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How to Protect and Commercialise Your IP

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Written By:

Siobhan Williams

Senior Associate

Darwin Gray

 

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The ability to identify, protect and commercialise intellectual property (IP) within a business can play an important part in growing a business. Darwin Gray considers how a business can manage and protect its IP to derive maximum benefit from it.

Identify your IP

Firstly, it is important to identify and record the IP in your business. Identifying your IP may sound obvious but sometimes it can be overlooked where rights may arise.

The most recognisable types of IP in businesses include trade marks, logos and domain names. However, less obvious forms of IP include copyright in the text on a website, design rights in the appearance of a product and copyright in customer databases.

Manage your IP

Not all forms of IP can be registered, but where it is possible, consider taking steps to register your IP. For example, you can register trade marks you use in your business (such as your business name or the name of your product) at the UK Intellectual Property Office to protect your brand in the UK.

Even if IP cannot be registered, it can still attract legal protection and therefore it is important to still capture and record non-registered IP such as copyright and business know-how. Copyright arises automatically on the creation of the work and does not need to be registered in the UK. Copyright law in the UK protects original artistic, musical, dramatic and literary works, including computer programs.

Protect your IP

When you have used consultants to help you with your branding, such as logos, and your website content and design, ensure that they have transferred the IP rights to you that they create on your behalf. Otherwise, you could be in a situation where you don’t actually own your business IP.

Further, ensure you protect any IP rights that arise from work carried out by your employees. Although UK law generally favours employers when it comes to deciding whether an employee or their employer owns IP rights in the fruits of their work, it is still worth ensuring that your employee contracts are properly drafted so that all IP is immediately assigned to the company.

You should also consider using symbols to warn off third parties from unauthorised use of your IP, such as ©, TM. If you discover that a third party is infringing your IP rights or confidential information, seek legal advice and take swift action – delay can be a bar to certain types of reliefs.

Commercialise your IP

Once you know the value of your IP it can be used as collateral in the same way as any other assets. The type of commercial exploitation that will be most beneficial to a business will generally depend on its strategy and the type of IP involved. Common ways to commercialise your IP include:

  • licensing (exclusive and non-exclusive) – this would essentially involve giving a third party permission to use the rights in a brand in return for a fee and will often be for a defined period and for defined products or services.
  • assigning (i.e. transferring) ownership of your IP to another entity for a lump sum;
  • sale of your business (including the IP);
  • franchising your business – this is where a business licences their branding, know-how, business model and IP to a franchisee who runs their own business using such IP – usually in a specific area or territory;
  • engaging in research & development (R&D) projects – where two or more enterprises agree to collaborate in the development of new products or processes; and
  • using your IP to secure finance.

If you need any advice with navigating any of the issues raised above, please contact Siobhan Williams on [email protected] / 02920 829 118 for a free initial chat to see how we can help you.

Business News Wales