Businesses are often too busy getting products to market or winning new clients to stop and think about whether they have taken stock of all their assets and are doing everything available to protect and exploit their assets. These “unidentified” assets are often intellectual property (“IP”) rights that businesses could be doing more to protect and exploit for commercial gain.

Although many companies rely on their IP as their main asset, it is unfortunately very common for such companies to lose out because they have either failed to secure all of “their” IP or take the necessary steps (some of which are relatively simple) to fully protect the IP which they do own. This might come down to a staff member forgetting to get a non-disclosure agreement in place before certain potentially patentable material is disclosed or not getting suppliers or customers to sign the right documentation to ensure that the company secures the IP.

The following points should be kept in mind to help identify, protect and exploit your IP:

Identifying IP – A company’s “product” or “work” may be protected by numerous different types of IP as different components of the product may be covered by different IP rights. For example, the shape of the product may be eligible for design rights, the mechanism making the product work could qualify for patent protection, the design of the product (or a component of the product) may qualify for registered design protection, the branding of the product can be protected through registered trade marks and the documentation for the product will likely be covered by copyright. Similarly, a business may have spent a great deal of time and money creating a database and the database may be protected by copyright and/or database rights.

Ownership of IP - A company needs to ensure that it has the right contracts in place so that any IP that is important to the company is owned by the company. The general legal position is that IP that is created by employees “in the course of employment” will be owned by the employer but if the company is using a third party consultant to create any IP for the company, the consultant will own the IP unless there is a contract in place that specifically states that the IP will vest in or be transferred to the company commissioning the work. In companies, many of the directors are not employees and it often comes as a surprise that the company does not own the IP which these directors create for the company. It is therefore important that companies make sure they know who is creating their IP and that there are appropriate employment, consultancy or other appropriate IP contracts in place so that the IP will be owned by the company.

Exploiting IP - Once a company knows what IP it owns, it is able to consider whether it is doing all it can to exploit that IP. A company that protects its IP will be in a better position to exploit its IP commercially because it will have recognised rights that can be sold or licensed to third parties. By entering into licensing arrangements, a company may receive on-going royalty income from third party licensees who take the company’s product to new markets. Further, by making the investment to register or protect its IP, a company will be in a better position to prevent third parties from infringing the company’s IP and will be able to use its IP to maintain or improve its position in the market.

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