Intellectual Property Planning

Jane Lambert

9 Jan 2017 Revised 19 May 2017

Intellectual property strategy is the systematic application of intellectual property laws to achieve commercial objectives. Those laws are very powerful business tools in that they can restrict competition, create new revenue streams and reduce production costs.

If an IP right protects the wrong asset or enforcement cannot be funded it is useless. Indeed, an IPR can sometimes be worse than useless as it can prompt unnecessary and often unwinnable litigation. In my years at the IP Bar, I have seen far more business failures resulting from an excess of IP than from insufficiency.

A simple example will suffice. A start-up develops a new home security device that is part sensor and part computer program. Some new circuitry has had to be designed but most of the components are freely available on the open market.   It may patentable to patent the device but a patent will take some time to obtain, require full disclosure of the way the product works and how it is made and cost several thousand pounds for the UK alone and many thousands more for the main European markets and very much more for overseas.  Should the company and its investors go for a patent or should they rely on other IP protection such as copyright in the software, design right in the chip and other components and trade secrecy? Everything will depend on the circumstances such as the anticipated shelf life of the device, whether it can be reverse engineered easily, the availability of competing products and so on.

The business owner or manager must bear all those and other considerations in mind when developing and marketing a new product, offering or taking a licence or enforcing an IPR.  For many, that is just too big a decision for them to take and they hive off responsibility for taking it to those who are legally qualified. Unless the lawyers or attorneys have some knowledge and experience of IP strategy they are probably in a worse position to take the decision than the business owner.

That is where I can be useful.  As a result of our experience of dispute resolution, barristers are often in the best possible position to advise on IP strategy. We know how disputes arise and what could have been done to prevent them.  As we do not prosecute patent, trade mark or design applications (though we can and do assist with them when things go wrong) we can offer completely disinterested advice on whether a registered right should be sought or whether rights that arise automatically like copyright and unregistered design right can be relied upon. We also understand better than most how IP law interacts with other areas of law such as company law and contracts.  I have the additional advantage of many years of experience of advising startups and other small businesses on IP matters.

If I can help call me on +44 (0)20 7404 5252 during office hours or use my contact form.