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Tips and tricks: an in-house counsel’s guide to IP protection

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Published Date: July 1, 2024

The responsibility for the management of an 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:

  1. Know the business. Understand which types of intellectual property your company generates. For instance, does your company produce pharmaceutical products or create manufacturing methods for which patents, know-how, and trade marks all feature? Or is the FMCG sector primarily the field in which your company operates, in which trade marks 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.
  2. 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 and potential risks associated with a business’s IP portfolio. Once you have a clearer understanding of the nature of the IP owned by your business, you will be better placed to draft a meaningful and realistic IP budget.
  3. 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.
  4. 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 and create a common goal to work towards. This can be achieved by providing training on the value of IP, demonstrating how IP initiatives align with the company’s business goals and strategy, quantifying the ROI of IP by presenting data and case studies, highlighting the risk of inaction associated with neglecting or undervaluing IP, and developing a comprehensive business case for specific IP initiatives (outline costs, benefits, risks, and timelines).
  5. Establish an IP Management framework. An 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.
  6. 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 trade marks, 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.
  7. IP training/education. Fostering a strong culture of IP awareness throughout your company is one of your key responsibilities. You play a vital role in creating and implementing continuous professional development programs for inventors and stakeholders across relevant departments. For instance, R&D teams need to be coached on identifying patentable inventions and following proper documentation procedures, as well as the risks of premature or inadvertent disclosure prior to protection being obtained. 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.
  8. Outside counsel. Should you find that it is necessary to use the services of outside law firms to manage your IP portfolio, it is strongly recommended that you engage the services of attorneys who are experts in their field. Experienced IP attorneys can play a critical role in protecting, maximising, and strategically managing IP assets, ultimately, contributing to the organisation’s success and competitive advantage.

Safeguarding your company’s IP is a multifaceted task that requires careful planning, strategic thinking, and proactive management. An in-house counsel tasked with this responsibility holds a pivotal role in ensuring the protection and optimisation of your company’s IP assets. By following the tips and tricks outlined above, you can navigate the complexities of IP management with confidence.

Melissa Morris
Senior Associate | Trade Mark Attorney

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