Blog Series: IP Ingredients, Part 5: New Year’s Resolutions

Since the clock struck midnight and we bid farewell to another year, many of us have embarked on the journey of self-improvement through New Year’s resolutions.

While hitting the gym and adopting healthier lifestyles are common goals, it’s also an opportune time for businesses to reflect on their strategies, including whether their IP portfolio is in good shape.

Is your portfolio fit for purpose or is it bloated and in need of a diet? Maybe you’ve overlooked IP while you’ve been focussing on R&D and marketing?  Either way, our resolutions will serve up a roadmap for a year filled with innovation, protection, and strategic growth. By prioritizing your IP now, you will not only safeguard it for the future but also ensure that it is supporting your business’s strategic goals.  Cheers to a year of intellectual prosperity!

In 2024, I will…:

1. Savor The Flavour Of Intellectual Property And Prioritize An IP Audit

The first step in fortifying your IP position is to conduct a comprehensive IP audit.  Evaluate what IP you currently have and identify any gaps or potential vulnerabilities in your protection. Do your patent claims align with your commercial product? Are you paying renewal fees for rights in countries that are no longer significant markets, or that cover brand names you no longer use? Do you lack protection in key countries that you are operating in?

IP is only useful if it is relevant to your business and keeps competitors away from your commercial territory. If it’s not doing its job, then it may not be worth keeping.  Consider licensing out or assigning (selling) any IP that is no longer providing useful protection to your company – this could provide additional revenue. Also, consider new protection for areas of strategic importance that you don’t currently have covered.

SMEs who are engaging with partners such as Innovate UK, Scottish Enterprise, Highlands and Island Enterprises or the Welsh Government may be eligible for a partial grant towards a professional IP Audit, under the UK Intellectual Property Offices IP Audit Plus Programme.

2. Develop A Process For Harvesting New IP

If you’re investing considerable resources in fostering innovation, it’s crucial not to overlook protection for your research or creative output. To ensure nothing is accidentally missed, it’s advisable to have a structure in place for capturing potential new IP throughout a project’s timeline. Such a structure could include:

• Regular meetings with your R&D and marketing teams to check whether any new ideas generated are worthwhile protecting in a patent, registered design or trade mark application;
• Inviting your IP attorney to those meetings to get a view on the pros and cons of filing applications;
• Formalising when those IP check-ins should happen in your project management timeline, such as at particular stage gates;
• Considering when in your brand creation process you would like to have trade mark searches conducted so that you are not falling in love with a name that isn’t ultimately available for you;
• Setting up an internal process for systematically recording and managing trade secrets – more on this later in the series.

3.       Formulate Processes To Prevent Unwanted Public Disclosures

When you’ve come up with a brilliant brand name, or your research has finally delivered a solution to a complex problem, it’s easy to get so caught up in your enthusiasm to tell others about your idea that you forget to put IP protection in place first. However, a public disclosure of an invention or a new design is fatal for subsequent protection in many countries. For trade marks, while it is not always fatal, it can cause expensive and time consuming delays if another party files before you.  So, before you meet with that investor, manufacturer or distributor, speak to your IP Attorney about protecting your idea. Before your team presents at a conference, check that their slides don’t disclose any IP that hasn’t yet been protected.  You will be glad you did later!

4.       Taste Test By Conducting IP Checks Before Unveiling Our New Offering

It’s also easy to get so caught up in what you’re doing, and your own IP, that you inadvertently overlook IP owned by other companies. A common misconception is that having granted IP rights automatically insulates you from infringing other’s rights. In reality, this is not always the case. To mitigate the risk of your trade mark application being opposed, or receiving the dreaded ‘Cease and Desist’ letter, it’s prudent to conduct thorough searches to ascertain whether there is third-party IP that could potentially disrupt your commercial plans. Stay tuned for more insights on IP searching later in the series.

5.       Not Let The Wrong (IP) Cooks Spoil The Broth…And Make All Relevant IP Is In The Right Name

It’s a common occurrence for IP filed in the early stages of a new company to be filed in the names of the founders, or for IP of university spin-outs to be attributed to the university. However, for IP to truly serve as an asset of the company, it must be officially owned by the company.  During a due diligence project, potential investors will scrutinize the ownership of your IP. Furthermore, discrepancies and unnecessary complications (such as repercussions in infringement proceedings) arise when the company isn’t registered as the rightful proprietor on the patent or trade mark registers – especially if the IP was acquired from elsewhere. It’s therefore prudent to check that all relevant IP is owned by the company, and that the correct owner is recorded on the IP registers.

6.       Check that Contracts, NDAs, And Assignments Are A Perfect Pairing For My Intellectual Property Goals

Are your employment contracts seasoned with suitable clauses addressing IP ownership and the non-disclosure of confidential information? Prior to engaging in discussions with third parties, are you putting non-disclosure agreements (NDAs) in place, and do those NDAs serve as a robust shield protecting your rights? Are all assignment documents, orchestrating the transfer of IP rights to your company, suitably worded? Before collaborating with others, have you got a contract that thoughtfully defines ownership of any IP that arises from the joint venture and sets out how your existing IP assets can be used? If the answer to any of these questions is no, it’s time to uncork the expertise of an IP attorney to ensure that no valuable IP rights are lost through poor paperwork.

7. Organise A Feast Of Knowledge For Colleagues On The World Of IP

It’s no good if you are completely clued up about all of the points above but your team is not! Make sure all of your team is IP-aware by organising some training to ensure that everyone follows the processes that you have put in place. Why not organise a learning lunch to explain the strategy, or arrange for an IP attorney to give some training on IP basics as a starting point?

8.       Sip Some Wisdom By Regularly Meeting With My IP Attorney

Telling your attorney about your new invention or brand just before you launch it is better than after-the-fact, but last-minute filings are often not the best. On the other hand, discussing new ideas with your attorney at the outset, even if they are just speculative, can help you to develop a good strategy and allocate time and expense where it’s needed. For example, if you are developing a new food product, your attorney will be able to advise on the type of experiments that will help to support a patent application further down the line. If you’re coming up with a new brand, your attorney can give you some pointers on what to avoid and even do quick checks on long lists of names to help you whittle them down. Having a regular coffee with your attorney can therefore help with project management and budgeting, as well as keeping you up to date with any developments in your portfolio or the competitor landscape.

Owning IP is undoubtedly valuable, but the real essence lies in leveraging it effectively. In the coming year, implement a robust protection and enforcement strategy.  Identify your key assets and crucial territories, and identify any third-party rights that may be a concern to you and your business. Having a strategy in place will enable you to take decisive action and focus resources on the key matters. The optimum effectiveness of IP portfolios is realised when these rights are strategically utilized.

Which IP resolutions will you adopt this year?

For any questions relating to the above, please contact the authors: Tanya Waller ([email protected]) and Jennifer Bailey ([email protected]).

This article was prepared by Partner & Patent Attorney Jennifer Bailey and Trade Mark Director Tanya Waller.