A Policy on IP Acquisition
Policy on IP Exploitation
A Policy on IP Monitoring
A Policy on IP Enforcement
Developing an Intellectual Property Strategy
Managing an enterprise’s IP assets is more than just
acquiring the formal IP rights through the national IP office.
trademark rights are not worth much
unless they are adequately exploited. Moreover, part of a company’s valuable IP
may not require formal registration but may call for other measures of
confidentiality agreements). Enterprises willing to extract full value from
their know-how and creativity should take adequate steps to develop an
IP strategy for their business and
seek to integrate it within their overall
business strategy. This implies including IP considerations when drafting
business plans and marketing strategies.
A basic IP strategy would include at least the following:
A Policy on
A single product or service may be protected by various forms of IP rights
covering different aspects of that product or service. SMEs must consider the
best protection package and make sure that all the formal rights are acquired as
early as possible (see "How
can Your SME Acquire and Maintain Intellectual Property Protection?").
SMEs should also bear in mind that creating a comprehensive IP portfolio may be
a considerable investment. This is particularly the case for patents. SMEs must
therefore carefully assess the costs and benefits of patenting on a case by case
basis and develop a strategy/policy on patent acquisitions which is appropriate
given their budget and market opportunities.
A Policy on
IP assets may be exploited in a variety of ways. These may include the
commercialization of IP-protected products and services; the entering into
licensing or franchising agreements; the sale of IP assets to other firms; the
creation of joint ventures; the use of IP to obtain access to other companies’
technology through cross-licensing agreements; or the use of IP to obtain
business finance. Enterprises should decide in each case how they may best
exploit their IP assets both domestically and internationally.
A Policy on
Consulting patent and trademark databases regularly is important in order to
find out about recent technical developments and new technologies, identify new
licensing partners or suppliers, new market opportunities, monitor activities of
competitors, identify possible infringers, and avoid infringing competitors’
rights. See also "Using
Patent Information for the Benefit of Your SME" and "Conducting
A Policy on
A clear policy on IP enforcement is crucial due to the losses that may be
incurred by the existence of counterfeited goods in the market and the high
costs involved in some IP disputes. See "What
Should Your SME do to Resolve Disputes Related to Intellectual Property?"
A description of how different companies with different levels of technological
capacity may develop an IP strategy to suit their own needs is contained in a
WIPO paper on “The Management of Intellectual Property Rights by Small and
Medium Sized Enterprises” (see WIPO/ACAD/E/93/12).
Some Important Steps to be Considered While
Developing an Intellectual Property
Check trademark databases to avoid
using an existing trademark and protect trademarks before launching a new
product or service with a new
It is important to consider export markets when doing so and avoid using
brand names that may have an undesirable meaning in a foreign language.
Identify patentable subject matter and make sure it is patented early enough
to avoid losing the invention to competitors.
Make sure that patentable inventions are not shared with others or published
before filing a patent application. In order to meet the patentability
criteria inventions must be considered “new”. Early disclosure of an
invention (e.g. through publication) will compromise the chances of the
invention being considered new, and therefore patentable.
Make sure that trade secrets are kept within the enterprise and prepare,
where appropriate, confidentiality agreements (see
help desk) when
negotiating and sharing information with business partners in order to
protect trade secrets.
For export-oriented firms, make sure IP is protected in all potential export
markets. In the case of patents, it is important to bear in mind that an
enterprise generally has 12 months from the date of filing of a national
application to file the same patent application in other countries.
Use your IP portfolio as leverage when seeking sources to
finance your business
(e.g. include IP assets, particularly patents, utility models and industrial
designs, in your business plan as it may help
to convince investors of the market opportunities open to your enterprise).
patent information available in patent databases to develop
your business strategies.
When conducting joint research with other enterprises or research
institutes, make sure that there is sufficient clarity on who will own
potential IP generated from the research project.
Monitor the market and make sure that your IP assets are not being
infringed. If violation of your IP rights is detected it may be advisable to
contact a lawyer.
If you are unsure about how to best protect your company’s intangible
assets, conducting an IP audit may be a good first step in order to identify
all your company’s valuable information and to develop an IP strategy. On
occasions, companies are unaware of the wealth of assets they possess in the
form of information, creative ideas and know-how and may, therefore, not
take adequate steps to protect them.
The checklist is by no means exhaustive. These are some of the basic strategies
that have been successfully pursued by enterprises that have fully integrated IP
rights into their