Once a year, businesses need to take the pulse of their IP position. We've set out a few high level points you might want to consider.

  1. Making the CFO, GC and Board love you - identifying, protecting and leveraging your intellectual property

Regardless of the business or sector you operate in, intellectual property will be a valuable, potentially your most valuable asset, even if it's not recognised as such in your books. It's essential that you have appropriate policies and guidelines in place to identify, protect and manage your intellectual property.

  1. Make sure that your intellectual property filing and enforcement strategy matches the commercial strategy of the business. Of course, there is no such thing as a standard intellectual property management plan. Intellectual property management plans and strategies, while having common elements, need to be bespoke to ensure they align with your overall corporate strategy. You will need to ensure that:
  • all the products, services and brands have appropriate protection in the jurisdictions important to your business; and
  • you know what protection your intellectual property offers. Check that all existing products, your R&D pipeline and your brands have been accounted for, and that you have appropriate protection in the jurisdictions that matter most to your business.
  1. Are your policies and strategies still relevant given recent developments in the law? For example:
  • Have your privacy policies been updated to take into account Australia's new privacy laws;
  • A number of Court decisions issued last year had a material effect on what can, or more importantly can't, be patented (e.g. Commissioner of Patents v RPL Central Pty Ltd); and
  • Could you be doing more to protect the look of your products? The validity of shape marks for Coke's `Carolina' bottle was simply accepted in the Coca-cola v Pespico bottle shape-mark dispute.
  1. Conduct an intellectual property audit so that you are aware of your intellectual property portfolio, its value and whether it still reflects your commercial operations and strategic direction. If:
  • there are gaps, your competitors may be able to provide very similar products and services without recourse; and
  • your portfolio includes intellectual property rights that are not aligned with your current activities, next years' business plan or longer term strategy,

you may be wasting money or missing out on licensing revenue opportunities.

  1. Ensure that all intellectual property important to your operations and strategy is current, and that all renewals have been, or will be paid on time. It can be difficult and expensive (or sometimes impossible) to reinstate lapsed protection.
  2. Is your corporate group effectively leveraging its intellectual property assets?
  • Ensuring that you have an intellectual property portfolio that matches your corporate group strategy from a supply chain, R&D, sales and tax perspective is critically important; and
  • Intellectual property is also one of the few tools available allowing businesses to actively supress competition within the market and not fall foul of Australia's anti-competitive conduct regime.
  1. Ensure you've got your budgets covered. Ensure you are across your existing legal and intellectual property budgets. The CFO will probably try to vote you off the island if you have blown your budget and haven't foreshadowed any unexpected additional spend.
  • Ensure you still have sufficient budget to see you through to the end of the financial year. If not, talk to your CFO and speak with service providers about expected legal and intellectual property portfolio costs, to see if you can delay any additional or new spend.
  • If your budgets haven't been finalised, does your proposed budget have scope to accommodate the new projects in your business or R&D plans and the unexpected or speculative developments? How do those numbers compare with previous years and align with your corporate strategy? This will give you an understanding of the frequency of new projects, which will generate intellectual property that needs to be protected.
  1. Managing disputes
  1. Everyone has disputes - whether it is with friends about your favourite footy player or if bagpipes are really an instrument or, more relevantly, a multi-million dollar dispute at work regardless, you need to be prepared. When reviewing and forecasting your budgets, you need to make provisions for any legal disputes currently on foot, and any disputes which may arise during the year. Objectively review any disputes to ensure they are being appropriately managed and still align with your overall corporate strategy. Some conflicts may require escalation (perhaps now is the time to litigate) others may be capable of, and need to be, swiftly resolved on a commercial basis.
  2. Your business' position regarding intellectual property ownership and rights to use should be clear to avoid potentially costly legal disputes in the future. They should also be confirmed prior to commencing any litigation:
  • Internal policies and employment agreements should clearly define ownership of any inventions, copyright or brands created that relate to the business. If the ownership position is unclear, further documentation should be prepared to clarify the position.
  • If you are an exclusive licensee, ensure that you really are. The Federal Court's decision in Bristol-Myers Squibb v Apotex in early 2015 means that a number of `exclusive' patent licences may not actually be.
  1. Dotting your i's and crossing the t's
  1. Your business' position regarding intellectual property ownership and rights to use should be clear to avoid potentially costly legal disputes in the future. They should also be confirmed prior to commencing any litigation:
  • Are the licence fees, royalty arrangements or milestone payments in your commercial deals being met? Ensure such payments have been made or received as required - you may be missing out on an additional revenue stream (or realise that you owe money).
  • Are your agreements still current, and do any agreements need to be renewed or extended? Some agreements may provide an automatic right of renewal; others may stipulate that certain steps or milestones be reached prior to renewal. Some agreements may need to be terminated. For example, you may have current licence or distribution agreements for product lines or services that are no longer supplied or important to the business.
  • Ensure that the terms of your agreements still align with your commercial expectations and internal policies. If not, is there anything you can do? It may be a good opportunity to renegotiate the commercial terms of your agreements.
  • Diarise reminders for key tasks or milestones for the upcoming year.
  1. Ensure that your activities including all products, activities and promotions have, and comply with, all applicable regulatory and marketing approvals.