IP isn’t always the first priority for a business preparing for an initial public offering (IPO); however, the sooner you start thinking about your IP assets, the better prepared you’ll be, says Alastair Rawlence.
The route to IPO is rarely plain sailing, with deadline and resource constraints the most frequent sources of headache. As with most major business milestones, preparation will prove crucial, and that applies as much to your IP assets as it does to the regulatory requirements that you’ll need to meet. Where should you start?
Understand what you own – and what it’s worth As a general rule, the sooner you start thinking about your IP assets, the better prepared you will be when the IPO process begins. As a first step, look to audit what it is that you own (and the scope and extent of protection). Unless you have undertaken an audit recently, you may find that the rights you have in place don’t match exactly the portfolio that you thought you held – or need to hold for the IPO to run smoothly. Verifying your portfolio in advance will allow you to fix any oversights in protection, and reinforce your early valuation exercises.
Consider all forms of IP Businesses will typically focus on patent or trademark rights that are already in place, but when it comes to both IP value and opportunities for future growth or expansion, other forms of IP are equally important. This includes patents, trademarks and designs that are still in the application phase (domestic and foreign), as well as unregistered rights, such as copyright, trade secret methods and technical know-how.
It is also advisable to review any agreement relating to inventions and licenses, manufacturing and distribution agreements, assignments/charges of IP to or from the business, and any IP dispute settlement agreements, including co-existence agreements, as these may impact (positively or negatively) on IP value.
Avoid nasty surprises Find out what you own – and what you don’t, by pulling together:
- A schedule of domestic and foreign patents and patent applications;
- A schedule of trademarks, trade names and registered designs;
- A schedule of copyrights;
- List of domain names;
- A description of important technical know-how belonging to the company;
- A description of methods used to protect trade secrets and know-how;
- A schedule and copies of all agreements relating to inventions and licenses, manufacturing and distribution agreements, assignments of IP to or from the company, any mortgages or ‘liens’ over the company’s IP, any IP dispute settlement agreements including co-existence agreements; and
- Summary of any claims or threatened claims by or against the company regarding IP.
Use the opportunity to refocus or cleanse your portfolio Consolidating your rights and agreements will provide you with a clearer picture of your IP assets, and their respective strengths and weaknesses. As with the IP audit process in general, it will also give you the opportunity to refocus your IP holdings in light of your future business strategy; for example, by ringfencing key (or ‘core’) IP rights and identifying less strategic or unused rights that may no longer justify the renewal fee.
The audit process will also prompt you to make sure your rights are in order (i.e. valid and up-to-date), as it will identify any errors in the chain of title or renewal schedule, and give you the data needed to rectify or work around them.
Give yourself the time not to panic Typically, the closer you get to the IPO launch date, the more fraught the process will be. Involving your IP team or external advisors and beginning the IP audit early in the process will help you to sidestep any last-minute panics by ensuring that IP value and potential is fully captured and protected in advance. Find out more about IP auditing