Developing & implementing a commercially robust IP strategy

On 13 February 2020, Mathys & Squire hosted a seminar entitled ‘Developing & implementing a commercially robust IP strategy’. Here, Vicki

IP managers and decision makers for a number of var ying sized companies attended, all of whom rely on innovation to set them apar t 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 par tners Margaret Ar nott and Dani Kramer, who shared their exper tise in creating a for malised IP strategy; building a litigation strategy into business planning; and maximising the commercial value of IP.

Mr Edenborough kicked off the discussion, highlighting the impor tance of IP to business He obser ved that IP is still under valued by a majority of businesses, and that around 76% of companies do not have a for mal IP strategy. As repor ted in Mathys & Squire’s recent publication ‘Trends in IP litigation’, around 77% of companies have not perfor med a for mal 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 impor tant 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

Margaret Ar nott followed with some which provide the oppor tunity 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 ver y powerful, (quick and relatively cheap), for m 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

Whether or not a company deals in technical innovation, the message is clear: a robust IP strategy would include ensuring that all impor tant elements of your products/ser vices 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 perfor med an IP audit, develop an IP remember that contentious issues rarely progress to full cour t 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 o er?

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?

For further information about performing an IP audit, valuing your IP, oe developing a robust commercial IP strategy, contact:

Vicki Strachan

Patent Attorney & head of Mathys & Squire’s vjstrachan@mathys-squire com www.mathys-squire.com

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