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Part 3 – The big question: to protect your IP or not?

In the second article of this series, we provided tips on how to get the intellectual property (IP) strategy for your business right from the outset.  We emphasised that early identification and capture of your IP is vital if you want to maximise its commercial potential and avoid making mistakes that cost you dearly down the track.

In this article, we deal with the question that is perhaps most often asked when it comes to IP – whether or not to protect it. The short answer is it depends on several factors including the type of business or organisation, its objectives, strategy and budget – and this is just the beginning of the conversation!

Understanding the basics of IP

For context, let’s cover off some fundamentals.

Intellectual property embodies the ownership of intangible creations of the mind – the innovative idea behind a new technology or the design or shape of a product, for example.  Although intangible, the law recognises intellectual property as a form of property which can be sold, licensed, transferred, damaged or trespassed upon in the same way that tangible property can be, such as land.

It is important that both the scope and ownership of intellectual property are clearly defined to enable the legal rights of the owner to be enforced.  Such rights fall into two broad categories: registered and unregistered. 

Registered and unregistered IP rights

Registered IP rights, as the name suggests, involves a formal registration process and includes things like patents, registered designs and trade marks.  Unregistered IP rights are automatically accrued and include things like copyright, confidential information and trade secrets.  Whether registered or unregistered, each IP right provides a different form, duration and scope of protection.

Encapsulating the value of intellectual property into your overall strategy will help determine how best to approach questions of IP protection and management, and what forms of protection are fit for purpose.

What’s the driver for protection?

Doing your homework and getting good advice will go a long way toward helping you make the right decisions for the right reasons, at the right time.

Next, understand why you want or need to protect your IP.  Is it to leverage your business to create new sources of revenue? To deter competitors from copying aspects of your business or technology?  To distinguish your product or services in the market?  Appeal to potential buyers or investors? Maybe it’s to enhance your ability to monetise R&D?  Or to provide a window of opportunity to build sales momentum? It’s probable that you’ll discover there is more than one good reason to consider formal protection.

Be IP savvy

Get good advice and be smart about your IP strategy.  Use the process to sharpen your thinking around competitors and the market in which you operate, and carefully weigh the benefits and costs of different forms of protection against the backdrop of your overarching strategy.  A wealth of competitive intelligence and insights can be gleaned from the IP system just by knowing what to look at, or for.

Think and plan big picture

Recognise that intellectual property evolves over time, and that IP rights are jurisdictional. Try to take a long view of your business and consider your marketing and distribution strategies also.  What jurisdictions or markets do you plan to launch in, and when?  Where are your suppliers or partners located? What does your product or service roadmap look like?  All these variables will have a part to play in deciding on the right protection strategy for your business. 

Assess your risk position

Engage an IP expert to help you identify any infringement risks upfront.  This may require something as simple as searching a trade mark register to identify similar or identical brand names – or it could extend to conducting a more comprehensive patent or freedom to operate search. This is particularly important before entering a new export market. The important thing is to recognise that it’s possible to avoid costly legal complications if you do your homework and assess infringement risk early on.

Remember, IP rights are only one piece of a complex jigsaw puzzle.  The more you understand about the nuances, costs and benefits of different forms of protection and how to extract maximum commercial value from them, the better the decisions you will likely make around protection.

Ceri Wells is a founding partner of national intellectual property law experts James & Wells. He has been involved in patent drafting, litigation, trade mark ownership, unfair competition and copyright matters for around 30 years and specialises in working with start-up companies, venture capitalists and seed-funding organisations to encourage and commercialise NZ innovation. For more info visit www.jaws.co.nz or email Ceri at [email protected]

Ceri Wells has been involved in patent drafting, litigation, trade mark ownership, unfair competition and copyright matters for 30 years. He’s passionate about making sure business get the best possible bang for their innovative buck.

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