IP is the most effective tool for businesses to gain a competitive advantage. IP is not just about the right to obtain a monopoly and exclude others from using a brand, design or patented invention, it is also a means to build innovation. As such, there are both rewards and risks associated with IP. What the rewards are is obvious, the risks less so.
Mitigating risks associated with IP is about management and control. This requires an understanding of IP, so potential risks can be identified early, evaluated and proactively mitigated.
Identifying areas where risks can arise:
Within the business
IP protection: disclosing an invention too early, not filing for patent or design protection, not registering a trade mark, not keeping good records of how a product is developed, who the inventors or authors of design drawings are, etc.
When collaborating with others
Commercial agreements: not addressing IP issues appropriately, or at all – giving too much away, losing control, or taking on too much liability exposure.
When competing with others
- Dealing with infringement by third parties.
- Avoiding infringing the rights of third parties.
Steps to take within the business
- Educate staff on what IP is (especially R&D and marketing teams).
- Put in place an IP Policy, which outlines processes to follow when researching/innovating to identify potential risks.
- Maintain an ‘IP Risk Register’ – this will measure identified risks, their potential impact and the proposed response.
- Designate an “IP Officer” or “Team” as a central point of contact.
- Consult with your professional advisers.
Steps to take when collaborating with others
- Review and ensure the IP clauses are fit for purpose, especially around ownership of newly created IP, in outsourcing, commissioning or subcontractor agreements.
- Conduct due diligence when acquiring IP or obtaining a licence to IP.
- Obtain appropriate warranties and indemnities when using the IP of others.
- Seek legal advice when in doubt.
Steps to take when competing with others
- Conduct freedom to operate/clearance searches early in the development process (not immediately before the launch of a new product or brand so you can design/work around the IP of third parties, if necessary).
- Study and understand your competitors’ IP position (find prior art to invalidate their IP, if possible, to use as a shield).
- Monitor the market: enforce IP rights, if necessary.
- Seek professional advice.
A lot of work can be done ‘in-house’ provided the required IP knowledge, competencies and processes are acquired, and put in place. Identifying and mitigating risks will ultimately lead to reduced costs. For example, the benefit of costly R&D will be retained if an invention is not disclosed too early and the cost of litigation avoided if a freedom to operate search is conducted early enough.
Ultimately, best practice is about integrating IP considerations into the normal course of running a business. This should start with the C-Suite and the Board. Starting the process of devising an IP strategy will put you in a better position than most. Completing that process and implementing the IP Strategy may propel you leaps and bounds ahead.
