This article originally appeared in The Scotsman and is available to view at www.scotsman.com/news/opinion/comment-intellectual-property-must-be-made-to-work-hard-1-4146537.
The annual BIO International Convention begins in San Francisco today. Spanning three days, this event is marketed as a “Global Event for Biotechnology” and is one of the largest of its kind. Attracting over 15,000 industry leaders it represents an excellent forum in which companies can nurture new and exciting partnerships. To put the scale of this event into context, some 29,279 partnering meetings were conducted at BIO 2015 in Philadelphia.
Scotland is always well represented at BIO with local SMEs, universities and public bodies all using the event to bolster their international business networks.
For most of these organisations, preparation for BIO 2016 will have been ongoing, at a minimum, for many months. The cost of attending can be significant, meaning there is a real need to extract as much benefit as possible from events of this scale. One area which can occasionally be overlooked and on which successful business partnerships can hinge, is a well organised and strategic intellectual property (IP) portfolio
Aside from researching the attendees and business interests of potential partners, there are several additional steps you should take to ensure that your intellectual assets work as hard as they must for your business.
Being able to leverage and extract a tangible benefit from your IP requires a certain degree of knowledge of those rights that vest within your business. To this end and prior to any discussions with third parties, it is recommended that businesses conduct an IP audit. An IP audit will not only assist in identifying what patentable technology you are developing and/or using, but also those brands and designs which could be adding further value to your business.
Crucial to the success of any investor-led IP due diligence process is an accurate understanding of the status, strengths and weaknesses of your pending or granted patent, trade mark and/or design rights. An analysis of this type can easily be built into any IP audit.
There are often grants available through Scottish Enterprise to enable SMEs to commission an IP audit from a professional IP firm. The precise form of the audit may vary but usually a patent attorney will undertake a review of a company’s assets and make recommendations for protection. These audits can provide a competitive advantage in the marketplace and we have supported a number of companies in this regard, with all confirming the benefits of going through the process.
When businesses attend events like BIO, their aim is often to discuss their commercial goals and innovations with as many potential partners as possible. However, non-confidential disclosures pose a serious risk to the validity of your IP and as such you should ensure that you are properly protected beforehand. An audit will help you identify what IP should be protected and you should pay particular attention to placing the relevant protection around your most important and prominent products, processes and brands.
Deciding what type of IP protection should be used to protect a product is not always easy and while a patent might represent appropriate protection for one particular type of product, another may be better suited to design protection. Patent and Trade Mark Attorneys can work with you to determine how best to protect your innovations.
Whether you are seeking investment or licensing opportunities, potential partners will want to conduct due diligence on your IP portfolio.
Due diligence can be considered as an important IP health check and will usually involve looking at the ownership of your IP, its legal status and your freedom to operate.
In terms of ownership, important questions to be answered are: Does the IP vest with the correct entity? Does the entity own what it thinks it does? Does the entity have the legal documentation to prove ownership and/or entitlement to the IP?
A review of the legal status will look at any pending and/or granted IP rights to determine the scope of protection and whether or not all relevant renewal fees have been paid.
Freedom-to-operate reports look at the likelihood of one entity’s activities infringing the IP rights of another. An investor will want to know that you have considered the risk posed by third party IP rights and that you have developed a strategy for dealing with them.
By devoting a little time to assessing and organising your intellectual assets, you can maximise your participation in events like BIO and nurture those successful business partnerships that are important for growth.