IP ownership and exploitation
- Himanshu Dasare
- Updated: Thu, 9th Feb 2017
We work with clients who rely on intellectual property to generate revenues. Most of our clients are based in London and involved in trades which need a strong brand such as tech, media, creative, design and retailers. Wherever possible we will offer a fixed fee.
Our intellectual property ownership and exploitation work includes:
There is not a business in the modern world that does not have intellectual property to protect. We apply our expertise in intellectual property law ownership and exploitation to a variety of issues. Our expertise is our experience and our knowledge of what is needed and when.
Maximising intellectual property revenue generation
We analyse how to improve revenue generation from two angles:
- How to set up the structure for revenue to be generated from your intellectual property; and
- Blocking opportunities for revenue slippage.
Setting up the structure for revenue to be generated
Intellectual property revenue generation flows from a variety of avenues. We look avenues such as:
- What, if anything, needs to be registered. We consider registration of:
- For IP that has already been registered, is the registration is still valid. Connected with that exercise is a review of whether existing intellectual property ownership is in form of the best registration you can obtain. Sometimes, existing registration is worthless for a variety of reasons.
- Whether the agreements related to generation of revenue are up to the mark. Typical agreements we review include patent licences, R&D agreements, manufacturing, supply and distribution agreements, collaboration agreements and, technology transfer agreements.
- Can new models for revenue generation such as licensing, franchising, merchandising, joint ventures or outright IP sales be introduced.
- The corporate structure and making it attractive for future investment.
Setting up the structure for intellectual property to be protected in the event of liquidation or sale
There is the question of, does the intellectual property ownership need ring fencing. Ring fencing means that intellectual property ownership is separated from revenue generation often via a separate company. A licence agreement enables the ownership of intellectual property to work with the trading entity.
- Ring fencing can safeguard the intellectual property assets against the risk of insolvency.
- Ring fencing is also used when there is a sale of the trading entity or IP ownership entity as separate businesses.
Intellectual property ownership protection
Protection of intellectual property forms part of revenue generation. Protection of intellectual property ownership can take place in a number of ways such as:
- Oppose a trade mark application – before it is registered
- Apply for a trade mark to be revoked – after it is registered
- Apply to a trade mark to be invalidated – after it is registered
- Apply to rectify a registered trade mark
- Prevent others from passing off their goods as yours
- Anticipation of infringement in the legal agreements.
Anticipation of challenges to IP ownership and exploitation
When it comes to protection of IP, the terms used in licence agreements and other IP agreements can be important in successfully establishing infringement.
Factors to consider in IP agreements to promote IP ownership
The IP agreements should ideally be dealing with establishing:
- Market forces;
- Target audiences;
- Business plans; and
- Brand development.
Protecting ownership of the the brand to exploit revenues better
Some intellectual property owned by you, that makes up your brand, is not capable of registration in the sense of placing the details on a public register. However, certain assets are capable of protection by other means. Most commonly the solution is to carve out rights in commercial agreements. The following types of assets can be protected via agreement:
- Confidential information and trade secrets;
- Corporate reputation; and
Confidential information and trade secrets
This can be one of your most valuable assets and needs to be protected.
Generally these are protected by a confidentiality agreement. Marking a document “confidential” is sometimes not sufficient to protect the information. Revenue generation from IP ownership can be more secure if the commercial agreements go into detail about what you regard as confidential information and a trade secret.
Managing corporate reputation
Your business should have appropriate internal policies in place to mitigate your risk of being held responsible for your employees’ actions.
Most businesses publish company and product information online. If content damaging the corporate reputation is posted anonymously, we can obtain a court order to identify the poster. We then claim damages for defamation or passing off.
The brand is often the key revenue generator resulting from the ownership of intellectual property. Exploitation of intellectual property does therefore include brand protection. To build a brand successfully a strategy will help. We work on strategies with our clients helping them to grow brands.
A strong brand may comprise several intellectual property assets, all of which will need to have protection built in. A typical strategy will consider:
- Patents; and
- Trade marks
Intellectual property portfolio management protection
No IP registration lasts forever. It requires monitoring and reviewing. We maintain your intellectual property asset portfolio. Our services include:
- Registration of intellectual property rights across multiple jurisdictions;
- Market research to identify the best avenue for exploitation;
- Continuous assessment of the scope and strength of your registered and unregistered IP; and
- Monitoring for infringed goods online to ensure no one is utilising your intellectual property without your consent. This is important in order to protect your business and particularly your brand.
- Compliance with legislative frameworks including Portfolio renewal, plus informing you about legal developments.
Taxation of intellectual property
The disposal and licensing of intangible IP assets have inherent tax implications. During the heat of the deal, tax considerations are often ignored. However, you can avoid adverse tax charges by using the right deal structure. We will help you find the right structure for your situation.
Intellectual property ownership and exploitation recent cases
Most commonly, clients want to know all of the IP used in the business is protected and directed towards revenue generation. We get involved in IP protection across the range of assets as indicated below.
- Confidentiality agreement– we reviewed a confidentiality agreement for an innovative tech start-up. This agreement enabled our client to pitch to high net-worth individuals. We registered our client’s intellectual property and know-how, and protected it from passing off. He in turn secured investment.
- Copyright protection – we advised on copyright protection for creative musicians. Their works were created for a series of successful concerts. We documented the group’s rights to prevent future passing off.
- Franchise agreement – we ran the grant of pan-European franchise agreements across multiple markets. We acted for the franchisor on a retainer. The key issue was competition law to prevent monopolisation.
- Intellectual property rights registration – we dealt with the intellectual property right registration for a computer software company. This enabled the company to assign its intellectual property from the date of registration.
- Joint venture – our drafting of the joint venture agreement safeguarded a digital media company in its joint venture with a marketing platform. We drafted the agreement that catered for complex IP rights.
- Licencing – we set up a subsidiary to hold all the parent company’s intellectual property. In future, the subsidiary will grant licences to the parent company.
- Taxation – we worked with the accountants to claim research & development tax relief for UK car manufacturer’s passenger safety product development.
- Trade mark and design rights registration – we helped a comic book publisher register their trade mark and design rights. The publisher required protection across the EU. We demonstrated that the publisher’s designs contained the required level of distinctive character.
Intellectual property rights are intricate. Non-registration or incorrect registration easily lets competitors exploit your intellectual property. By protecting your intellectual property, you are creating an asset. By choosing the right model to exploit your intellectual property you are ensuring income and brand recognition. Expand your business with watertight agreements.