Easy to lose touch with Intellectual Property, says Mike McPherson
As WE come to the end of January, New Year resolutions tend to be forgotten and can already be discarded and in the bin.
But businesses should consider making a belated resolution – to spring clean their Intellectual Property (IP) portfolio.
Businesses have use for IP in all its forms, whether it’s patents, trademarks, design registration, copyright or domain names. It is all too easy to push this to one side when dealing with the day-to-day pressure of running a business and trying to look ahead at all other commercial aspects.
Businesses of all types can miss out on the benefits of knowing and understanding their competitors’ IP activities. Have you recently made time to see what the opposition is doing on the IP front? A review of competitor patent activity can also lead to new ideas – how to do it better than they are.
It is too easy to lose sight of where you are going with your IP portfolio. Cost-effectiveness is crucial. It is worth taking the time to review your IP portfolio and requirements and consider where IP rights fit into your business plan. Discuss current and future IP needs internally and with your IP advisors.
Try a short sharp review exercise with a cool-headed consideration of reality. Plan ahead. Expand your IP portfolio, trim it and/or adjust its focus based on your real business needs.
Consider the following: Have your markets changed or are they going to? Where do you want to have IP protection? Do you need to get IP rights in other territories? If you are going to go outside the UK for the first time, can your existing trademarks be used in the new territories?
It usually takes a few years to get a granted patent, unless you take steps to accelerate proceedings. With patent applications, it can be easy to forget where you want to go and why. It is all too simple to press onwards with the development of your new product and not consider if new filings are required to cover new developments. Where are your existing applications in the system? Do you want to accelerate proceedings? You should also consider whether your granted patents and current patent applications are all you need – perhaps you also need design registration for the new products you are going to launch.
Competitor activity, outside the immediate marketplace, can also be overlooked. Knowing what your competitors are doing with their IP is vital but many do not know how to find out this information. Highly valuable information can be obtained by searches for competitor patents while patent landscaping can show the shape of technology in an industry and where it is going. A patent watching service aimed at key competition and/or technology can be relatively inexpensive.
Other questions should be examined: Can your competitors block your progress? If they have a patent or a patent application that might interfere with your business, what will you do about it? Can you work around it? Is there an opportunity to trade IP rights to improve your position?
It is worth remembering that your usual competition may not be the only threat. In some industries Non-Practising Entities (NPEs) operate. NPEs are sometimes called patent trolls because they “lie in wait” to make money out of unsuspecting businesses that pass by. An NPE does not manufacture or actively operate in the area of technology concerned. They create, or more often acquire, IP rights and then seek licences (or sue for damages) from those who do have an operating business in the field.
If you are buying or selling a business, do you need valuation of IP assets? Is there IP out there that you want to acquire or license in? If you have IP that you no longer want, is it of use to others? What should the price be? Evaluation of IP for buying/selling or tax purposes is available from specialist consultants.
A spring cleaning exercise should consider any or all of the above, to suit business needs. IP rights are often put in a box marked “in case of need”. They can be highly valuable for that purpose but that doesn’t mean they shouldn’t be dusted down and inspected at regular intervals.
• Mike McPherson is a European patent attorney specialising in chemistry, oil and gas and manufacturing. www.marks-clerk.com