IP Strategy
At Strachan IP, we endeavour to offer an ‘immersive’, rather than the more traditional, ‘transactional’ service. This means that we like to get to know you, your team, your business and your commercial aspirations, not just at the start, but also as your business grows and evolves, so that we can continue to tailor our advice to exactly what your business needs to thrive.
We like to keep in regular touch with you, and keep you in regular touch with your IP portfolio, so that we can help you review and revise your IP portfolio as time (and your business) moves on, and ensure that your intellectual property rights continue to properly protect your main revenue streams, but also to make sure that you’re not spending more than you need to on obsolete (or at least less important) IP rights.
Our Process
IP Strategy: the Basics
Let’s start with a rule of thumb for establishing an IP strategy for your business:
DON’T undervalue your IP BUT DON’T spend more than you need to
It really is that simple if you adopt some simple habits to keep on top of it all; and here are some simple tools to help you to do just that.
Your existing IP Portfolio
Firstly, ask your IP attorney to generate a rolling schedule of all of your IP rights for you. This should be a fairly simple report to run from their records system, and we would not expect you to be charged for it (but do check first!) The schedule should include the next deadline for each case, and an estimated cost for doing whatever needs to be done by that deadline.
AND ask for it to be updated periodically, e.g. monthly or quarterly, to suit you.
Now, for each IP right that has a deadline/cost attached to it, consider:
– What is the value to the business of keeping that IP right alive?
– What potential damage could it do to your own revenue stream in that country if a competitor could make/sell (in that country) a product covered by the IP right?
– Is the product/technology it covers still current? If so, what is the value of sales of that product/technology (in the country covered by the IP right)? What are future sales likely/hoped to look like? How does the current/projected revenue from sales of the product/technology in the country in question stack up against the cost of keeping the IP right alive?
– If the product has been superseded by an improved version, or has simply been discontinued in favour of other products (independently protected by other IP rights), how could your revenue stream from your current product line be affected if a competitor was able to make and sell the old product?
And, before you finally decide to allow an IP right to lapse or be abandoned, consider whether there might be any opportunity (and value) in licensing the right to a third party to create a residual income stream from your “old” technology.
Your new technology
If you are always innovating to improve, expand or diversify your existing product line, there will always be novel ideas, concepts and technologies to consider protecting. To decide whether or not to proceed with design, patent (or trade mark) protection, the questions to ask yourself are much the same as those we’ve suggested above for deciding what to do with your existing IP portfolio.
So:
– What is the value to the company of being able to stop third parties from making/selling the new product/technology?
– What does projected revenue from the new product look like against the cost of preparing and filing a UK patent application, and then (potentially seeing it through to grant)?
– Would the Patent Box tax relief offset those costs, and possibly even further benefit the business? If so, what does the comparison look like now?
– Overseas IP protection: the same again. Are projected sales in each country sufficiently high to warrant the cost of filing a patent application there? Or
– On the flip side, to what extent would your sales revenue in that country be impacted if a third party can copy your new product and make/sell it there (possibly for less than you do)?
Get into the habit of going through this process regularly (monthly, quarterly, bi-annually, or whatever suits you best) to make sure that you get the full value and benefit from your IP portfolio without unnecessary (and perhaps unexpected) expenditure.
Invention Harvesting
Now, or more probably in the future, as the Company grows, we recommend introducing an internal Invention Disclosure form, and that your R&D staff members are made aware of its existence, can easily obtain a copy to fill in, and know to whom it is to be sent once it has been completed. Forms such as these would typically require the staff member to provide the following details:
– Name of staff member making the submission, and their contact details if necessary.
– Date of submission of the form.
– Relatively brief details of the invention or other confidential information being submitted. If it relates to the solution of a problem, it would be useful to provide an outline of the problem, how what is being submitted solves that problem and/or any other technical advantages provided.
– When the invention was conceived, and by whom (if different from the person making the submission).
– A detailed description of at least one embodiment of the invention.
Once a form has been submitted, it is recommended that it be reviewed by an appropriate senior manager at your company, as appropriate, assessed (e.g. with a score out of 5) and then safely stored (e.g. with a reference number and date). Depending on the result of the assessment, the senior manager can decide whether to initiate a patent application in respect of the submission, or take other action.
It is also recommended that the senior manager reassess past submissions from time to time, as, even if a submission was not considered to be particularly relevant when it was initially submitted, it is possible that its relevance to the company may change over time.
Your company may also wish to consider implementing a procedure (in the future perhaps) for recognising and/or rewarding those staff members who submit such forms.
An example Invention Disclosure form is provided as an appendix to this document.
Protection of Revenue Streams
A robust IP strategy ensures that your main revenue-generating products or services are adequately protected from competitors, safeguarding your innovation and market advantage.
Cost Optimisation
By strategically managing your intellectual property portfolio, you avoid unnecessary expenditure on obsolete or less important IP rights, thus optimising your budget and maximizing returns on investment.
Continuous Innovation Support
With a clear IP strategy in place, new inventions and technologies can be systematically captured, assessed, and protected as your business evolves, fostering a culture of innovation while ensuring sustained growth and competitive advantage.
FAQs
When we first met, you had been working with another IP firm to secure and maintain your IP portfolio. What problems had you been having, and was the ‘straw the broke the camel’s back’ that made you want to look for alternative IP support?
For years, we had been working with a large IP company that managed everything remotely. Due to our innovations, our portfolio began to grow rapidly and, as time went on, we were in need of quick communication, transparency and clear guidance. This is something that is difficult to find, and all of which is a priority for Vicki and her team. It just made complete sense to transfer to Strachan IP.
We had an initial face-to-face meeting to discuss issues and put some processes and strategies in place to address them. What happened as a result of that first meeting that had the biggest immediate effect on the management team and business generally?
Just having a face-to-face meeting with IPP lawyers was not something we were used to. Being able to sit down in the same room and discuss a strategy was exactly what we needed. The biggest initial change was having a schedule that included all of our IP together and exactly what stage everything was at. This meant that e could identify issues and opportunities quickly.
From your perspective, how easy was it to transfer your IP portfolio to Strachan IP?
Incredibly easy. It was a concern that we would have to move IP that had been sat with another company for a number of years. Particularly with our IP portfolio not being in a structured format. We were unsure how to do this. We were quickly put at ease and this process was completely seamless for us.
How easy are you finding it now to manage your IP portfolio and make the right strategic decisions about Flare’s IP?
Without doubt. If your business is growing rapidly, you need your IP attorney to be informed and understand your goals. Without having sufficient protection in place, Flare would not be able to pursue the visions we have.
Since we first met, your technology has moved on a great deal and Flare has come a long way (to say the least). Do you think that having an IP attorney who has taken the time to get to know the business and can help you to strategically manage your IP has contributed in any (small) way to your ongoing success?
Without doubt. If your business is growing rapidly, you need your IP attorney to be informed and understand your goals. Without having sufficient protection in place, Flare would not be able to pursue the visions we have.
Overview of IP Strategy
What exactly do we mean by IP strategy?
If you have read one of our other information documents “The benefits of early (and ongoing) IP advice and guidance throughout the product development cycle), you will (hopefully) have some understanding of the true value that Intellectual Property (IP) can add to your business. As part of the initial product development process, you will have assessed, with your IP attorney, what protection is needed and, where appropriate, filed the necessary patent/registered design applications before your new product is launched. Perhaps, further down the line, you will also have filed some corresponding overseas applications to protect your foreign revenue streams as well, so you may by now have a set of patent and/or registered design applications covering your initial product.
But that’s just the first part of your overall IP strategy. Things are bound to change in the subsequent months and years. You may, for example, improve your original product, or add to it, or you may develop new products to complement the original product or just to expand your product line more generally. Equally, sales may have started to drop off for some of your earlier products, or an early product may be removed from your product line, either because it has been replaced by an improved version or because sales were too low to justify a further manufacturing run. The other relevant factor here is your revenue from the other countries in which you have applied for patents/registered designs. Does that revenue (or projected revenue) still warrant the cost of keeping those applications alive?
Yet another factor here is how you identify new inventions as they are developed and how you take the decision as to whether or not to secure registered IP protections for them.
It is your management of this ongoing review and revision of your IP rights that can best describe your ‘IP Strategy’.
Is your IP strategy working for you?
Working on the assumption that your company was founded from an innovative product or some innovative technology, do your commercial plans rely on continued innovation to stay ahead of your competitors, and/or expand or improve your product line? If so, you may, by now, have an ever-increasing number of IP rights and may have become concerned, or just plain baffled, by the seemingly never-ending cost of obtaining and maintaining your IP protection.
Your IP attorney’s default position will be to protect everything and keep everything alive (and charge your for the privilege) unless you tell them differently…and rightly so: it is our duty to ensure that none of your rights are lost or overlooked and we will always err on the side of caution.
A good IP attorney will take the time to get to know your business and keep in touch with you regularly to see how things are progressing, so that they can help to advise you. But it is important for *you* to keep track of your IP portfolio and manage it strategically with their help. The goal here is to strike the right balance between protecting your revenue stream, but also minimizing unnecessary IP spend, and we can help you to optimize your IP budget with a sound IP strategy.
Here is why having a clear IP Strategy is crucial to your business
1. To ensure that the products/services that are going to provide your main revenue stream are adequately protected, to stop competitors from benefitting from your innovation.
2. To ensure that you are not spending money on unnecessary or obsolete IP rights.
3. To ensure that new inventions are captured and assessed in a structured way so that, as your business grows and evolves, your main revenue stream(s) continue to be protected.
What you need to know about IP strategy
If you want to take a look at your own IP strategy and put in place some decision-making tools to help you to manage your IP spend, here are some of the basics to get you started.