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BUSINESS MANAGEMENT
Getting IP savvy: Managing IP in business for a competitive advantage Intellectual property (IP) assets are the property of a business just like tangible assets such as commercial property, inventory, equipment or vehicles. As with physical assets, managing your IP assets effectively promotes competitive advantage, helps establish market presence and assists to increase value to your business. By Shu-Yen Lee. Intellectual property is a broad term that covers a range of intangible assets resulting from creations of the mind, such as inventions, literary works or videos. In a business context, IP arises from the creativity of employees and/or owners, such as text and images on websites, manuals and other documents, inventive processes, products or brand names – just to name a few.
The IP audit
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IP can be registrable and nonregistrable, and both types have Trademarks their uses and their place in Patents managing a business. Examples of non-registrable IP may include components such as computer copyright, circuit layout rights, trade secrets chips, integrated circuits or personal and confidential information, while registrable computers. Like copyright, they are IP encompasses patents, registered designs, automatic rights and are not registrable. trade marks and plant breeder’s rights. • Trade Secrets generally comprise The following list provides a brief description information that enables an economic of the main IP types: advantage over competitors but that is • Patents are registrable rights that protect not easily ascertainable from the product the functionality of a product or process, sold, such as a formula, process, i.e. the way it works, such as the pattern or method. By definition, trade working of an engine or manufacturing secrets are not publicly disclosed and process. are therefore are not registrable. The Coca Cola recipe is an example of a • Registered Trade Marks provide trade secret that was not disclosed for protection for the words, logo or decades. symbols that you use to distinguish your products from others in the marketplace, • Confidential Information is information also known as a ‘brand name’. Trade that is not publicly available for the marks can be registered for business furthering of a specific purpose and is names, product names or domain valuable to a business, such as client names. lists, know-how, business operation and strategies, pricing, marketing, or • Registered Designs protect the research & development (R&D) work. overall visual appearance of products. Confidential information can include Examples of protected designs trade secrets. include clothing, textile designs, car components or any Apple products; Multiple IP rights can provide layers of protection for a business’ valuable IP assets. • Plant Breeder’s Rights are a registrable For example, a business can have copyright, right that protects plant varieties that are confidential information and trade secrets new, distinct and stable, such as new to protect its strategies and operation, varieties of apples or potatoes. marketing, R&D work and client information, • Copyright protects the expression of an as well as multiple registrable rights to protect idea, such as original creative works. their products and processes. For example, Copyright is an automatic right that a car manufacturing company may have one commences once the original creative or more patents protecting the working of the work is created and is not registrable engines or other components, trade marks in Australia. Examples of copyright in for the car’s name and logo, and registered the workplace include text on websites, designs to protect the car’s visual shape. It is manuals, CAD drawings, work videos or often recommended to use multiple IP rights photos, and software code. to provide layers of protection for the valuable • Circuit Layout rights specifically protect IP assets of a business. layout plans or designs of electronic
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To find out what IP you own in your business, you can conduct an IP audit – also known as ‘IP due diligence’. The IP audit is performed with the goal of reviewing all the IP in the business, who owns the IP, and its value. The IP audit should be conducted with a registered patent attorney and representatives from the business in marketing, R&D and management. In particular, an IP audit seeks to identify the IP and establish a database or register containing information including: • A description and value of each IP asset. • The owner of the IP and any issues concerning ownership. • The inventors or authors. • Associated agreements or contracts, or potential agreements or contracts that will be needed. • Registered IP right status, i.e. patents, trade marks or designs, or what may be needed to protect those IP rights. • Potential licensing and associated agreements. • Plans/Strategies for exploitation and maintenance of the IP assets. Once this IP database is established, the information can be utilised as part of the organisation’s overall business plan, in particular to: • Analyse the IP and ensure it fits within the organisation’s objectives. • Determine what action or strategies are to be developed and taken. • Make recommendations to ensure the IP assets are adequately protected and to reduce protection where IP is not used. • Ensure continuity in the business in respect of the IP. In summary, managing the IP assets in a business can be a valuable tool to maximising value and potential in your innovative products and processes, and is an important part of an overall business management plan. Shu-Yen Lee is an Associate, Patent and Trade Mark Attorney at mdp patent and trade mark attorneys. www.mdppatents.com.au