Part 5: Matching your IP strategy to your commercial plan – efficient decision making

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 the first four articles of this series, we provided an overview of IP strategy considerations, and then applied them to companies planning to commercialise technology themselves, licensing it to third parties, or exit through acquisition.

In this fifth and final article, we discuss efficient decision making in relation to your IP.

For a more detailed discussion specific to you and your IP, please do reach out to us or one of our Abel + Imray colleagues.

Recap - 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.

Efficient decision making

Innovators keep on innovating, often meaning that someone has to keep on deciding how to protect new innovations. To avoid repetition of complex, drawn-out analyses, it can be useful to establish a classification system for new inventions.

For example, a tier system could be established, giving a default set of decisions for inventions according to their tier. Inventions that offer a unique selling point to all products or services offered by a business may be in the highest tier, and so may be filed in the most locations and may attract the most investment of time and effort in securing broad patent protection. Those that provide only a small improvement, or are relevant only to a small range or products or services may be classified in a lower tier, for example defaulting to patent protection in a smaller number of countries.

For a company developing a new chemical recycling process, a top tier invention may, for example, be an alteration to the reactor design that provides a 10% improvement in recovery of the highest value output stream. On the other hand, a lower tier invention may be a modification to the product handling system that overcomes problems of certain product transfer lines clogging when equipment is operated in winter in cold climates.

The same logic can apply to freedom to operate – it may be best to focus most attention on those aspects of your technology that are key to your products. There can also be cross-overs between strategies for protecting inventions and freedom to operate. For example, if you have made a change to your product design that means that a previously important invention now seems to have less commercial value, the patent rights you hold to that invention may still be of interest to a third party, improving your bargaining position if that third party holds IP rights that are limiting your freedom to operate.

Whatever the approach taken by a business to help inform IP decisions, it is important that it keeps up with changes in the interests of the business. For example, any ‘default’ decisions (such as typical countries for patent protection, the importance ascribed to inventions etc.) are best reviewed at regular intervals so that the IP strategy does not become trapped in the past.

Summary

The intention of this series of articles was to explore some of the ways in which an IP strategy can reflect the commercial aims of a business. Hopefully it will have also explored how an IP strategy is more than a document only ever read by investors, and rather a way of helping decision makers reach informed choices efficiently.

IP strategies vary not only business to business, but year to year. At Abel + Imray, we would be more than happy to help you make yours work for you.

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 1: Matching your IP strategy to your commercial plan – making the most of your resources

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