The Government is supporting SME’s involved in innovative growth areas by providing expert advice and guidance through the Growth Accelerator Programme. This advice extends to commercial, managerial, marketing, financial and intellectual property (IP) advice. As a small company ourselves we have benefitted from the advice we received as participants in the scheme and we are now expert IP mentors and service providers supporting SME’s engaged in the scheme. We can help identify existing IP and guide you through the process of protecting it whilst ensuring it matches your commercial needs. We have a pragmatic approach based on years of commercialising IP based technologies and are well aware that keeping ideas secret can sometimes be more appropriate than publishing in a patent.
Every SME will have IP which it has created and IP related issues which it is exposed to as it moves its product or service closer to market. Our IP Audit process will check through your agreements and working relationships with suppliers and customers, your use of IP such as copyright which may be owned by your supplier and provide you with a comprehensive overview and a guide as to how to address any issues. If desired, we can draft and negotiate IP related agreements for you so as to ensure your company is as safe as it can be with regards to the ownership of IP and access to IP created by your commercial partners.
The identification of strategically important IP whilst developing a product can be a tricky thing to do, particularly if you are concentrating on the detail of how to make the product work. The Technology Roadmap process is designed to give companies a better overview of what IP could be created as the product is developed and helps categorise the IP such as to identify the most commercially valuable IP and ensure it is not forgotten in the rush to get the product to market. The results will give senior management a “big picture” view of the potential for capturing real value and a roadmap of how to do so. To date such reports have been used by companies to focus technology development in key value areas, help support investment funding and raise internal awareness of the value of what people are working on. The process takes you outside of your immediate product and looks at the bigger commercial picture as there may well be other commercial enterprises who might make more out of your invention or product than you can and securing strategic IP may well allow you to benefit by way of license income.
Patent and Trade Mark Filing and Prosecution
We can fulfil your patent requirements to identify, protect and extract maximum value from the IP within your business. Patent and trade mark filing form the part of the core value that IP Asset can bring to your business. Our work is based on extensive experience of filing commercially focused applications and extracting real value by way of licensing or sale of the resulting IP. We offer a broad range of services across a diverse range of technologies and pride ourselves in taking the time to understand your business needs, allowing us to provide IP services which complement your future goals.
Patent searching can provide not only knowledge of your competitors’ activities but also guidance on which aspects of your technology may be patentable. Our expert use of advanced searching tools allows us to provide very thorough search and analysis, and to present the results to you in an easily understood format that facilitates swift review.
You can create value through engaging us to review your IP portfolio. An IP review provides a comprehensive survey of the strengths, weaknesses and commercial relevance of your existing IP portfolio. We can also verify and correct any issues relating to ownership. In addition, an audit aimed at identifying other potentially strategically and/or commercially valuable IP, which may be present in the company, is undertaken. Such IP, which may not be expensive to protect and is often overlooked because of limited specialist or general resource, will be categorised and advice given on optimum methods for protecting it. This process is designed to help you build a robust IP position, ensure that you own what you have paid for, and ensure you maintain and develop your commercial advantage.
If you explore potentially inventive concepts prior to commercialisation you can reduce risk, reduce unnecessary costs and increase revenues.
We can help you ‘engineer around’ the claims of existing third party patents by identifying any aspects of your intended products which appear likely to infringe those claims. Our legal and litigation experience, together with our commercial and technical expertise, allows us to both investigate the validity of third party patents and to assist you in challenging that validity when appropriate.
We can also assist in avoiding third party trade marks, designs and copyright.
A more aggressive strategy of infringement avoidance can involve invalidating or marginalising the relevant third party IP rights. We work with our clients to identify potential strategies for dealing with other people’s rights, including seeking acknowledgements that there is unlikely to be infringement, and by seeking opinions on infringement and validity from the UK-IPO through to full-bloodied court actions.
If you feel that your product is similar to an existing patent, we can help put your mind at ease by providing an infringement opinion that lets you know where you stand. We have extensive experience in advising on and helping navigate through potential infringement scenarios so that any disruption to your competitive position is kept to a minimum. Whether this be through providing an opinion which gives you the peace of mind to continue your operation, negotiating an appropriate licence deal with the patentee, or challenging the validity of the patent in question or assessing the likelihood of the patentee taking action, what that might be and what that might mean for your business.
When business leaders make strong, informed decisions it enhances the value of the company and leads to growth, stability and continuity.
The availability of commercially focused IP information to senior management is an invaluable benefit to a technology-orientated company. It provides clarity and insight during mergers, acquisitions, re-structuring or benchmarking, and may also be used to provide the Board with the knowledge it needs to make the strategic decisions necessary to protect and enhance the company’s position.
Our technologically skilled attorneys can help you to present IP portfolios in a concise and visually appealing manner. We do this using the most advanced electronic analysis and IP visualisation tools available.
If you believe a competitor is about to be wrongfully granted a patent or trade mark which could have an adverse commercial effect on your business, we can assist you in opposing its grant or registration. Additionally, there is a role for using oppositions as part of a strategy for dealing with a competitor’s patent portfolio, and using this to enhance a negotiating position.
The successful opposition of patents requires a balance of legal and technical skills deployed in combination with your technical and commercial experts. Our in house team of lawyers, patent attorneys and technical experts allows us to investigate the validity of a patent to provide you with both a legal opinion and the required support to help manage the situation. This service is designed to reduce both your potential risk and cost.
Competitor and Technology Watches
Information about competitors’ activities is a valuable commodity which can save wastage of precious time and money; this cost-effective service provides you with regular bulletins of information tailored to your requirements.
Systemic delays in the publication of patent applications mean that awareness of IP arising from competitors’ technical advances is not always possible in advance of R&D investment. Using key words supplied by you, this service will alert you to any new IP published which is relevant to your activities and thereby enable you to assess its impact and take any necessary compensating action at the earliest possible opportunity.
Navigating Competitor IP Rights
There are many ways of dealing with competitor IP rights. We evolve strategies for our client as the circumstances require. At the most aggressive end this can be court action to have competitor IP rights overturned. At the softer end, this may be a confidential opinion and assistance to devise a “work around”. In between, this may involve patent office opinions and revocation work at patent office level.
The cost of acquiring and maintaining patents in foreign territories can be significant, and it is important to ensure that such costs are closely aligned to your organisation’s commercial objectives. The value of registrable IP can only be optimised by understanding the territorial and legal protection it provides whilst balancing the associated costs and technical issues. Our commercial experience allows us to analyse opportunities, assess competitor activity and advise on optimum territorial cover. Our advice is tailored to your specific circumstances, and is constructed to help you make the key decisions which will minimise your costs whilst meeting your commercial imperatives.
Trade Marks and Designs
Once you have your brand or even your novel packaging, our trade mark attorneys and legal team can help obtain registered trade marks and, where appropriate, registered designs. We can also advise in relation to all aspects of trade marks and designs, whether issues arise in relation to ownership, exploitation or enforcement. Examples of our services include setting up watching searches, carrying out pre-launch clearance searches, assisting in relation to trade mark co-existence agreements, and assisting in domain name disputes.
Even though your registered IP portfolio will often serve as a deterrent to potential infringers, it may be necessary to enforce IP rights in order for you to maintain your commercial position. Our blend of in-house and private practice expertise in the creation of IP rights, litigation and its management provide a complete solution for the enforcement or settlement of IP disputes.
We are experienced in reviewing the IP implications of transactions and preparing and adapting legal clauses to deal with title and risk apportionment, working together with other members of our team to provide a seamless service.
When investigating the ownership of any IP right, the starting point is with the inventor or creator. Rights may then be transferred by operation of law (as where an invention is created by an employee who is employed to invent) or by way of contract. We help our clients unravel the ownership trail and ensure that all rights are with the correct party. This may take the form of reviewing and amending employment contracts, job descriptions or employee handbooks. Or it may take the form of identifying all potentially interested parties and seeking confirmatory assignments to ensure that ownership issues will not arise.
It is a common misconception to believe that payment for services brings ownership of resulting intellectual property. Though our understanding of the technical and the legal, we help ensure that your business owns the IP rights it intended to acquire or where ownership is not possible, that it has the right to use relevant IP rights.
When disputes do arise, we help our clients to manage and resolve those disputes.
Ancillary Legal Services
Our legal team is experienced in drafting commercial agreements required by hi-tech companies ranging from material transfer agreements through to commercial contacts and licences, to employment contracts for employees liable to create inventions. We can also draw upon a referral network to provide legal services outside our core area of work so as to provide clients with top quality advice on matters such as; the acquisition of leases and offices space, and corporate restructuring.
Do you have the resources, time and skills to manage your own IP as effectively as you would like? Many stages of a company’s development require increased technical, managerial, legal or other specialist resources, but funds to support appropriate full time staff members may not be justifiable or readily available. In these circumstances we can offer you a cost effective interim solution, in the form of effective and professional people, with hands-on experience in a wide range of technology development and commercialisation activities.
Successful licensing will strengthen the revenue streams within your business. IP licensing requires a good understanding of not only the technology and its markets but also the range of licensing options available and their potential impact upon your commercial objectives. We have extensive experience in this area, and will use that experience to assess the strengths of your IP and work with you to negotiate licence deals designed to meet your needs and return significant value to your business. We can also advise on, and undertake on your behalf, “in-licensing” of third party rights, when access to such rights are required. Our legal team works closely with our commercial team to create the necessary documents.
You can maximise your return on the investment in your IP by engaging IP Asset to help realise its full value.
Whilst many technology-related companies know they have value captured in their IP, many do not realise just how much value has been created or how to release that value. IP Asset is well placed to assess and value IP positions, and can not only help you to identify potential licensees or infringers but can provide “hands-on” assistance with the structuring and negotiating of licence deals.
Cost reduction is a clear benefit in itself. The maintenance of a large IP portfolio is both expensive and time consuming. Harnessing our in-house experience of strategically managing IP portfolios allows you to control costs and optimise the value of your IP portfolio to your organisation. We can work with you to advise if specific IP could be eliminated, traded, sold or – if considered to be “core” IP – leveraged via licensing to create a new income stream.
Venture Capital Due Diligence – (Client Perspective)
We can help you to present the values of your company to potential investors. Venture capitalists and many other investors are now insisting on high quality IP due-diligence before investing in technology-based companies. IP Asset are able to investigate the strengths and weaknesses of your IP position and, if appropriate, to assist you to improve it. We can also advise you on future strategy and “best practice” IP harvesting methodology. This service is tailored to equip you with the confidence and information necessary to present your enterprise’s IP position to potential investors in the most favourable light possible and thereby facilitate a positive investment decision.
Our cross disciplinary teams give us a unique perspective for assessing the strengths and weaknesses of your IP position and, if appropriate, to assist you to improve it.
Due Diligence – (VC Perspective)
Venture Capitalists require high quality due diligence prior to an investment decision, and this is particularly true in the case of technology-based enterprises. A critical part of the due diligence process concerns the quality (or otherwise) of the IP underpinning the business proposition, and evaluation of this can be particularly challenging unless specialist expertise and experience is available. IP Asset staff offer a very rare blend of technological expertise combined with in-depth hands-on commercial, marketing and IP experience. This enables them to check that the enterprise’s IP has been accurately and completely identified, provides an adequate barrier to third party “copycat” products, and is effectively aligned with its business objectives. IP Asset can also attempt to identify other applications, markets and entities through which money could be raised using the entity’s IP and can comment on the potential for future IP generation. This service is tailored to provide you with a complete and professional assessment of the IP position of the prospective investment as an aid to risk assessment.
Our legal team works in tandem to assess legal issues with the IP to help with understanding and management of legal risk. From a detailed understanding of technical and IP legal issues, we work with our clients on acquisition documents, warranties, indemnities and assignments.
Small to medium sized technology-based businesses often find it difficult to engage with investors when raising funds. We can help your company in the fundraising process by presenting the technology, IP, and the competitive landscape in a manner which facilitates easy comprehension and maximises impact. In addition, our network of venture capitalists is keen to see new and innovative investment opportunities.
We would be pleased to make appropriate introductions and to provide you with support in your dealings with them or with other potential investors.
To maximise your commercial opportunities you need to have clear strategic direction and focus. We offer a full service to enable you to formulate a strong commercial strategy. Using our extensive experience in technology commercialisation, we can identify and analyse strategic options and make detailed recommendations as to your best route to market. For example, we have worked with start-up companies, research councils and funding bodies to maximise the value of IP and enable informed decision making.