TOP TEN TIPS : How To Protect Your Business IP

Most New Zealand businesses fundamentally involve some form of intellectual property (IP) generation, development, and transfer. Here are some insights into how to safeguard your portfolio and maximise the full potential of one of your business’ most valuable assets.

Look at every new opportunity as stranger would. Put yourself in both your customer’s shoes and your competitor’s. Scrutinising your current portfolio from all angles can afford you the insight to identify both the strengths and possible vulnerabilities in your innovation asset portfolio. In doing so it is possible not only to develop strategies to mitigate weaknesses but also identify new opportunities for exploitation.

Have your patent attorney update you as to the IP actions of your competitors and new entrants to the market. In their simplest form patents, trade mark registrations and design registrations and their associated marking, such as the ® registered symbol and the terms ‘Patent Pending’ act as public notifications of rights and in most cases the sooner an infringing party or potentially infringing party is aware of your rights, the more effective and often economical it is to deter competition.

Contemplate as early as possible the geographic potential of your products and brands and identify those critical to your success. New Zealand is party to several international conventions which can provide substantial advantages in timing and cost. Several markets such as Europe and China operate first-to-file policy for registered trade mark rights, so it is critical that overseas markets are considered as soon as possible and before use there. It is not uncommon for unscrupulous manufacturers to visit trade shows in New Zealand, Europe and the United States before returning to their home market to apply for conflicting IP rights. The best preventative measure is to ensure that adequate protection is put in place ahead of time not only in key and potential sales markets but also in your operations and manufacturing base.

In challenging economic environment, licensing can offer win-win to businesses wanting to minimise R&D costs and IP owners wanting to unlock earning potential. The benefits of licensing innovations – rather than retaining them and honing them further – has considerations for and against; the rewards can be great but disclosure into the public domain has to be carefully timed and managed as in many scenarios once they are disclosed rights are held by fixed term. The cost of acquiring and enforcing IP rights internationally varies substantially and in some circumstances it may easier and more economical to license rights. Few businesses consider this option fully at the outset and therefore risk recreating the wheel.

Allow your patent attorney input into the value inherent in your brand choice. Strong trade marks and brands transcend product names and stylistic flourishes to become stamps of heritage, trust and reliability. Develop these distinctive brands as means to uniquely identify your business’ goods and services, rather than simply assigning tags or advertising messages. Brands with no primary meaning like Zespri, Mobil and Kodak are not only inherently memorable brands, they are often by their nature easier and therefore cheaper to protect and enforce.

Obtain specialist IP advice as early as possible in an innovative proposition to ensure appropriate protection is put in place prior to disclosure and to ensure you get the most out of your work.

Set in place an IP identification and capture process and undertake regular IP review processes. IP mining will not only assist you in accurately valuing your IP assets but can also highlight areas for development, exploitation and commercialisation.

Ensure your staff, contractors and suppliers understand their position regarding IP ownership. While it is understood in most scenarios that companies will retain any IP developed at work using company resources, laying down your expectations in employment contracts or to your supplier at the commencement of project can prevent future misunderstandings and minimise enforcement costs.

Keep quiet about new developments, improvements to technology or changes to your portfolio and ensure your staff do the same. Disclosure has the potential to invalidate patent and registered design rights and could give competitors the tools to compromise your company’s IP rights. Avoid confidential disclosure agreements (often wrongly termed as ‘Non-Disclosure-Agreements’ or NDAs) without first obtaining your patent attorney’s advice on implications and, in many cases, their limitations.

Use your IP review to ensure your business adheres to its long-term strategies. Registered trade mark rights have an infinite lifespan, provided number of basic conditions are met, including that they are used and that renewal fees are maintained. In New Zealand registered trade marks are due for renewal in 10-year intervals. Patents, registered trade marks and registered designs and other IP rights can all open the door for access to angel and venture capital, so careful decisions need to be made about what IP should be retained by your organisation and what the organisation is prepared to let go.

Philip Thoreau is patent attorney with Baldwins Intellectual Property.

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