Grow by Integrating IP Into Your Business Decisions
Learn how to make strategic business decisions at the beginning of your company’s lifecycle, when getting your business started. This section breaks down and analyzes critical IP strategy considerations that your company will face at this stage of the business lifecycle.
Key takeaways
As you are setting up your business, remember many of its aspects can be protected with IP
Your business context should drive your IP strategy
IP rights are an investment in your business. If you don’t act now, you may lose out.
When working with others, get agreements in writing that lay out key terms
Choose your brand wisely and protect it.
Learn how to make strategic business decisions as your business becomes more established and you are preparing to grow. This section breaks down and analyzes critical IP strategy considerations that your company will face at this stage of your business.
Key takeaways
When your business changes, revisit your IP strategy to make sure it still supports your commercial objectives.
Think about potential disruptions as you build your IP portfolio. Shifts in the business models may render your IP more or less valuable.
As your business changes, consider if you can create new IP that delivers competitive advantages or drives value.
Review your IP assets regularly. Stop paying for assets that are no longer valuable to you or someone else.
Your IP may be valuable to others and can be a source of revenue. Consider if you can sell or license it.
If someone claims you’re using their IP without permission, take it seriously. Analyze the claim and get legal help to figure out the next steps.
Expanding the team
As you expand, be clear with new team members about what the company owns and the steps each person needs to take to keep your competitive advantage safe.
a. Considerations on IP ownership
IP ownership often starts with its inventor or creator. Even if someone creates IP on your behalf, e.g. through employment or a contractual agreement, you may not legally own it.
Like any property, these rights can be transferred through an assignment. In many countries, an assignment must be registered with the relevant authority.
Intellectual Property and Employment Agreements
This is why companies usually require employees to assign their IP rights (IPRs) as part of their employment contracts.
You can, and should, enter into these agreements even if local law assigns IPRs automatically to the employer. It helps avoid disputes later, provides you rights if local changes, and gives comfort to investors and partners who are not familiar with practices in your market
In practice, make sure that current and new employees have clear contractual terms that outline:
Clear distinction between what the company owns, and what may be owned by employees
The employee's agreement to assign rights to IP they create, in writing, even after they leave the company
In case of resignation or termination, what happens to the IP created
Any exceptions you agree on with the employee
Assigning IP Ownership when created by Contractors
Contracts need to be clear about what your company owns and what IP the contractor keeps. This is especially important for temporary staff, who are unlikely to stick around as the company grows.
Protecting confidential information from departing employees
Remind the employee or contractor of their obligations. If possible, do an inventory of IP that the employee interacted with or helped create. Ask them to put in writing that your company owns these rights. This document can be used later, if you need to prove you own something and the person is unavailable or unwilling to help.
b. Keeping your company’s confidential information safe
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As you conduct your business, establish clear structures
and policies to keep your company and IP safe.
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Identify what is confidential
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Keep an up-to-date inventory that includes both IP and trade secrets
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Require employees and contractors not to disclose it, even after they leave the company
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Do not share confidential information of others, like former employees
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Some trade secrets are highly valuable to your
company, such as:
Source code
Customer or supplier lists
Financial information and business planning
Formulae and recipes
Process know-how
Marketing data and planning
For this purpose, conducting an IP audit might be helpful in identifying the full suite of what is confidential and needs further protecting. Once confidential assets have been identified, require employees and contractors not to disclose it, even after they leave the company.
Think before you share confidential information
You may need help from outside the company to realize your vision, e.g. to build your brand, manufacture your product, distribute and sell it.
Before sharing take steps to keep your company’s competitive advantage safe.
a. Execute non-disclosure agreements (NDAs)
Non-disclosure agreements (NDAs) are short documents that explain the information shared is confidential and what you can do with it.
It's a standard business practice to execute NDAs and is considered a sign of seriousness of your endeavor
To keep your company safe, develop an NDA template for your business and make it part of corporate culture when talking to anyone outside your business.
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The template should include the following key components:
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What are you sharing and why?
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How can the information be used?
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How long will it be a secret?
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What happens if the information becomes public?
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What happens if the NDA is broken?
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Will anything be returned or destroyed after the agreement ends?
Keeping your IP safe while working with suppliers
Put your commercial arrangements with suppliers in writing and include the elements you’ll need to run your business today and as you grow, including:
a. Clarify what you will own from the relationship
Depending on the relationship, the supplier may be willing to give you rights to what is developed or produced. If you own it, make sure that your ownership is clear and in writing.
b. If you don’t own it be clear about how you can use in the future
If you do not plan to own all of what gets created or developed, understand how you can use it in the future. Can you use it on other products or offerings? Are there any limitations? What happens if your company changes ownership?
c. Ask for physical or digital copies of what’s created
You might need documents, source code, models, formulas that your partner creates to run your business.
d. What’s confidential and how any information you provide can be used
When you finalize a supplier arrangement, clarify what’s confidential, even if you already executed an NDA. It may not cover your current relationship.
When working with suppliers, avoid giving your competitors an advantage. Consider preventing them from using what they create for you with a third party.
e. Can the supplier use third-party IP as part of the contract?
The supplier might need or want to use someone else’s IP to complete the contract. For example, a software developer may include a third party software package as part of a mobile app.
If you agree to using third party IP, ask the supplier to tell you about it. Ensure that you are comfortable with the license terms associated with the third-party IP and consider whether these terms allow for transferability in the event of selling some or all of your business.
f. Clarify what happens if someone accuses you of using their IP without permission
In some cases, it can be appropriate for a supplier to defend you if someone else claims that you are using their IP. For example, if you buy a chipset from a supplier that goes in your machine and you use it as directed by the supplier, it may make sense to make them responsible for these types of claims.
g. Steps that happen when a contract ends
Be clear what happens at the end of the contract or if the supplier fails to deliver. This includes what documentation you need or what should be destroyed or returned.
Setting up a successful business partnership with your IP
What are the benefits of business partnerships?
Access and develop things your business needs: knowledge, technology, etc.
Reduce R&D costs and share risks
Enter new markets and scale-up your business
Think about how you will use IP at all stages of your partnership:
Your best asset to contribute may be your IP
You may need access to IP owned by the partners
A good partnership may create new IP
Ownership and rights may vary based on what’s created and the nature of the IP
Examples:
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Brand belongs to the partnership
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Manufacturing improvements belong to one partner
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Product improvements belong to another partner
Your business partnership agreement should include clear IP terms and cover:
Who decides what to protect
Who oversees what process
Who pays for what
What IP is contributed, who can use it and on what terms
Who gets partnership-owned IP and other assets when it’s dissolved
How to maintain confidentiality
How to resolve disputes, you can refer to WIPO’s Arbitration and Mediation Center (AMC) which offers time- and cost-efficient alternative dispute resolution (ADR) options.
IP information as a source of business intelligence
Want to know more about your market, competitors, and potential partners? Information contained in specialized IP databases reveal more than you think.
a. Competitive Intel
Recent registrations can give a clearer picture than other sources.
b. Business Opportunities
Find technology that is not on the market yet and get access to it.
c. Find Partners
Want a partner? Look for entities with complementary IP registrations.
Who’s working together? Look for IP registrations with multiple parties (e.g. inventors or owners).
d. Technology Trends
Recent IP filings show how a field is developing.
e. Component Incorporation
You may want to use third party IP to further develop your products.
f. Potential assets
If there is no registered IP, you may be able to protect it. (Or it may not be public yet, or the market may not view it as valuable).
Mitigating IP risks as you grow
a. IP ownership check
Before you become successful, check if you might be using someone else’s IP.
Using someone else’s IP without permission can cost your business.
You might have to:
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Stop using your name or offering
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Pull your offering from the market
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Pay damages
Ignorance is not a defense!
What should you check before using an IP asset?
Search for your name in the markets you plan to sell, both now and in the future
Consider each feature of your offering separately and as a whole How to carry out an IP check?
Start with your own search (WIPO databases)
Then work with an expert (legal counsel or IP office)
What to do if you find that an intellectual property is already in use?
Remove or design around the protected feature
Get access to it (e.g. license or buy it)
Use legal help to determine if the IP applies to you or may be invalid
Consider a new name or different offering
b. Protecting your intellectual property
If you don’t find any intellectual property records, and if it’s valuable, consider protecting your asset with IP
Protect an invention with patents, utility models or trade secrets
Protect your creative inputs with copyright, industrial designs and trademarks
Protect confidential information with trade secrets
Protect your brand name or logo with trademarks, copyright and industrial designs
Protect a design with industrial designs, copyrights and patents
Key takeaways
As you are setting up your business, remember many of its aspects can be protected with IP
Your business context should drive your IP strategy
IP rights are an investment in your business. If you don’t act now, you may lose out.
When working with others, get agreements in writing that lay out key terms
Choose your brand wisely and protect it.