Building an Intellectual Property strategy

Murgitroyd’s Graham Murnane takes you through the key areas to consider when devising an intellectual property strategy for your business.

WHERE TO START

You should bear in mind firstly that there is no “one size fits all” strategy as far as intellectual property (IP) is concerned. Your strategy should be carefully tailored to the needs of your business.

You should think about the industry and market sector in which you are active, the level of risk you want to take, what financial means you have at your disposal and whether your IP portfolio is to be used as leverage when seeking finance.

IP STRATEGY GUIDE

The guide below outlines key IP areas of focus and what you should consider in each area.

Trade Marks

• What trade marks do you use or plan to use? Do you want to have exclusive rights in the brand names? Are you offering a range of products or services under one “family” brand?
• Get professional advice on choosing distinctive word and logo trade marks.
• Carry out searches to check that using your marks won’t infringe the rights of other parties.
• Register the important marks in the countries where you want protection.
• Check the markets and take action to stop others using your marks.

Patents

• If your business involves developing new products and services with a technical element, patents may offer the best protection.
• Introduce a “new invention” procedure, perhaps with inventor rewards, to identify innovations at an early stage so that you can make effective decisions about patent protection.
• Educate your staff on the importance of confidentiality.
• Protect important technical innovations through patents, optionally after carrying out patent searches to check if the idea is patentable.
• Do you have key competitors abroad? If so, consider patenting in their home countries as well as in your major overseas markets.
• Budget for ongoing costs over the 20 year life of a patent.

Design Rights

• In creative industries where product appearance is important, consider registered design protection. This can be a cost effective way of protecting multiple different designs.
• Keep records of all new designs.
• Establish a review procedure to decide at an early stage if and where a new design should be protected by registration, or whether it is sufficient to rely on unregistered design rights (UDR). UDR is a free right which lasts for 10 years in the UK and provides useful protection against direct copying.

Other Key Areas

• Check who owns the copyright in material you use.
• Protect confidential information within your business.
• An IP audit can help you identify all your business’s valuable information and develop an IP strategy. Contact Murgitroyd for more information.

Graham Murnane is a qualified UK and European Patent Attorney based in Murgitroyd’s Glasgow office and holds the position of Director, Patents. If you have any questions, please get in touch via email or on Twitter using @Murgitroyd.