, or enforced against infringers, this cost difference can quickly become insignificant: a party claiming ownership of unregistered rights must firstly prove that these rights exist, then that they are that party’s property, and this demonstration after-the-fact most often comes at a higher price than the registration process itself, with a much more uncertain outcome. What is more, unregistered rights routinely offer a much more limited scope of protection, and reduced term of protection, for a same concept or development.
Will you need investment? Will you export innovative products? Will you franchise your business? Will you manufacture overseas? Answers to these questions and many more provide an indication of whether registering the IP underpinning your business makes economical sense.
Investors will want demonstrable proof of the intrinsic value of your business, and that the IP it owns is incapable of walking out of the door: registered IP proves the IP exists and that your business owns it.
6 – File little, file often
Good IP portfolios are those which provide a business with regular market opportunities.
Few successful companies rely upon a single patent or registered design, and still fewer successful companies rely upon a single trade mark or brand. Even the Coca – Cola® Company regularly files new applications for registered trade marks in anticipation of new product lines and corresponding markets.
In that context, developing IP should be continually assessed in, and registrations correspondingly applied for, incremental developments of existing concepts, technological impovements, existing and alternative designs, new brands, to arrive at a situation where your business slowly but surely becomes pivotal –through its IP– to any existing or would-be competitor and require license(s) to be taken.
7 – Manage your IP portfolio
Registered IP costs are ongoing, whether at the time of seeking patent, trade mark and registered design protection, or afterwards while they are maintained in force.
Your IP portfolio should be seen as a business opportunity engine, which is fed new patents, trade marks and/or registered designs in line with your business development, and exhausts spent titles which have no further commercial relevance.
Accordingly, IP should be budgeted for, and the number and relevance of titles in your portfolio should be regularly reviewed, with divestment of titles –by either sale or termination– once they cease to provide business opportunities.
8 – Internationalise your IP portfolio
IP rights are provided on a per-country or region basis and are governed by jurisdiction – specific, legally – imposed deadlines, which often conflict with a business development cycle, particularly when considering export development activities.
IP registration procedures for a new product or brand usually begin shortly before commercialisation starts, and the option of seeking respective registrations in anticipated overseas market is only available for a limited period: businesses therefore have a choice of seeking protection in expected overseas markets within that limited period, possibly in vain if any or all such overseas markets turn out unviable, or wait to see whether these expected overseas markets prove sufficiently viable to justify IP expenditure.
The first option amounts to a calculated risk, and the second option often results in no protection in these markets at all, as relevant legal deadlines expire before the market proves viable, leaving competitors free to exploit such unprotected markets.
Overseas IP protection should be factored early in your IP strategy, and full advantage should be taken of international forms of IP rights, which regularly prove more cost-effective than seeking protection on a per-country basis.
9 – Consider selling or licensing your IP out
Can your business grow faster, if you let your competitors grow your domestic market and/or export markets market on your licensing terms? Does the life cycle of your products or designs differs in markets around the world? Is there a cost opportunity to sell or license a patent, design or trade mark to a foreign competitor in their domestic market? Can your business expertise be exploited in alternative markets?
These questions highlight situations wherein allowing third parties to exploit your IP under license can make good business sense.
10 – Consider buyin
g or licensing others’ IP in
Is it less cost-effective to invent or design around your competitors’ rights? Can you gain a time-to-market advantage by buying in turn-key technology? Can you grow your market by introducing a product or service which complements your core offer, but for which you lack expertise or know-how?
Again, these questions highlight situations wherein negotiating use of third parties’ IP under license can make good business sense.
11 – Seek professional guidance
An extra tip, possibly the most important, is to never hesitate to contact a Registered Intellectual Property law practictionner, known as a Chartered Patent & Trade Mark Attorney or a European Patent & Trade Mark Attorney, to obtain legally priviledged input in relation to any of the above, as well as time scales and cost estimates to assist your business planning and development.
Stéphane Ambrosini of Franks & Co.,
European Patent, Trade Mark & Design Attorneys.
Franks & Co offers a first free consultation meeting to all new clients, where any of the above can be brought up and discussed, and all enquiries are always welcome and promptly answered.