Comment: Intellectual property must be made to work hard

IT may be time your business had an IP audit, write Richard Gibbs and Stefanie Glassford

The annual BIO International Convention begins in San Francisco today. The three-day event is a “Global Event for Biotechnology” which attracts more than 15,000 industry leaders and is an excellent forum in which companies can nurture new, exciting partnerships. To put the scale into context, 29,279 partnering meetings were held at BIO 2015 in Philadelphia.

Scotland is always well represented at BIO with local SMEs, universities and public bodies using the event to bolster their international networks.

Their preparation for BIO 2016 will have been going on for many months. The cost of attending means there is a real need to extract as much benefit as possible. One area which can be overlooked and on which successful business partnerships can hinge, is a well organised and strategic intellectual property (IP) portfolio.

Aside from researching the attendees and business interests of potential partners, there are steps you should take to ensure your intellectual assets work as hard as they must.

Being able to leverage and extract a tangible benefit from your IP requires knowledge of those rights that vest within your business. To this end it is recommended that businesses conduct an IP audit. This will not only assist in identifying what patentable technology you are developing and/or using, but also those brands and designs which could be adding further value to your business.

Crucial to the success of any investor-led IP due diligence process is an understanding of the status, strengths and weaknesses of your pending or granted patent, trade mark and/or design rights. Such analysis can be built into any IP audit.

There are often grants available through Scottish Enterprise to enable SMEs to commission an IP audit from a professional IP firm. Usually a patent attorney will undertake a review of a company’s assets and make recommendations for protection. These audits can provide a competitive advantage in the marketplace.

When businesses attend events like BIO, their aim is often to discuss their commercial goals and innovations with as many potential partners as possible. However, non-confidential disclosures pose a risk to the validity of your IP and you should ensure you are properly protected beforehand. An audit will help you identify what IP should be protected and you should pay attention to placing the relevant protection around your most important and prominent products, processes and brands.

Deciding what type of IP protection should be used to protect a product is not always easy and while a patent might represent appropriate protection for one type of product, another may be better suited to design protection. Patent and Trade Mark Attorneys can work with you to determine how best to protect your innovations.

Whether you are seeking investment or licensing opportunities, potential partners will want to conduct due diligence on your IP portfolio. This is an important IP health check and usually involves looking at the ownership of your IP, its legal status and your freedom to operate.

In terms of ownership, important questions to be answered are: Does the IP vest with the correct entity? Does the entity own what it thinks it does? Does the entity have the legal documentation to prove ownership and/or entitlement to the IP?

A review of the legal status will look at any pending and/or granted IP rights to determine the scope of protection and whether all relevant renewal fees have been paid.

Freedom-to-operate reports look at the likelihood of one entity’s activities infringing the IP rights of another. An investor will want to know that you have considered the risk posed by third party IP rights and that you have developed a strategy for dealing with them.

• Richard Gibbs is a Chartered and European Patent Attorney with Marks & Clerk, specialising in life sciences and biotechnology. Stefanie Glassford assists with patent matters in chemistry, life sciences and engineering.