What were the reasons for putting the book together?
The initial idea was generated during discussions at an IPBC conference a few years back. Talking to various people it was clear that while IP is getting more and more attention in “the real world”, non-specialists often struggle to understand the topic enough to make informed decisions. My aim was to create a resource offering better guidance to this core aspect of business in the 21st century, so that anyone dealing with IP portfolios can understand what it means for their business and have better conversations with their professional advisers. I really believe the book achieves this.
What do you think the main opportunities are for companies when considering their IP as assets?
As we mention in the introduction, assets you actually touch are increasingly displaced, in terms of value, by intangibles. Intellectual property rights, formal and informal, form an important part of these intangible assets. There is therefore an opportunity to better understand a major aspect of what will be (or more likely already is) of core importance, and strategic value, in a business. As the importance of IP as assets of a business will continue to grow, realising this and acting accordingly will be crucial to seeking investment and funding, as well as to protect the value of a business.
What have you seen are the biggest pitfalls when shaping an IP strategy?
A lack of understanding of how IP can help the business and a disconnect between the business strategy and the way IP is handled. Aligning a commercial strategy with an IP strategy is of huge importance – it allows businesses to more effectively protect their creations and better expend their resources.
What do you think the near-term trends will be in this space?
The trend of increasing focus on patent quality will continue. Patent quality will continue to become increasingly important, with investors and businesses in general becoming more sophisticated and markets more mature. As IP is the, or at least one of the, main assets for start-ups, having a plan to build a sound patent portfolio will therefore be even more crucial.
Given the current economic and political climate, the trend of recent years for patent budgets to be squeezed is likely to continue. So, patent departments will continue to do more with less, focussing their resources in terms of new filings and maintaining granted patents. This could be, for example, by filing less widely internationally. Filing strategies are therefore likely to continue to be focussed with the US, Europe and China being the top 3 filing destinations.
The one to watch out for in Europe is the long-expected Unitary Patent and Unified Patent Court. Following Brexit, political issues may yet stop the process in spite of the current official narrative and, if not, the consequences one of the major European jurisdictions potentially leaving the new system (or not) will yet have to be understood. The General Election in June will cause at least some delay and at the moment we just don’t know what will happen. Yet, if the new court opens its doors and gets off to a successful start, it is expected that it could potentially snap at the heels of the US as the world’s most important patent litigation forum.
What would you be your top 5 tips for companies considering their IP strategy?
- Figure out the why first: formal IP rights like patents are likely to be the best way to realise the fruits of innovation as an asset, but this isn’t always the case. A well thought out IP strategy will allow you to focus resources and optimise the return on your IP investment.
- Education and buy-in is key – If everyone in the business from R&D to top managements understands the importance and impact of IP more value will be realised.
- Timing is key – in a world of limited resources, getting right the timing of formalising your own IP, and the investigation of potential problems with the IP rights of others, is crucial to using those limited resources effectively.
- For those businesses starting up, seek professional advice early on. This does not mean that you necessarily start spending large amounts of money on advisers at the start but you will gain an awareness of the important issues that will help you not to miss opportunities.
- Knowledge is key to make sure opportunities are spotted and not missed. Reading this book would be an excellent starting point. There are also free resources available from the UKIPO and my firm has put together a free resource to help new business get started with realising the value in their innovations: http://ipfoundry.io.
Alexander Korenberg and Stephen Robertson are co-consulting editor's of the new title, ‘Intellectual Property Strategy- A Practical Guide to IP Management’. Full details, including a free sample chapter, can be found here