IP Risks
Now that we have identified the IP assets of your business and where their ownership lies, the next step is to uncover any potential risks to be able to mitigate against them.
There are a range of risks you can encounter associated with your IP assets:
Infringing competitor IP: This could relate to patents, copyrights, trademarks or other IP held by competitors. The worst- case scenario risk is that your competitor could enforce an injunction to stop you trading. They could also force you to pay a licence, claim financial compensation for any sales you have made (especially if you have done damage to them) and even take a share of your profits.
Detailed IP searches should be thought of like an insurance policy to avoid infringing on the IP of others.
Broken Relationships: There are a number of relationship issues that could result in IP risks including internal/employee risks, collaborator relationships not governed by the appropriate agreements (or not kept up to date with changes) and expired collaboration agreement.
Ensuring all relationships are governed by the appropriate agreements is essential to avoid collaborators acting as blocks later on.
IP ‘leaks’: Often associated with internal risks. For example, if information is put in the public domain before you file a patent application then you can no longer secure a patent for it.
Clear training and education for all staff members on the importance of protecting IP is key to avoiding IP risks.
Patents: Holding a patent does not automatically give you freedom to operate. Patents, registered design and trademarks are ‘negative rights’ rather than permissive rights. They give you the ability to stop other people from doing the thing that you claim in your patent, but it is still possible to infringe on someone else's patent. For example, if your device incorporates something that someone else has a patent on.
Thorough IP searches by an experienced IP lawyer can uncover any risks associated with infringing the IP of others and discover whether you have FTO.
Best Practices
The first step in mitigating IP risk is to recognize that risks exist.
The earlier you identify risks, the sooner you can come up with plans on how to monitor, avoid or minimise those risks.
The next step is to record and monitor risks.
This is done through an IP ‘risk register’, similar to a general business risk register. Employing a system to systematically keep track of risks and plans to mitigate them is essential.
Then, take steps to mitigate risks.
Methods for mitigating risk will depend on what the risks are. Different ways of mitigating risks could include discussions with the board, changes in business direction, changes in design of product or simply close monitoring. For example, for mitigating ownership risks, the action may be to negotiate and set up appropriate agreements and put terms in place in employment contracts.
Get in touch
Get in touch to start generating an IP risk register for your business.