You’ve got a promising business model, the resources to make it work and somewhere along the way you’ve created intellectual property rights through innovation, branding and an earned reputation. This IP is a key part of the business’s growth, and a core asset. Structuring the business with IP in mind can prove critical in realising the complete benefits of IP. So how do you go about ensuring this?
Identify your Intellectual Property
Identify any IP that might arise in the course of business. This may include:
- Any artistic and literary works including models, drawings, plans, software and written material created during the course of business;
- Your trading name, brands, products names, catchphrases, designs and logos; and
- Any innovative products or processes created by your business.
An IP audit will ensure that all of these rights are identified.
Consider your freedom to operate in target markets
Take steps to ensure your business has freedom to operate in all target markets and that your brand and logo will not infringe someone else’s rights. The earlier you establish this the better, saving time and money sunk into a wasted export plan.
Protect your Intellectual Property
Once identified, you will need to consider how the IP should be protected and used for commercial gain. Be aware that, if you have sold your product or even disclosed it to the public, you may not be able to file a patent or design registration in the countries you want to sell or manufacture your product.
Choosing not to secure IP from the outset puts you at risk of losing monopoly rights through public disclosure, and diminishes your ability to prevent other traders misappropriating your rights. In limited circumstances, IP can be retained as a trade secret with strict secrecy policies and agreements in place to enforce them.
Trade Mark Registration
Trade marks are territorial which means your trade marks need to be registered in each of your target export markets. Your IP specialist will be invaluable in this process and will help register the trade mark, in the right classes, and ensure protection is effective.
Consider your ownership structure
The ownership and trading structure of your business will also be an important factor when looking at securing your IP. It is generally desirable to separate the ownership of IP from trading risks. Tax efficiency and transfer pricing also plays a part in the case of registered IP rights.
Develop your commercial strategy
Identifying your business’s competitive advantage is a good starting point for developing a sound strategy to derive commercial gain from IP. If you’re thinking about crossing borders, it’s also critical to research the discrepancies in the way IP is treated between countries.
Brand, brand, brand…
Kiwi’s love to operate on a handshake or loose agreement, putting sales, performance and partner relationships at risk. If you are intending to export, ensure you are protected with written agreements including timeframes, territorial coverage, performance clauses and IP ownership rights.
This article first appeared on snowball.co.nz, and was written by Owen Culliney and Stephanie Melbourne. Based in our Hamilton office, Owen has extensive experience in the preparation and negotiation of a wide variety of commercial agreements including joint venture agreements, franchise and licensing agreements, agreements between shareholders and partners and terms and conditions of trade. Stephanie works with our Christchurch team as a Solicitor in our trade mark and commercial law team, handling associated commercial and corporate matters regarding trade mark, copyright and Fair Trading law.
For more information and for expert IP advice contact Owen on email: owenc@jaws.co.nz , Stephanie on email: stephaniem@jaws.co.nz or phone 0800 INNOV8.
