This is the next blog in the series, which looks at how innovative companies like yours can ensure your intellectual property (IP) approach is aligned to your commercial goals using Potter Clarkson’s Next 100 Days guide.
Here, we look at the first of the four steps outlined in the guide – reviewing your current position. Covid-19 has created a new operating environment for businesses, and it is vital to look at your IP position in the context of the existing situation. How thoroughly and accurately you can crystallise your current IP position will ensure any subsequent actions you take have the maximum effect.
To do this, we have developed a framework for conducting a comprehensive review.
Existing Assets – understand what you have
Try to get a handle on all known types of IP your company owns – patents, trade marks, registered designs, to name the main asset classes. If you do not have a directory of this already, develop one to collate all the information in one place. Next, compare it with your key projects and brands to see if it is aligned to your commercial priorities. As well as looking for gaps in protection, are there savings to be made by allowing some IP assets to lapse?
If your business has been forced to make practical changes due to Covid-19, make sure your IP is still on point – for example, for trade marks if your goods and services are now offered digitally, consider if additional classes need to be registered.
Procedures – are they fit for purpose in the new environment?
IP capture and the process of obtaining the rights is, or should be, driven by procedures. Make sure that your previous procedures measure up to the operational and financial pressures placed on your company by the pandemic. For example, consider how your approach to innovation capture might need to be adapted, especially with employees working remotely. Additionally, many IP offices around the world are offering extensions – ask your advisor if these apply to you and could be used to help you prioritise resources.
Pipeline – identify priority projects
Take a step back from the minutiae of your business and try to gain a clear picture of all pipeline activity. For example, what known innovations have been developed and might need to be patented soon, or have you got a brand on the cusp of being launched which might need a trade mark clearance search or a trade mark registered to protect.
Resources – ensuring you can make things happen
To varying degrees, the pandemic is placing pressure on resources, both in terms of personnel and finances. Consider how this might affect your ability to deliver key projects in the short to medium term. If you foresee potential pinch points, consider if external consultants can help to fill any of the gaps.
Stakeholders – evaluate your collaborations and partnerships
Most companies do not go it alone, and have other stakeholders (such as collaborators, licensing partners, and a supply chain) that they rely upon, and who will also be affected by the pandemic. Check that any contacts are as you want them to be and give appropriate rights under the current circumstances. If they do not, then this may be an appropriate opportunity to leverage a variation to the agreement. If the current conditions are forcing you to operate (such as to manufacture) in a new location, ensure that you have a handle on how any geographical restrictions on your IP rights fit with these new plans and whether those plans might lead to any infringement issues with others’ rights.
Macro-economic context – look beyond your business
It is hard to avoid the reality that as the pandemic unfolds around the world, it is bringing economic, political, technological, and social change. It would be wise to consider how these changes may manifest and impact on your IP position. For example, if the economic uncertainty continues for some time will this affect how you can fund your innovation projects? Will social distancing and sustained remote working have any implications for your key innovation projects?
By considering these six areas in the context of your business, you will form an excellent overview of your current IP position in these difficult times.
In my next blog, I will move onto the next step – consolidate, where we will look at prioritising key projects and rationalising the development pipeline.
Author Richard Wells, patent attorney at Potter Clarkson richard.wells@potterclarkson.com.
