Do you have an IP Strategy?

How do you leverage the Value of your IP Assets? This IP strategy checklist outlines how companies can create a proactive plan to protect their innovations and avoid infringing the IP rights of others.

As the economy shifts towards a knowledge-based economy, Intellectual Property (“IP”) assets are becoming increasingly important as key business assets. According to economists and business leaders, intangible assets such as IP assets account for between 70-90% of the market value of publicly traded.

IP rights are therefore legal assets that should be invested in and used as part of a business strategy to produce business assets with commercial value. A company’s innovation strategy should include understanding how IP assets can align with their business strategy.

With a clear inventory of your IP assets, you will be well positioned to begin working with qualified IP counsel to develop a strategic plan for your IP that will allow you to fully realize the commercial value of your innovation.

This checklist includes everything you need to know:

Patents
Trademarks
Registered Designs
Trade Secrets

PATENTS

Patents protect how something works. If your technology has features that are both new and essential to its operation, patent protection may be available.

Protect the Company’s Technology:

Assess whether the new and essential features provide an advantage that is commercially relevant (for example, improved efficiency, less steps, easier or less expensive manufacturing, etc.).

Implement an Invention Disclosure submission process to bring new innovations to the attention of management (for example, head of engineering or CTO) and legal counsel.

Establish a schedule for regularly reviewing your technology development and invention disclosure submissions for features that would provide a competitive advantage in your market. If these features are new and inventive, consider pursuing patent protection.

Consider where you and your competitors are most likely to make, use and sell your products or services incorporating your technology. Obtaining foreign patent protection may be advisable given the relatively small size of the Singapore market.

Mark products with the serial number of each issued patent that protects the product or its use.

Ensuring the company’s Freedom to Operate

Search and evaluate patents owned by third parties that may cover a product or service that you are considering commercializing. If a potentially problematic patent is identified, work with your legal counsel to develop a strategy to avoid infringement and to minimize the company’s patent litigation risk.

Enforcing your patents:

Periodically survey competing products and services to see if they are using your patented technology.

TRADEMARKS

Protect your brand. Every name and distinguishing feature of what you sell may be protected as a trademark to establish a brand identity and foster brand loyalty.

Create a Process

Implement a process for creating trade names, advertising slogans, packaging, etc. that you use in order to establish a recognizable corporate image for your products and services that is distinct and resonates with your consumers.

Engage in early trademark searching

Before selecting a new product name and logo or expanding an existing brand, consider conducting a trademark search to avoid names and designs already used by others. The costs of rebranding a product already launched or defending against a possible trademark infringement lawsuit can be prohibitively expensive compared to the costs of the search.

Prioritize your most valuable trademarks

Obtaining trademarks can be a costly endeavour especially when filed overseas. It may not make commercial sense to file for every single trademark in your suite of brands. Instead, file a trademark application for the marks which provide the greatest value. For example, business names and flagship brands are more important than slogans used for short term advertising campaigns or product names.

Conduct Trademark Watch

Periodically search and review trademarks used or file by third parties that may be similar to your own. If a potentially problematic trademark is identified, work with your legal counsel to develop a strategy, which could involve opposition, expungement or an infringement claim.

Keep future business goals in mind

Consider not only the products or services that your business currently offers but also those that you can reasonably foresee offering in the future. Once you file a trademark application with a certain list of goods and services, you cannot later amend the application to add goods or services that are broader than those included in the original application.

REGISTERED DESIGNS

PROTECT APPEARANCE OR AESTHETICS

Consider whether there is a novel aesthetic and non-functional design feature of your product that you would not want others to copy.

Consider where you and your competitors are most likely to make, use and sell products incorporating your design. Obtaining foreign registered design protection may be advisable given the relatively small size of the Singapore market.

Periodically survey competing products to see if they include features protected by your registered designs.

TRADE SECRETS

Protect your confidential business information. Your confidential business information may provide a competitive advantage, but it may not be protectable by a patent. Such information may be better suited for indefinite protection as a trade secret, but its secrecy within your company must be actively maintained.

Consider whether any features may be patentable are instead better kept as trade secrets, for example, if they are hidden, hard to reverse-engineer, and provide a competitive advantage.

Implement a formal policy to identify and safeguard trade secrets (such as customer lists, manufacturing techniques, experimental or operational data, know-how, computer code, etc.).

Have non-disclosure and non-compete agreements with anyone who may have access to your trade secrets.

Identify a person or persons responsible for final approval of publications or other public disclosures related to your company.

OWNERSHIP AND MANAGEMENT

Regardless of the specific type of IP right that is involved, ensure that your company has full ownership and control of important IP created on its behalf.

Employment, consulting, and contract agreements should explicitly transfer rights in any and all IP to the company.

Joint research or development agreements should clearly and explicitly state which party will own joint inventions, and who will control the patent application and enforcement process.

Designate a person in your company who is responsible for your IP.

If you suspect infringement of your patent, trademark, registered design, contact your legal counsel to determine what action can be taken to assert your IP rights.

AURIGA IP Expertise

We have worked with some of the best companies and start ups in Singapore on their most critical and complex IP matters. We make use of patents, trademarks, registered designs to safeguard creativity, and devise strategies to carve out and dominate markets through IP. We are committed to providing the best service, solutions and expertise for your IP matters. Please contact us if you would like to have a free consultation on how we can help you safeguard your IP assets.

This article is intended to provide general information only and should not be relied upon as an exhaustive or comprehensive statement of law.