How Businesses can be Better at Capturing their IP

Anton Blijlevens, Princial and Pritesh Lohani, Senior Associate at AJ Park, share some tips for better capturing IP and commercialising IP effectively. Anton will delve further into this topic at the upcoming Commercialising IP: Maximising Value seminar on Friday 26 March 2021.

Intellectual Property (IP) comes in several forms and may come from many different sources within a business.

IP can be a very valuable asset for businesses. But without capturing it at an early stage of a new initiative, a lot of value can be lost, or worse, given away to the competition for free. Having a simple but strong process in place for capturing and protecting valuable IP created in a business and then effectively commercialising the captured IP is essential.

Many new ideas start life as confidential information. While many businesses use employment and confidentiality agreements with IP clauses in them, that is generally not enough. If confidential information is leaked, it can often not be retracted into the “cone of silence”, no matter how legally strong the agreement is. It is hence also important to create an ‘IP culture’ within the business with the active involvement of all members/departments at all levels within the organisation. And with direct support from those at the top level of the organisational chart.

Introduction to this IP culture should occur from day one on the job for a new hire. This can include induction day information about confidentiality and the importance of IP to the business. Similarly departing staff should be reminded about their obligations around confidentiality and trade secrets of the company during their exit interviews.

Having one or two IP champions within a business can be useful to help keep the IP culture alive and to help drive education and IP capture processes. Larger business may set up an IP committee as part of or to work closely with the innovation teams, to focus on many areas such as but not limited to:

1. identifying potential markets,
2. implementing ownership strategies (e.g. retaining, selling, licensing their IP),
3. identifying freedom to operate issues,
4. identifying regulatory barriers,
5. reviewing projects regularly to identify areas where valuable IP protection could be secured,
6. providing ongoing IP support and training to all staff,
7. creating IP policy,
8. setting out budgets,
9. IP incentive schemes.

Often IP producers are excited to share their idea and, in some case, making disclosures and publications can be important. However, sharing it without proper consideration of IP can be fatal to a business or a project. IP producers must therefore be trained to consider IP before making any disclosure to any third party in any form. Setting up policies around publication strategies can also be useful. IP producers should also be trained to give regular updates to their IP champions or committee on the progress of the project they are working on so that any opportunities for valuable IP protection can be identified at the right time. And for infringement risks to be assessed before it is too late.

All IP related information should be consolidated to ensure consistency and to inform the business and its strategy. Businesses should manage IP information effectively and this may involve IP case management software providing real-time information and automatic scheduling of deadlines and that helps keep track of costs.

The process of building an ‘IP culture’ from scratch is certainly not an overnight process. It is in fact best built gradually to help with adoption. It will take some time to notice the change largely because implementation of ‘IP culture’ involves building skills and knowledge within the organisation as well as building partnerships to get it to work.