Disclaimer!
The content in this SMEs corner is provided for educational purposes only, and does not constitute legal, tax, or business advice. For guidance tailored to your specific circumstances, please consult a qualified professional.
Starting out your IP Strategy
An IP strategy begins with knowing what IP your company owns, understanding what that IP is worth, and safeguarding your IP assets with adequate protection. This section explains how to work through these stages and build an IP strategy that supports your business.
Step 1: Identify your IP
The first step is to identify intangible assets. Intangible assets are non-physical resources that a business owns and that provide future economic value. Some examples include inventions and technical solutions, brand names and logo, product designs, software, texts and images, confidential business information.
Such an IP audit can help you to understand which of these identified assets can be protected, where protection may be needed (national, EU or international), or whether you are using IP owned by others. There are several ways of conducting an IP audit. For example:
WIPO
The World Intellectual Property Organisation (WIPO) IP Diagnostics. This self-assessment tool provides strategic questions about your company and then generates a report with information relevant to your future IP strategy. It is offered free of charge and is available in multiple language
LINKEUIPO
EUIPO IP Scan is a review service offered by IP offices in some EU States. It connects you with an IP expert for one-on-one consultations identify registrable and non-registrable IP and assess their potential value. In some cases, you can get up to 90% of costs reimbursed. Check IP scan coverage available based on your location
Private companies
Private companies also offer IP assessments. Prices vary depending on the depth of analysis. More comprehensive plans may include ongoing expert support and filing assistance for selected IPRs.
Step 2: Assess the value of your IP
Not all IP holds the same value for every SME. Its importance depends on the business model. Therefore, SMEs must strategically choose which IP assets to register based on what drives their business value.
While registering IP rights may bring value to SMEs, it can also be costly. Formal protection is best reserved for the assets that strengthen the value of your company.
For example, trademarks tend to be more important than patents for a beauty salon chain SME. In contrast, a tech SME would consider its patents as key assets.
This does not mean that trademarks are irrelevant for a tech SME. Trademarks may still be valuable for a tech company, depending on its business model.
The process of determining the monetary value of IP assets is known as ‘IP valuation’.1 Used alongside the IP audit, it helps companies understand both the financial worth and the strategic importance of their IP assets to the business. As business priorities change over time, the value of IP assets can shift as well. Regular reassessment is therefore essential to identify assets that are no longer useful or relevant.2
Step 3: Protect what matters
Once SMEs have identified and assessed their IP assets, they can choose the most suitable form of protection. This may include patents for inventions, trademarks for brands, design rights for product appearance, copyright for creative and digital works, trade secrets for confidential information.
Regardless of the type of business, certain good practices apply to any SME. One of the most important is maintaining confidentiality.
This matters not only when the company’s commercial value depends on trade secrets, but in any situation where sensitive information is shared.
For patents in particular, confidentiality is critical. Oral or written disclosure, as well as public or electronic use of an invention can destroy its novelty and thus its patentability. Below are some examples of disclosure scenarios that might affect the novelty of an invention:
You have been invited to present your invention at a trade fair. This is a valuable opportunity to meet potential clients and attract investment.
Caution: Presenting a prototype at a trade fair qualifies as public disclosure, which means that filing for a patent afterwards risks the invention lacking novelty.
What would you do?
What to do:
File for a patent before presenting at a trade fair. A presentation that takes place after filing will not affect the novelty of the invention. If filing is not yet possible, present a model that resembles the technology without revealing its core.
You have received a call back from a private equity firm interested in your technology and a meeting has been set up.
Caution: When pitching to investors, revealing core technology in detail can constitute public disclosure and destroy the novelty of an invention not yet filed.
What would you do?
What to do:
Sign a Non-Disclosure Agreement (NDA) with all the attendees of the meeting. If attendees are legally bound not to disclose what was shared, the patent may still be granted. However, NDAs can be difficult to enforce in reality. Where possible, focus on other valuable aspects of your business rather than detailed explanations of the technology.
One of your employees is a PhD student who publishes a journal article about a new solution applied to your core technology. The paper attracts attention to your business.
Caution: If the article is published before the patent is filed, the patent examiner may treat it as prior art, and the invention may lack novelty.
What would you do?
What to do:
Apply a “Least Privilege Access Policy” at your company. This would ensure that only those who need access to sensitive technical information have it. Additionally, enter into NDAs with employees who may be exposed to sensitive information, to make it clear that publication requires prior company approval.
Your marketing manager launches a social media page to attract investors, clients and increase brand visibility. The page features a video for tech enthusiasts that reveals key components of a new invention.
Caution: If this material is published before a patent application is filed, it constitutes prior art and may prevent the patent from being granted.
What would you do?
What to do:
Apply a least privilege access policy at your company. This would ensure that only those who need access to sensitive technical information have it. Additionally, enter into NDAs with employees who may be exposed to sensitive information. Finally, establish a clear internal approval process for all external communications, including social media posts, videos, and marketing materials.
Confidentiality goes beyond NDAs and early filing. When interacting with any stakeholder, clear rules on data sharing should be established, defining who can access sensitive information and making its use traceable. This way, any potential breach of confidentiality can be traced and documented.
Under European patent law, the novelty requirement is applied strictly. Any public disclosure of an invention before the filing date will generally destroy novelty. This includes disclosures at trade fairs, investors’ meetings, journal articles, or social media before you file for a patent. The exceptions to this rule are narrow and apply only in specific circumstances.3
Sources:
1 - World Intellectual Property Organization, 'Valuing Intellectual Property Assets' (WIPO) https://www.wipo.int/en/web/business/ip-valuation.
2 - World Intellectual Property Organization, Uncovering IP Risks and Potential: IP Audit (online) https://www.wipo.int/en/web/business/ip-audit.
3 - Under Article 55 EPC, a prior disclosure will not affect the novelty of an invention in two situations. First, where the disclosure resulted from an evident abuse in relation to the applicant, provided the patent application is filed within six months of that disclosure. Second, where the invention was displayed at an official international exhibition fulfilling the criteria of the 1928 Convention on International Exhibitions, again provided the application is filed within six months of the display. See European Patent Convention, Article 55 (Non-Prejudicial Disclosures).
