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Creating tangible value from an intangible business asset

The val­ue attrib­uted to intel­lec­tu­al prop­er­ty (IP) on bal­ance sheets con­tin­ues to accel­er­ate. The large US tech giants, such as Apple and Google, have led the way in cham­pi­oning IP as a cen­tral com­po­nent of their brand and busi­ness. In an increas­ing­ly ser­vice-dri­ven world, there is an ever-greater reliance on IP to dri­ve growth.

The era of dig­i­tal dis­rup­tion has forced IP on to the board­room agen­da. As cor­po­rates respond to new entrants and inno­va­tors in their respec­tive mar­kets, often piv­ot­ing from mere­ly man­u­fac­tur­ing goods to pro­vid­ing both prod­ucts and ser­vices, there has been a sig­nif­i­cant rise in research and devel­op­ment (R&D) spend and a pro­lif­er­a­tion of inno­va­tion hubs, often based on col­lab­o­ra­tions between star­tups and incum­bents. This has had the knock-on effect of rais­ing a num­ber of issues relat­ing to IP, includ­ing own­er­ship and pro­tec­tion.

With IP grab­bing the atten­tion of C‑suite lead­ers, it has become appar­ent that many sophis­ti­cat­ed multi­na­tion­als lack a full pic­ture of their IP port­fo­lio. They often find IP siloed in var­i­ous busi­ness units depend­ing on the company’s prod­ucts and ser­vices, which may have been devel­oped by dif­fer­ent teams in dif­fer­ent coun­tries or be third-par­ty IP that has been acquired through merg­ers and acqui­si­tions. If a frac­tured, rather than focused, view is tak­en of IP, it begs the ques­tion whether it is prop­er­ly pro­tect­ed and ful­ly opti­mised.

“For some busi­ness­es, IP is very much front of mind. Man­age­ment has a thor­ough under­stand­ing of their IP assets and are sup­port­ed by spe­cial­ist inter­nal and exter­nal IP coun­sel,” says Dominic Farnsworth, head of IP at Lewis Silkin, a top-100 UK com­mer­cial law firm. “How­ev­er, many busi­ness­es either don’t have the same under­stand­ing or fail to appre­ci­ate the impor­tance of pro­tect­ing their ideas, inven­tions and data.”

IP is fre­quent­ly under-resourced in organ­i­sa­tions or built up in a dis­joint­ed man­ner with no over­all under­stand­ing of whether they have the appro­pri­ate patents, trade­marks and domains. Busi­ness­es will often just assume they have all their bases cov­ered, but IP does not lend itself to ret­ro­spec­tive fix­ing. If a com­pa­ny doesn’t reg­is­ter a trade­mark, its abil­i­ty to stop some­body from using a sim­i­lar mark or domain name can be severe­ly com­pro­mised and fail­ure to patent an inven­tion is an invi­ta­tion for brazen copy­ing.

By under­stand­ing the full IP jour­ney, from cap­ture to real­i­sa­tion, com­pa­nies can build IP into their cor­po­rate strat­e­gy to sup­port key busi­ness goals

“The ter­ri­to­r­i­al nature of reg­is­tered IP such as trade­marks, patents and designs is a par­tic­u­lar headache,” says Tom Gaunt, patent part­ner at Lewis Silkin. “You might reg­is­ter a patent only in Europe for bud­getary rea­sons, but then find your­self unpro­tect­ed if it takes off in key mar­kets such as the Unit­ed States and Chi­na. IP strat­e­gy is not a dark art, it just needs to be thought out and bud­get­ed for. We are con­stant­ly instruct­ed by clients look­ing to fix IP headaches caused by an absence of appro­pri­ate strat­e­gy.”

A lack of clar­i­ty on the full port­fo­lio of IP assets also means oth­er com­mer­cial oppor­tu­ni­ties are missed. Many busi­ness­es fail to realise that much of what they both cre­ate and deal in is IP. And that IP is not just an asset to be pro­tect­ed, but a mon­eti­s­able asset and a core ele­ment of future growth. In the auto­mo­tive indus­try, for exam­ple, IP is play­ing a huge role as data and the inter­net of things trans­form every­thing from the soft­ware in cars to the con­tent they host. In addi­tion, banks are strong IP own­ers, not only in their head­line brands, but also in their data­bas­es and soft­ware.

“Under­stand­ing the oppor­tu­ni­ties afford­ed by IP means appre­ci­at­ing all its areas,” says Cliff Fluet, IP and dig­i­tal media spe­cial­ist at Lewis Silkin. “IP isn’t a sin­gle cat­e­go­ry, but cov­ers a panoply of rights and assets, includ­ing reg­is­tered and unreg­is­tered rights as well as soft IP like copy­right and hard IP such as patents. Some think if they just have a domain name then they’re fine, not under­stand­ing the pow­er of a trade­mark or the impor­tance of a glob­al strat­e­gy for domain names across a port­fo­lio of busi­ness­es. IP could be the core of your future mon­eti­sa­tion strat­e­gy and you don’t realise it.”

By under­stand­ing the full IP jour­ney, from cap­ture to real­i­sa­tion, com­pa­nies can build IP into their cor­po­rate strat­e­gy to sup­port key busi­ness goals. This includes dri­ving IP cre­ation and acqui­si­tion, focused R&D, high­light­ing divest­ments where IP holds no val­ue to the busi­ness or using IP as lever­age in nego­ti­a­tions.

Lewis Silkin has decades of expe­ri­ence active­ly man­ag­ing, defend­ing and help­ing to opti­mise IP port­fo­lios and brands, from incep­tion, val­ue analy­sis and pro­tec­tion, through to roll­out, com­mer­cial­i­sa­tion and dis­putes. The law firm is unusu­al in that it offers a com­plete 360-degree IP ser­vice across trade­marks, copy­right, designs, patents and domains, both con­tentious and non-con­tentious. It pro­vides port­fo­lio audits and active asset man­age­ment, and uses tech­nol­o­gy, online tools and inno­v­a­tive struc­tures to deliv­er ser­vices in an effi­cient and user-friend­ly way.

In an era when a more holis­tic approach to IP port­fo­lios is need­ed, Lewis Silkin pro­vides a joined-up, cohe­sive offer­ing that helps com­pa­nies get a han­dle on one of their most impor­tant intan­gi­ble assets. The firm has in-depth sec­tor knowl­edge across retail, tech­nol­o­gy, man­u­fac­tur­ing, adver­tis­ing and mar­ket­ing, sport, and media and enter­tain­ment.

“Most law firms with IP teams focus on com­mer­cial deals and lit­i­ga­tion. We go much fur­ther,” says Farnsworth. “Our team incor­po­rates not just lawyers, but also trade­mark attor­neys, advis­ing on the acqui­si­tion and reg­is­tra­tion of trade­marks and designs, as well as man­ag­ing glob­al IP port­fo­lios.

“Being able to han­dle every aspect of a brand’s life cycle, from cre­ation to pro­tec­tion to com­mer­cial­i­sa­tion, has dri­ven our growth in IP. Beyond that, we want­ed to cre­ate a one-stop shop address­ing all IP needs, so last year we acquired a bou­tique firm of patent attor­neys and now we can deal with all a client’s IP holis­ti­cal­ly under one roof. That’s quite a unique and excit­ing propo­si­tion.

“We’ve built Lewis Silkin up to cov­er the full width and length of the play­ing field in terms of IP exper­tise, but we add height too. By that I mean the val­ue of IP doesn’t sit in a vac­u­um. The abil­i­ty to dial in com­mer­cial, data reg­u­la­to­ry, com­pe­ti­tion and tax experts from the firm to sup­port our clients’ IP ven­tures pro­vides them with a greater spring­board for suc­cess. And it is this that makes us one of the lead­ing play­ers in IP.”

For more infor­ma­tion please vis­it lewissilkin.com