The first step is to determine what Intellectual Property you actually have. This is usually broader than you initially think.
Intellectual Property Audit
So before you can have an Intellectual Property Strategy, you will need to do an Intellectual Property Audit or IP Audit. IP Australia has an excellent guide to how to do this at Auditing Your IP so if you haven’t done this already, I recommend you read through the guide.
An example of an IP Audit is shown at World Intellectual Property Organisation at IP Audit – A “How to” Guide. So to see an IP Audit outcome. Check that out.
Intellectual Property Strategy
Now you have identified your Intellectual Property using an IP Audit, you can put together your Intellectual Property Strategy or IP Strategy. How to go about this depends on a lot of factors. Some examples are:
- US Patents have moved from priority given to “first to invent”, to priority given to “first to file”. So filing early is now critical if you want protection or even the right to deploy your own invention which predated a patent from a competitor.
- Different domains have different rules for determining patent infringement. For instance, The EU see protecting the idea as important and not just the specific wording of the patent.
- If you want to defend a patent, you will need to fund the defence.
- Trademarks get more respect than patents so use trademarks.
- Trademarks potentially have unlimited life whereas patents and registered designs have finite life.
- But you will have many other IP Resources including Trade Secrets which also potentially have infinite life.
You also need to have “Freedom to Operate“. This means your new invention could infringe someone else’s IP Rights. So it is also necessary to check that there isn’t a Patent, Trademark or Registered Design that you would be in breach of infringing if you proceeded. And if you are, you might want to look at whether you could license the technology. A recent change in IP Law means that a Patent holder cannot be unreasonable in restraining your business opportunity, and particularly if they are not competing with you, and especially if they are primarily acquiring and sitting on patents, or patent trolling.
The general steps of an IP Strategy are:
- Decide who in your organisation will take responsibility for IP
- And what you will do in house, and where you will get an IP Lawyer involved
- Do an IP Audit and identify your Intellectual Property Assets
- Determine if you have registered all these assets
- If not, register trademarks and designs and that you want to protect
- Decide if and how you will monitor for infringement of your IP
- Be prepared to retire IP that is no longer of value
- Ensure trade secrets and confidential information is secure
My thanks to Duncan Bucknell of Think IP Strategy for providing advice on this topic.
Successful Endeavours specialise in Electronics Design and Embedded Software Development, focusing on products that are intended to be Made In Australia. Ray Keefe has developed market leading electronics products in Australia for more than 30 years. This post is Copyright © 2017 Successful Endeavours Pty Ltd.