SECTOR SPOTLIGHT:
Intellectual Property: the Importance of Protecting Intangible Assets or commercial deal. Know-how can be provided through on-going technical support. Technical drawings, the subject of copyright and often confidentiality can avoid the need to ‘re-create the wheel’.” A business with underused or improperly protected IP can lose the opportunity to leverage those assets. Mr Pullen stated that owning registered IP rights demonstrates R&D activity for grant and/or tax incentive purposes. “IP rights can also be used to raise valuable investment funding, such as from a bank, venture capital fund or private investors,” he continued. “IP rights, being a valuable asset of the business, may be used to ensure bank confidence and continued funding of the business in more troubled economic times.” “Failure to protect IP can allow other players to enter the market and/or copy unprotected products/services and branding.” “The rule of thumb is to protect and manage intellectual assets to maximise control. It’s about being in control of your business and market space for long term sustainability and value.” -----------------------------------------------------------------------Mark Pullen is a Principal at Watermark Intellectual Asset Management -----------------------------------------------------------------------Mr Pullen joined Watermark’s Perth office in 2000 having previously been a patent examiner in the UK patent office, and has worked in the UK railway industry and the Royal Navy. He has a degree in physics, majoring in medical physics. The firm Watermark has been helping innovators protect, manage and use their Intellectual Property for over 150 years. “We’ve succeeded because we’ve kept our advice and our strategies relevant to modern markets.” Founded by Edward Waters, considered by many to be the father of the patent attorney profession in Australia, Watermark now has offices in Melbourne, Perth and Sydney, and a network of associates worldwide. Watermark brings a fresh thinking, modern approach to patent and trademark attorney services, IP legal services, I.P. strategy services (e.g. searching, watches and IP landscape assessments), and R&D tax incentive consulting. “Watermark understands clients’ businesses and provides cost effective strategic intellectual asset management services,” commented Mr Pullen. “Watermark tailors its services to the needs of the client. This includes assessing freedom to operate issues, reviewing the IP landscape, identifying and protecting IP rights, providing IP education and updates for clients, and assisting clients to defend, enforce and utilise IP rights, such as through licensing.” He believes that the key skills required of an IP adviser are: “understanding a client’s business, its culture and its IP position, and providing commercially focused and cost effective IP advice to help sustain their business and help them to achieve their desired business goals”. The importance of IP Mr Pullen explained that IP rights not only play the traditional role of protecting core business, they also literally add value to the bottom line of the business as intellectual assets. They also provide leverage when negotiating with third parties, such as in licensing deals and joint ventures (JVs). Discussing the importance of IP due diligence in corporate transactions, Mr Pullen noted that Watermark can identify the intellectual assets within the business to maximise the business’ position and value. “Overlooked or unmanaged IP rights do not add value to negotiations, and may cause problems later on, such as if valuations or agreements need subsequent amending or updating,” he observed. “At the very least, additional administrative costs are likely to be incurred, and at worst,
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one party may lose confidence and trust in the other thereby putting successful conclusion to a transaction at risk.” He added that due diligence is also needed to ensure freedom to operate in each jurisdiction, stating that understanding the quantum and quality of the IP rights can be vital to a business transaction and on-going sustainability of business operations. “Understanding the current IP landscape is vital when expanding into new territories where third party IP rights can exist that may prevent or restrict entry into a market,” continued Mr Pullen. “Who currently owns rights? What are those rights and what are their limitations? These are essential questions that should be answered before entering a new market.” Many businesses have not integrated intellectual assets into their business strategy, which, according to Mr Pullen, is key to ensuring value-add in a cost effective and commercially useful way. He listed the following key steps to begin effectively integrating IP in a business: identification; protection; management; and utilisation. He added that it is necessary to have one or more personnel in a business with a defined role of ensuring intellectual assets are identified and captured. “This is achieved through regular staff-management/R&D or marketing team meetings with someone tasked with assessing latest IP developments. Staff questionnaires can be used. Marketing staff can be trained to recognise new trade-marks and ensure they are protected to prevent competitors encroaching on those marks.” “Timing can be everything. Launching a new product or service too early can lead to loss of IP rights and market/ product leverage if protection is not put in place in time.” “Watermark’s information services can conduct searches to ensure freedom to operate.”
15th April 2013 heralds the introduction of the ‘Raising the Bar’ legislation in Australia. The changes primarily affect the Patents and Trade Marks Acts. “This aims to improve the standards and processes for granting rights under those Acts,” said Mr Pullen. “How well that will work in practice remains to be seen.” A wider view of innovation “Innovation is often viewed from close to a business or industry sector. We can take a long step back and see innovation more widely, as a driver of industry and a nation’s economy. Step further back and you realise innovation is a driver of social change and prosperity.” “Take for example the revolution of steam railways displacing canals and horse drawn freight. Imported goods, particularly perishable goods, could now reach into the country within a few hours rather than days or weeks. And for the first time, steam railways enabled the masses to travel long distances in a relatively short time. Holidays to the coast were born. The famous Thomas Cook began his travel agency services as a result of steam railways.” “Consider the invention of the mobile telephone, a step change in communication. When was the last time you used a public telephone box. It’s something we have adopted and take almost for granted in a very short span of time, and yet mobile personal communication has completely changed our working and personal lives.” “Innovation drives industry, commerce, national economies and social change/aspiration. Intellectual assets and IP rights help support those innovative technological and commercial advances by providing protection and an opportunity to generate a return and/or market space for a business in exchange for the valuable contribution they make. Watermark plays its own small but significant part in these endeavours,” concluded Mr Pullen.
Commenting on the exploitation and management of intellectual property, Mr Pullen noted that registered IP is often used in licensing and commercial agreements. A third party is granted rights for a period of time to use the IP in return for a revenue stream or other benefit back to the business. “Control over an area of technology or product range through patents is complemented with strong trademark/ brand presence and reputation for rapid market take up of a new product,” he explained. “Know-how, confidential information and copyright works can also be used to win or negotiate leverage in a licensing
Company: Watermark Intellectual Asset Management Name: Mark Pullen Email: m.pullen@watermark.com.au Web: www.watermark.com.au Address: 362 Rokeby Rd, Subiaco 6008, Australia Telephone: +61 (0) 8 9325 1900
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