IPR Helpdesk: Case Study on IP Strategy

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Jane Lambert

Last week I answered the following question from Will Roebuck, one of my readers: "What do start-up entrepreneurs need to look for in a good IP lawyer?" I replied:

"Probably the most useful professional adviser will be one who can help you to use IP to meet your business objectives. That is known as "IP strategy" which the American lawyer Jackie Hutter described as the combination of business acumen with IP knowledge to provide business focused advice (see Hutter What is an IP Strategist? IP Asset Maximizer Blog)."

My article elicited a number of comments including this one from Julian Potter of WP Thomson:

"hi Jane, I am interested in the idea that IP strategists are a new type of adviser. It is certainly the case that in recent years one has seen a number of individuals and organisations refers to themselves as IP strategists, that seemingly being their only skill in some instances. However, identifying IP and formulating it within a client's business objectives is something that UK qualified patent attorneys are examined on in the patent drafting paper, FD2(old name P3)."

Such training is very much to be welcomed because, over the years, I have seen far more people who have been ruined by having too much IP rather than by having too little.  As I said yesterday in British Business Bank launches the First Tranche of the Midlands Engine Investment Fund 29 Aug 2017:

"Anyone seeking any kind of funding under the MEIF or any other scheme will be expected to have planned, protected and leveraged its investment in branding, design, technology and creative output.

Right on cue, the European IPR Helpdesk published a case study on The ABC of IP strategy for a small R&D company on 23 Aug and mentioned it in yesterday's newsletter.

The subject of the case study was TNTech sro, a Slovakian company incorporated in 2012 "to commercialize research and development activities of co-working developers." According to the case study, TNTech had developed a wireless measurement system known as WiMES that incorporated sensors to warn against fire hazards in stores of wood chips and pellets, signal receivers and the software necessary to evaluate the measured data. The company heard that a competitor was preparing to launch a similar system using the technology that TNTech had developed. Up to that point, the company had no IP strategy so it consulted a patent attorney and the Industrial Property Office of the Slovak Republic which suggested the following strategy.

First, the attorney carried out an intellectual property audit which identified the company's intellectual assets which included "the electrical connection of the sensors and the control boards of the WiMES system as well as the mechanical design of the individual parts and eventually of the entire device." The technical part of the system was protected by utilty models in Slovakia and the Czech Republic while the rest was protected as trade secrets.

Secondly, the company issued new employment contracts that incorporated clauses making clear that TNTech owned any intellectual assets that might be created by the employee in the course of his or her employment and requiring him or her to hold all information relating to the company's business and products in confidence.

Thirdly, the company sent its key employees on an IP training course that had been accredited by the Slovak Ministry of Education so that they could understand (among other things) the need for the new provisions in their employment contracts.

Finally, the patent attorneys drafted a number of confidentiality agreements to be signed by consultants, contractors, suppliers and other third parties.

Although TNtech is a Slovak company, exactly the same problems are faced by many British companies and the solutions are also similar.  We do not have utility models in this country but we do have unregistered design rights that provide a fair measure of protection for new technology by preventing direct or indirect copying of design drawings and prototypes. Here we would probably have recommended before-the-event IP insurance or some other kind of litigation funding in case the company's intellectual property rights are infringed and we would probably advise it to consider instructing a watch service.

As I have said several times before, I can help with IP strategy including an audit, identifying the optimum legal protection for each intellectual asset, selecting and instructing a patent or trade mark attorney and drawing up the agreements.  If anybody wants to discuss this article or IP strategy in general, call me on 020 7404 5252 during office hours or send me a message through my contact form.

Incidentally, if you have never used the IPR Helpdesk before, it is a very useful resource.  it is a consortium of three companies, infeurope S.A., Eurice GmbH and IPIL G.I.E It is funded by the European Commission and managed by the Executive Agency for SMEs. The Hepldesk provides free advice on European IP law through its website, newsletters, webinars and other activities.  There is also an SME IPR Helpdesk for China, East Asia and Latin America.

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