Melissa Morris | Senior Associate | Adams and Adams | mail me |
The responsibility for the management of an intellectual property (IP) portfolio for any business is a daunting task. For that reason, many entities create a dedicated position within their broader legal team to oversee and safeguard their IP.
Having been thrown into this role myself in my career, I have compiled a list of a few tips and tricks which may stand you in good stead on your first day on the job as in-house counsel, tasked with protecting your company’s IP.
Know the business
Understand which types of IP your company generates. For instance, does your company produce pharmaceutical products or create manufacturing methods for which patents, know-how, and trademarks all feature?
Or is the FMCG sector primarily the field in which your company operates, in which trademarks and copyright in packaging are the name of the game?
Understanding the nature of the goods/services which your company offers is the first step to knowing what to protect.
Perform an IP audit/due diligence
An IP audit is a thorough review and analysis of a business’s IP assets. The purpose of an audit is to assess the value of a business’s IP portfolio. It also identifies potential risks associated with these assets.
Gaining a clear understanding of your business’s IP helps significantly. With this insight, you can draft a meaningful and realistic IP budget more effectively.
Draft an IP budget
An IP budget is a financial plan that outlines the projected expenses associated with managing, protecting, and enforcing a company’s IP assets.
Typically, the costs would include filing and registration fees, maintenance fees, enforcement and litigation costs, licensing and royalties, monitoring and surveillance, and training and education.
An effective IP budget would help your company to allocate resources strategically, prioritise key initiatives, and ensure that the IP assets are managed effectively while optimising cost-efficiency.
Get buy-in from the broader leadership team
A company’s leadership team needs to understand why an effective IP budget will lead to revenue growth.
It is important to educate your team on the return on investment (ROI) of IP assets. Create a common goal to work towards together. Provide training to convey the value of IP. Demonstrate how IP initiatives align with the company’s business goals and strategy. Quantify the ROI of IP by presenting relevant data and case studies. Highlight the risk of inaction when IP is neglected or undervalued. Develop a comprehensive business case for specific IP initiatives. Outline costs, benefits, risks and timelines for these initiatives.
Establish an IP Management framework
Establish an IP Management frameworkAn IP management framework is a structured set of guidelines that an organisation follows to identify, protect, manage, and exploit its IP assets. It includes policies, procedures, and practices designed to maximise the value of IP within an organisation.
It is important for you to establish clear policies and procedures for the creation, protection, and management of IP assets. Define roles and responsibilities for IP management, separating the components of IP, including IP creation, filing, enforcement, and compliance and assigning a dedicated person to each role.
Risk management
Naturally, overseeing the overall IP portfolio of your company will both come with its benefits and risks. Risk management means assessing potential hazards and deciding on the most effective ways to deal with them.
A serious risk that may be encountered with IP is accidentally infringing a third party’s rights while conducting business. There are, however, several other IP risks to consider, each of which may take a different form, for example: employees using mobile devices containing company secrets; important product developments not being adequately protected; narrowly defining IP and overlooking valuable assets; and counterfeit products entering the market.
You will need to develop strategies for protecting IP assets, including filing applications for patents and trademarks, and taking transfer of and safeguarding copyright, as necessary. In addition, you will need to implement measures to safeguard trade secrets and confidential information, such as non-disclosure agreements and access controls.
Implementing systems for monitoring and detecting potential infringement or misuse of IP assets and developing protocols or enforcing IP rights is also crucial.
IP training/education
IP training/educationFostering a strong culture of IP awareness throughout your company is one of your key responsibilities.
You play a vital role in creating continuous professional development programs. Implement these programs for inventors and stakeholders in relevant departments. For example, coach R&D teams to identify patentable inventions. Guide them on following proper documentation procedures. Highlight the risks of premature or inadvertent disclosure before securing protection.
Similarly, marketing and brand representatives should be informed about projecting the company’s brand identity effectively in the market. Regularly reviewing everyone’s contribution to reinforcing the overarching IP strategy will benefit the entire enterprise.
Outside counsel
If you need outside law firms to manage your IP portfolio, choose expert attorneys. Engaging experienced IP attorneys is strongly recommended. They play a critical role in protecting and maximising IP assets. Skilled IP attorneys can also strategically manage assets, boosting your organisation’s success and competitive advantage.
Safeguarding your company’s IP is a multifaceted task. It requires careful planning, strategic thinking and proactive management. As in-house counsel, you hold a pivotal role in protecting IP assets. You are responsible for optimising your company’s IP. By following the outlined tips, you can navigate IP management complexities confidently.
Related FAQs: In-house IP portfolio management
Q: What is in-house IP portfolio management?
A: In-house IP portfolio management refers to the strategic oversight and administration of an organisation’s intellectual property assets, including patents, trademarks and copyrights, by its internal legal team. This approach to IP management ensures that the organisation’s IP assets are effectively protected and aligned with business strategy.
Q: Why is effective IP management essential for businesses?
A: Effective IP management is essential because it helps organisations safeguard their intellectual property assets, enhances competitive advantage and ensures compliance with IP laws. This management aims to maximise the value of IP assets while minimising risks associated with infringement or mismanagement.
Q: What types of intellectual property are typically included in an IP portfolio?
A: An IP portfolio typically includes various types of intellectual property such as patents, trademarks, trade marks, copyrights and trade secrets. Each type of IP serves a different purpose and requires specific management strategies.
Q: How do in-house legal teams contribute to IP portfolio management?
A: In-house legal teams play a crucial role in IP portfolio management by providing legal advice, developing IP policies and ensuring that the organisation’s IP assets are properly protected and utilised. Their expertise is vital for navigating the complexities of IP law and implementing a holistic approach to IP management.
Q: What is a holistic approach to IP management?
A: A holistic approach to IP management involves integrating all aspects of intellectual property into the overall business strategy. This means considering how IP assets can support business objectives, ensuring comprehensive IP protection and fostering collaboration among various departments within the organisation.
Q: How can organisations identify and assess their IP assets?
A: Organisations can identify and assess their IP assets through regular audits and evaluations of their existing IP portfolio. This process often involves collaboration with IP professionals who can analyse the nature of IP law and determine the strength and value of each asset in relation to the business strategy.
Q: What are the benefits of managing intellectual property in-house?
A: Managing intellectual property in-house allows for greater control over IP assets, faster decision-making and reduced costs associated with external IP services. It also facilitates closer alignment between the legal team and other business units, enhancing the overall effectiveness of IP management.
Q: What role do external IP services play in in-house management?
A: External IP services can complement in-house management by providing specialised expertise, resources and support for complex IP matters. While in-house legal teams handle day-to-day management, external professionals can assist with litigation, licensing negotiations and other specialised areas of intellectual property law.
Q: How often should an organisation review its IP portfolio?
A: Organisations should review their IP portfolio regularly, ideally on an annual basis or whenever there are significant changes in business strategy or market conditions. Regular reviews help ensure that IP management identifies any potential threats or opportunities related to the organisation’s intellectual property assets.
