Abel & Imray Patent Attorney: expert advice on extracting value from your intellectual property
All companies, but especially life science companies, have intellectual property, such as inventions, trade secrets, know how, brands, trademarks, designs, copyright material and patents. Companies can easily extract more value from their IP, but it takes extra effort. Here are thirteen top tips to extract more value from IP.
(1) Understand what IP your company has. This may require some form of audit in conjunction with your patent attorney.
(2) Identify whether your company owns that IP. If not, do you want to take steps to ensure that you own the IP? In some cases, you may not want to own the IP, but you will probably want to ensure that you have the right to use it.
(3) Take a view on how you can best protect your IP. Should you file a patent application? If you do that, the invention will inevitably be put into the public domain long before a patent is granted. Should you keep an invention secret? Is that practical or sensible, given the nature of the invention?
(4) Consider freedom to operate issues. Investors will often care more about FTO than the ability of the company to protect its IP. Keep any FTO investigations proportionate to the investment to be made.
(5) All forms of registered IP protection are territorial. Be aware of your key markets and those of your competitors. Be realistic about the returns you are going to get by having a patent in a particular country.
(6) Have an idea of the inherent worth of the IP. For example, is your patent application for an improvement invention which is merely one of many alternative ways of doing something? Or is it a ground-breaking new invention? If it is ground-breaking, are there barriers that will stop you from getting the invention to market?
(7) Have an idea of how you are going to get your invention to market. How far is your invention from the marketplace? Registered rights allow you to stop others from using your invention. But stopping third parties from using your invention will not, by itself, make you money. Who do you need to “buy-in” to your invention to get it to market?
(8) Understand the technology sector you are in. Some technology sectors are very conservative and unwilling to adopt new technologies.
(9) Regularly review your IP portfolio. This will help you to understand what IP you have. It will also help prevent unwanted/unnecessary expenditure, for example, on patents that no are no longer of any interest/use to you.
(10) Choose your professional advisors wisely. A patent attorney specialising in your technical area will be able to maximise the protection for your invention. Have a good relationship with your advisors.
(11) Do your due diligence on potential collaborators/investors. Can they get you to where you want to go?
(12) Have a plan/strategy. Consider how you are going to make money from the IP. Can you licence per market sector, by product type, by country? Consider an exit strategy and what will happen to the IP when you “exit”.
(13) Mark it up! Let everyone know the position regarding your IP. (R) if you have a registered trade mark, TM if it is an unregistered trade mark, Patent Application XYZ if it is the subject of a patent application. But no fibbing! It’s a criminal offence (albeit a rather minor one) to mark something as being patented when it’s not or being subject to a trade mark registration when it is not.
This expert advice was written by Simon Haslam, a senior associate at Abel & Imray patent and trade mark attorneys.
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