The Importance of Understanding your IP Position

  • Date Added: 25th February 2015 from EverEdge IP

  • In the past seven years we've worked with hundreds of organisations commercialising technology: from guys in garages to Fortune 100 companies, from venture backed start-ups to publicly funded research institutes.

    We've seen triumphant successes and dismal failures. Surprisingly for such a diverse data set the beginning point of both successful and unsuccessful commercialisation is remarkably consistent: it all starts with understanding your Intellectual Property (IP) position.

    IP (in its broadest sense – not just patents but confidential information, copyright, trademarks, know how etc – all the IP rights) is fundamentalto successful commercialisation. However despite this many New Zealand organisations see IP as a secondary or even tertiary consideration. For example: most companies have a Fixed Asset register listing cars, desks and LCD monitors, but few have any record, let alone active management, of potentially high value IP such as trade secrets, copyright, trademarks or inventions.

    So what should New Zealand companies do? The solution is twofold. Firstly, increase awareness and understanding of IP. You can't make effective decisions about IP or leverage its value if you don't understand what it is, how it works and its role in your industry. Starting questions include:

    • How much innovation or IP do we have?
    • How much are we creating on a daily basis?
    • Is it being used? If it is not being used what is happening to it?
    • What is our true spend on IP protection?
    • Are we generating revenue or value from that IP?

    Addressing these questions helps management take a measured view of how the business manages and utilises IP. If the conclusion is - "we don't" then you need to connect to an advisor who can help answer these questions and develop a robust and importantly, commercially orientated, IP strategy.

    Secondly, when your organisation does develop a great idea, invests in new R&D, files a patent or acquire a company it is critical to objectively assess the "IP Position" of that idea, R&D, potential patent or company. Assessing IP Position provides three key insights:

    1. Are you likely to receive broad and strong IP protection? This directly impacts both the commercial potential of the idea and the commercialisation options available.
    2. Do you have Freedom to Operate (FTO)? In other words are you likely to be sued if you use this technology? Unfortunately having your own patent does not mean you have FTO – you can infringe someone else even if you have a patent on your technology.
    3. Provides incredibly valuable market intelligence: it reveals the state of technology development in your market or industry: who is doing what, when they were doing it, where are they now. It generates a list of people working on what you are working on: these are your potential competitors, collaborators, strategic partners, co-developers, licensees and licensors. Easily available such research would otherwise cost $10,000's and weeks of Googling.

    The combination of these factors provides critical early insights into whether a project is likely to be commercially successful. This leaves you better prepared to make a host of flow on decisions: a strong IP Position justifies greater investment, more aggressive expansion plans, more extensive protection and makes strategies like licensing or IP sale viable. Conversely a weak IP position might cause you to redirect R&D, take a different strategy or even discontinue the initiative altogether to focus on other projects.

    If there's one lesson it's this: IP is a critical business asset – managing it properly is prerequisite for every aspiring business.

    Paul Adams is CEO of EverEdgeIP, one of the world's leading intellectual property strategy, management and technology commercialisation firms. Paul has been named one of the world's top IP strategists and was the recipient of the Outstanding IP Leader Award 2012.