An IP Strategy for These Times

Winckley Square, Preston

Jane Lambert

In his speech to the Policy Exchange on Monday, 13 May 2024 the Prime Minister said:

"And counterintuitive as it may seem, throughout human history, the greatest breakthroughs of science and learning have so often come at the moments of greatest danger."

He gave as examples the first electronic digital computers developed by British codebreakers in the Second World War, the development of solar technology following the energy crisis of the 1970s and the development, and deployment of vaccines during the Covid pandemic.

Many would say that atomic energy, jet propulsion and antibiotics were better examples of technologies accelerated by war, but while it is possible to quibble with the Prime Minister's examples he was right to say that adversity fosters opportunity.   There are disruptive technologies to embrace such as artificial intelligence, quantum computing and personalized medicine.  Brands that are household names will change hands as the businesses that developed them fail in changing economic circumstances.

To take advantage of their investments in cutting-edge technology or the purchase of a distressed brand businesses will need to rely on intellectual property.   To discuss how that could be done Lancashire law firm Vincents Solicitors held a seminar on 16 May 2024. at its offices at 4 Winckley Square in Preston on the theme "Intellectual Property is not just a Nice-to-Have during good times.  During times of adversity, IP is more important than ever."

I was invited to speak at that seminar by Michael Sandys, Head of Corporate and Commercial Law at Vincents who chaired the event.  Attendees included entrepreneurs in industries ranging from manufacturing to software.   There was a business coach and a few members of Vincents' staff.   I had prepared some slides on IP basics but found they were not required because everybody in the room had a good understanding of IP.  Several had trade marks and at least one had a patent.  I, therefore, launched into the importance of devising an IP strategy and its integration into the corporate business plan.

In my career at the Bar, I have seen far more businesses fail from having too much intellectual property than from having too little.  Readers will note the distinction I draw between intellectual assets and intellectual property and examples of having too much intellectual property are patents that are never worked and trade marks in markets that are never served.  The purpose of an intellectual property strategy is to use the monopolies and exclusive rights that the law provides to accomplish a business objective.  The strategy should take account of the costs of acquiring and enforcing intellectual property rights as well as the anticipated benefits.

That led to a question on how to value a patent or other intellectual property right which I answered by reference to my recent article "How to Value a Patent" in the Inventors' Club blog.   I gave examples of a simple strategy which was #1 of my 5 top tips in  "Choosing the Right Kind of IP - Five Top Tips" which I posted to NIPC London nearly 11 years ago.   I also talked about the importance of carrying out regular IP audits and taking them into account in the strategy.   A point that I developed in "IP Strategy to Scale Up" which I posted to NIPC Wales on 19 Oct 2021.

I finished the talk with a short discussion of  five recent cases that I find particularly interesting:
  • Thaler v Comptroller General of Patents, Designs and Trade Marks [2023] UKSC 49 (20 Dec 2023)
  • G2/21 Syngenta Ltd, v Sumitomo Chemical Co, Ltd. EPO website
  • Getty Images (US) Inc and others v Stability AI Ltd [2023] EWHC 3090 (Ch) (1 Dec 2023)
  • WaterRower (UK) Ltd v Liking Ltd (T/A Topiom) [ 2022] EWHC 2084 (IPEC), and
  • Lifestyle Equities CV and another v Amazon UK Services Ltd [2024] UKSC 8 (6 Mar 2024).
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