In any business, the spend on intellectual property (IP) legal advice needs to be commensurate with the value and importance of IP to the business. There is no “one size fits all” model. In this first of a series of five articles, we explore some of the considerations to take into account. In later articles, we apply those considerations to three different business models.
For a more detailed discussion specific to you and your IP, please do reach out to us or one of our Abel + Imray colleagues.
Why have an IP strategy?
IP strategies can take different forms and serve different purposes. For example, an early-stage company may draw up a strategy to help investors understand its actions and plans for the future. Even for companies not seeking investment, an IP strategy can provide management with a convenient and efficient point of reference when making IP decisions, and in some cases a framework for delegation of responsibilities.
Asking the right questions
In general, patents are regional or national IP rights, each providing protection for a single inventive concept. A patent gives the holder the right to stop others from performing the claimed invention in that region or country. It does not give the holder the right to perform the claimed invention. For example, the owner of a patent for a new process of making polyethylene using a proprietary metallocene catalyst may still require the consent of the owner of the rights to that catalyst if they wish to make commercial use of their invention.
As a business develops its IP strategy, it will usually encompass both how to handle the IP of the business, and also how to manage the risk posed by the IP rights of third parties. At its heart, an IP strategy may come down to:
Keeping a commercial focus
A useful place to start when trying to answer those questions is with the commercial aims of the business. Take three businesses, for example:
1) A company developing, marketing and selling its technology itself
2) A company developing a technology for adoption by other businesses around the world
3) A start-up building a business attractive for take-over
Each of the businesses above presents a different challenge, and may require a different IP strategy. For example, let’s imagine one of your scientists develops a new way of making polyethylene. How could our three companies best protect their interests?
Company 1 that makes and sells its own products may decide to make and sell the polyethylene and keep the method secret, at least for a while.
Company 2 would likely seek to obtain patent protection for the method as soon as possible, obtaining granted and enforceable patent protection that would be attractive to potential manufacturers and/or users of the polyethylene.
Company 3 would also likely file a patent application, but it may not be as crucial, or even as advisable, for Company 3 to get a granted patent quickly. For example, a flexible IP portfolio may be more attractive to an acquirer than one where the decisions on territories and scope of protection have already been taken.
Getting into the examples
As can be seen from the simple scenario above, each company will likely require a different strategy. In the following four articles in this series, we will apply these practical considerations to the three companies, exploring how their strategy may take shape, both for handling their own IP and for that of others.
We are a European firm and assist our clients to protect their IP rights in the UK, Europe and worldwide from our offices in the UK and The Netherlands and through our international network of trusted local attorneys. Get in touch if you would like to discuss your innovations and brand protection further.
This article is part of a series, read more here:
Part 2: Matching your IP strategy to your commercial plan – ‘in-house commercialisation’
Part 3: Matching your IP strategy to your commercial plan – ‘technology licensing’
Part 4: Matching your IP strategy to your commercial plan – exit through acquisition
Part 5: Matching your IP strategy to your commercial plan – efficient decision making
Tom Turner Partner
Simon Haslam Of Counsel