Developing & implementing a commercially robust IP strategy

In this article for Business & Innovation Magazine, we summarise Mathys & Squire’s recent seminar entitled ‘Developing & implementing a commercially robust IP strategy’.

IP managers and decision makers for a number of varying sized companies attended, all of whom rely on innovation to set them apart from their competitors and ensure that they continue to prosper and grow.

We were delighted to welcome our guest speaker, Michael Edenborough QC – a seasoned silk and IP barrister who has been in practice for over 25 years. He was joined by Mathys & Squire partners Margaret Arnott and Dani Kramer, who shared their expertise in creating a formalised IP strategy; building a litigation strategy into business planning; and maximising the commercial value of IP.

Mr Edenborough kicked off the discussion, highlighting the importance of IP to business. He observed that IP is still undervalued by a majority of businesses, and that around 76% of companies do not have a formal IP strategy. As reported in Mathys & Squire’s recent publication ‘Trends in IP litigation’, around 77% of companies have not performed a formal IP audit and, as such, may not be cognisant of all of their IP. Registered rights, such as patents, registered designs and registered trade marks are reasonably easy to list. However, unregistered rights are often overlooked and, in many cases, are just as (if not more) valuable. These include know-how and trade secrets, which may be intangible but can be crucial to a business so it is important to recognise their full extent and include in your IP strategy a means for protecting/safeguarding them.

Mr Edenborough closed with his top tips for a robust commercial IP strategy in the form of ‘the five Es (see below).

Margaret Arnott followed with some advice relating specifically to trade marks, which provide the opportunity for strategic management. She recommended taking an ‘outside the box’ approach – in other words, don’t just consider ‘traditional’ marks, but think about whether there are other elements of your commercial ‘get up’ that could and should be protected to optimise your market position (e.g. the red soles of Christian Louboutin shoes).

Finally, Dani Kramer discussed registered designs, which protect the appearance of products. He explained that these rights are often under-utilised and overlooked, but that they can be a very powerful, (quick and relatively cheap), form of protection that can be enforced against early competitors and copycats. Registered design protection can be considered for more than just a product itself, but also for packaging, user interfaces, icons, logos and patterns/surface finish.

Whether or not a company deals in technical innovation, the message is clear: a robust IP strategy would include ensuring that all important elements of your products/services are covered by registered rights such as patents, registered designs, and registered trade marks, but also ensure that you know what unregistered IP rights you have, and how to protect/safeguard them. Once you have performed an IP audit, develop an IP strategy following the five Es, and final, remember that contentious issues rarely progress to full court proceedings: there are many different litigation strategies available that can be conducted and concluded at relatively little cost.

IP strategy – the basics

• Perform an IP audit (updated regularly) so that you know exactly what IP you have
• Use and protect what you now know you have or will have
• Leverage what you have to its fullest extent
• Consider the five ‘Es’:

Education: ensure you know what you have, how to identify elements of IP, and when protection is required.

Entitlement: who owns the IP? Contractors? Joint Venture? Collaboration Agreement?

Exploitation: are you going to manufacture? Or license? If licensing, what type of license will you offer?

Enforcement: do you have a strategy in place for identifying and quickly dealing with infringement of your rights?

Evasion: what do you do to ensure that you are not infringing others’ IP rights?

This article was first published in Business & Innovation Magazine in March 2020.