Why you need an IP Strategy - even if you don't export

Yesterday I attended the Daresbury Business Breakfast Networking Event at the Park Royal Hotel in Stretton. After the meeting Tony Brown and Sara Knowles of UK Trade and Investment gave a very interesting talk entitled UKTI Services - how to internationalise your business. I hope to get the slides for that talk and I shall make them available to you in this blog if I do.

During his talk Tony listed some of the questions that he he is often asked by small and medium enterprises. Three of them were on IP topics:
  1. What can I do to protect my business if I can't afford a global patent?
  2. How do I protect my brand internationally? and 
  3. How can I protect my software for US$35?
Tony's reply to the first question was protect what you can with trade marks and confidentiality. There were three patent and trade mark agents in the audience plus me and we all stuck our hands up at that point because we wanted to make clear that trade marks protect brands and not technology for which you need a patent. To be fair Tony acknowledged and clarified that point. His answer to the second question was to apply for a trade mark in key markets possibly through OHIM or the Madrid Protocol. The answer to the third question was that $35 was the cost of registering a copyright with the Library of Congress. I pointed out that the USA was party to the Berne Convention and that registration was required not for subsistence but for enforcement.

At that point Paul Treloar, Business Support Manager at Sci-Tech Daresbury, intervened to say that these are difficult legal issues for which businesses should take the appropriate professional advice. Realizing that not everybody can afford a patent or trade mark agent or specialist IP lawyer I mentioned the excellent materials available on the IPO, European Patent Office, OHIM (EU trade marks and designs registry) and WIPO (UN specialist agency for intellectual property) websites and the services of the Business and IP Centre of the British Library and its associated libraries in Manchester, Liverpool, Leeds, Sheffield and elsewhere.

It also prompted me to stress the need for an IP strategy which takes account of enforcement as well as registration of IP rights.  I have suggested the following simple one many times but it does bear repetition.
  1. When writing your business plan consider where your revenue is likely to come over the period for which you are planning.
  2. Consider the potential threats to those revenues streams. I don't mind betting a penny to a pound that most of them will be commercial like a competitor brings out a better product or the market for the product will become satiated.  Ripping off your idea or claiming an association with your brand is not the primary worry for most businesses though it does happen.
  3. Consider the counter measures to those threats. Again I would wager that most of these will be commercial like lower your prices or develop an improved model. Only in a few cases will you need legal protection for your brand, design, technology or work of art or literature.
  4. If you do need legal protection tailor that protection to meet the precise threat. You may have a brand new, earth shaking technology but if consumers are attracted to the shape of your product then it is the design that you need to protect with a national or EU design registration rather than a patent.
  5. Prioritize your protection to your principle markets and the countries in which your competitors operate. Very few businesses can afford or even need blanket protection in every market of the world.
  6. Consider how you will enforce your rights in each market. Don't assume that the authorities will prosecute infringers on your behalf. Not all infringements are criminal offences. Art 61 of the TRIPS agreement requires governments to provide criminal sanctions only for piracy and counterfeiting (copyright and trade mark infringement on an industrial scale) and although some countries such as ours do a little more adding bootlegging and most recently intentional copying of registered designs to the list of IP offences many other countries do not. Do not assume that a lawyer will act for you on a no win, no fee basis - at least not in this country now as success fees are no longer recoverable from your opponent. If you can't afford to fund an action out of your current account then you should consider some kind of IP insurance.
I have offered to train UKTI's advisors in these matters if they so wish and that offer extends to other organizations that advise and assist small and medium enterprises. If anyone wants to discuss this article or IP strategy in general, he or she should call me on 020 7404 5252 during office hours or send me a message through my contact form.