IP Management:

IP Guide for SMEs

IP Guide for Small- and Medium Sized Enterprises (SMEs)

Managing the Intellectual Assets of Your SME

By World Intellectual Property Organisation (WIPO)

A Policy on IP Acquisition

A 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. Patent or 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 protection (e.g. 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 IP Acquisition

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 Exploitation

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 IP Monitoring

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 Trademark Searches."

 

A Policy on IP Enforcement

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 available in Adobe PDF  format).

Some Important Steps to be Considered While Developing an Intellectual Property Strategy

  • Check trademark databases to avoid using an existing trademark and protect trademarks before launching a new product or service with a new brand name. 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 WIPO 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).

  • Use 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 business strategy.

     

     

     

     

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