Welcome to my three part briefing on Intellectual Property for Startups and Creatives.

Part 1 of my Intellectual Property briefing for Startups and creatives covers What is IP, IP types and Registrable vs Non-registrable IP. Part 2 covers protection, people and IP and making money from IP. Part 3 covers enforcement and contentious matters.

The decision about how to protect your IP is commercial and involves questions such as: What is this IP worth to my business? How much will it cost to protect? How will IP protection be received in the marketplace?

IP – EARLY STAGES

1) Ownership
Who created the concept?
Who implemented the concept?
Is there existing agreements in place?
Can you prove ownership?
Should I be getting someone to sign something? (e.g Confidentiality, Non-compete, employment contract clause)

2) What is the best type of protection?
Product → Usually patent
Process → Patent or confidential information
Information → Confidential info and copyright
Unique Design of object → Registered Design
Artistic work → Copyright
Goodwill → Trademark
Marketing material/get up → Trademark/copyright or passing off

3) Other IP out there
What else is already out there? When you create new IP, it is important to look what is already out there before spending money in an attempt to protect it. Conduct searches, look at patent/trademark designs, databases, web search, academic journal search, trade literature search, trade shows, conferences. Invest some time doing this.

IP – INTERMEDIATE STAGES

What is your commercial strategy?

Licence, spin-offs, manufacture, use in-house? Your commercial strategy should match your filing if you make one. Choose countries, jurisdictions, keep an eye on improvements, IP is not static, IP has to evolve. Monitor competitors, conduct freedom to operate searches, negotiate cross licence, ensure confidential info remains confidential.

IP – INTERNATIONAL CONTEXT

IP protection covers your rights within a jurisdiction. Therefore, you need protection in jurisdictions that are of interest to your business.

3 questions:
1) What are your largest markets? Population and take up of your product/service
2) What type of IP is it? Is it registrable in your chosen markets?
Business methods are not patentable in Europe nor are methods of medical treatment.
3)Will you be able to enforce your rights?
Some countries have more reliable patent systems than others for example E.g India – Reasonable, Russia – Variable and Cuba – Poor.

Can get quite expensive. Internal company research found 40% of European patenting costs were on translation and 26% on fees. While the major steps are the same in almost every country, major jurisdictions do vary in the way they handle patent application.

Interesting example on costs:
Validate in UK, Germany, Italy & France – Covers >70% of the “rich” EU population
Add Ireland, Belgium & Switzerland >75% of EU population with little marginal expense
Add Netherlands & Spain >90% of EU population but two “expensive” countries
Compare cost to coverage. Look at large vs medium and small populations and where your markets are.

Madrid Protocol means that you can file overseas trade mark applications based on a home filing.

European Community Mark exists, One filing, covers all member countries and there is no substantive examination (!). However, can be opposed by third parties. Prior use in one country can result in removal of trade mark and prior registration not a defence to infringement in the UK.

HOW DO I MAKE MONEY FROM MY IP?

The three main ways are using IP, licensing or selling your IP.

1) Using IP (e.g Manufacturing)
This is the way most people think about IP.

2) Licensing IP
Using and licensing most common ways to make money out of IP.  If you are licensing you have to manage agreements related to the IP. Licensing agreements:
-Are we being paid the correct royalties? Are licensing agreements still valid? Are terms being broken? Is the IP still valid?

These need to be policed, have clauses, are you allowed to look at books, can you audit, do you take it on faith?

Only last as long as IP is in force. Only have to pay license fee as long as patent is in force, 20 years, let it lapse, you aren’t bound by license agreement anymore, idea has become public knowledge. You would be surprised how many companies continue paying royalties on patents that are no longer in force. The person doesn’t have to inform you that it has lapsed, but can’t mislead.

Licensing agreements can be put down in ways that you see fit. Use in NSW, medical industry only etc.

3) Selling IP
This is rarer than most people think.

Sometimes companies lose sight of why they are securing IP protection. Sometimes policies are put in place and then left. People get caught up in day to day practices of running business, filing patents but not look at value getting out of these. A mid-sized company would not have the luxury of spending millions like IBM with hope something might come out of it sometime.  Do periodic reviews of IP, from both a legal or technical view e.g Lets let this IP go, we aren’t going to go down this path. May have been a good idea, but not translating well into a product. Bring in technical, legal, sales consultation around these decisions.