Just as the early bird catches the worm, your business can make gains and strengthen its future by ensuring intellectual property (IP) management is a core part of your research and development (R&D) strategy. A comprehensive IP plan is all about guiding smarter development, protecting your own ideas, being smart about defending what you've created, and ensuring you operate without stepping on others' IP rights. Read on to take the first steps toward a successful IP policy and transform your ideas into assets.
R&D for an unproven product carries inherent risk and is demanding on resources. However, for businesses that undertake R&D projects, the reward is often an innovative product that, if properly commercialised and protected, can provide a multiple return on that investment. Unfortunately, being a fast follower is much cheaper and easier for your competitors and involves little risk for them, which is why securing the IP of your hard-earned innovation is crucial!
Nonetheless, IP protection is often perceived as a final step in R&D, rather than a core part of the development process; in some cases, this risks losing the legal right to protect your IP at all. So, what are the steps to a successful IP strategy?
1. Collective vigilance
A successful IP strategy starts with advocating IP awareness as a core principle throughout your organisation, no matter how large or small. Although management of an IP portfolio is often performed by a select group, there are many individuals or departments that may be directly or indirectly involved in potential IP of an R&D process.
For instance, engineering, marketing, sales, IT, administration, or HR personnel may be regularly exposed to projects in their infancy, when IP is most vulnerable. When developing IP-sensitive R&D products, it is important to employ safeguards within your organisation to avoid premature disclosure of your invention and consequently disqualifying your claim to your own IP.
An example safeguard that an HR & Administration team might establish is a comprehensive talent onboarding and exit process. Talent joining, contracting, or leaving your company provides a conduit that sensitive IP may move through. To protect this conduit, it is important to provide in-depth IP clauses within employment and contract agreements and fulfil deeds of assignment upon exit for any person whose work may have contributed to company IP.
2. Freedom to Operate (FTO)
Investing years into R&D only to discover that your product or process infringes existing IP is a scenario that highlights the importance of doing your research on the market you intend to operate in. FTO refers to whether it is safe to commercialise your product or process in the region that you intend to. There are various forms of IP rights that may be relevant to your R&D project; this may include registered rights such as patents, designs, trade marks, and plant varieties, or unregistered rights such as copyright, trade secrets, or unregistered trademarks.
For patents, an FTO analysis typically starts with a search and review of existing and pending patent documents to determine if your product or process might infringe on registered IP held by others. A search may not capture every possible IP infringement, or fully guarantee your right to operate, however it can still provide a good level of confidence by quantifying risk to justify continued commitment to R&D. Such an FTO often also reveals patent documents that have previously grappled with problems you may encounter, providing alternative perspectives and fast-tracked solutions for your own invention.
To ensure a comprehensive search is undertaken, it’s advisable to engage a specialist IP firm to conduct them for you. While this may seem like an unnecessary cost, a thorough analysis at this early stage can save considerable time and money further down the line.
3. Freedom to Protect
It is important to note that Freedom to Operate does not imply a Freedom to Protect; even when not infringing currently registered IP, expired or unregistered IP may still restrict your ability to register your own.
For example, registering a trade mark for your R&D product’s name, logo, or other aspects, may be important for products that depend on marketing or when licensing your product to third parties. Ensuring that your desired trade mark is not the same as, or similar to, a third party’s registered trade mark can avoid infringement of their IP; however, if your desired trade mark is descriptive of goods and/or services, you may not necessarily have Freedom to Protect that trade mark.
When registering a patent, one aspect of the process is ensuring the invention is novel compared to earlier publications and uses. If patent protection is of interest, it is generally recommended to keep everything confidential and non-commercial at least until a patent application has been filed for that invention.
Even non-IP disclosure by third parties, such as a verbal disclosure, disclosure in DIY guides or blogs, and academic articles may affect your ability to protect. Therefore, it becomes necessary to consider the risk to your Freedom to Protect as a result of your own disclosure or activity from any other sources.
4. Make haste, but not waste
In an R&D environment there are often conflicting IP priorities; on one hand, pressure to protect your IP as soon as possible, and on the other, enabling a healthy R&D cycle with iteration and exploration. Protecting your IP rights as soon as your invention shows promise can be a sure way to avoid unintentional disclosure; however, pursuing IP registration before maturing your invention and its key aspects may lead to weak protection.
This emphasises the importance of a collective vigilance regarding IP within your organisation; having comprehensive systems in place to avoid early disclosure may give you the confidence to allow for longer R&D cycles, resulting in a fully realised product or process to protect.
Registered Designs for example, which protect solely the visual aspects of a product, are specific to the exact or substantially similar shape that is registered and provide strong protection against direct copies and minor variations on that shape. Early design registrations, for the sake of quick IP rights, will protect earlier iterations but as R&D continues their relevance may diminish, for example as the product shape changes. Well-timed registrations help provide IP that adds value, rather than wasting your IP budget.
For patents, R&D and IP registration can happen in parallel, by sequentially protecting discrete aspects of your invention. However, it is important to involve your patent attorney throughout this process to ensure comprehensive protection, as missed deadlines or incomplete descriptions may affect your Freedom to Protect.
5. Offence is the best defence
When securing IP rights to protect against others exploiting your IP, it’s easy to focus on only what your product is and not what it could be. The true inventiveness of a product is often broader than the preferable version that is selected for production. To prevent opportunities for competitors to develop marginally different but essentially equivalent competing products, it is important to protect your IP offensively by claiming the core aspect(s) of your invention that are also the value driving features.
The broader idea of what your product is may not always be obvious, but the R&D policies you employ can help with this; taking time to not only develop your preferred product but also consider alternative solutions or functionality if any features are removed. It may not be your preferred product, but it may still be novel and spiritually the same invention. Broadening your claim to include those embodiments, while still capturing your preferred version, provides you with additional defence against competitors.
6. Litigation: The final frontier
Despite best practices and intentions, IP infringement can still occur, and may come from different sources. As an IP right holder, it is possible that there will come a time when you need to prevent a competitor from infringing on your rights. Also, even when you are confident with your Freedom to Operate, another IP holder might see things differently, asserting that you infringe their IP rights. Commercial contracts in IP may also require litigation, such as licensing disagreements, or internal disputes.
In any case, there can be many ways to solve infringement or disagreements with IP rights, and your IP lawyers can help you to find the best outcome. The process of litigation is never ideal, however preparing for these scenarios within your company’s IP management policy further protects your ability to benefit from the value of your IP rights.
This article serves to provide insight into specific aspects of intellectual property, however, every IP case requires a tailored approach and the above must not be used as a substitute for seeking professional legal advice. AJ Park has a team of IP specialists who can assist with all elements of your IP strategy. If you have any questions relating to any of the considerations raised in this article, or if you need help commercialising or enforcing your IP, don’t hesitate to reach out to one of our experts.
