How to spring-clean your IP portfolio during lockdown
15 May 2020
It could be a good time to spring-clean your IP portfolio – how to go about it
In these unusual times of lockdown, many people have turned to tidying up their gardens and spring cleaning their houses. Let’s face it, we’re all spending a lot more time at home and many people have a bit more time on their hands with no commuting and no business trips, so it makes sense. For anyone involved in managing an IP portfolio, this also makes it an ideal time to consider if it’s as neat and tidy as it might be.
If you are in this position, and want to know how to go about spring cleaning your IP portfolio, we’ve put some tips below.
- Check you have an up-to-date list of all live (pending or granted) rights, ideally including likely actions and estimated costs over the next 12 months. Your attorney will be working during lockdown and can pull this together for you if you need! Make sure you include all cost-associated (registered) IP – patent, designs, trade marks, plant variety rights, supplementary protection certificates (SPCs) and utility models.
As an aside, now could also be a great opportunity to review your trade secret policies. Let us know if you need more information about this.
- Review the complete list and map it onto your products. Which product or products are covered by each item on the list? Might some of the items cover future products that are in your pipeline? Do any of the items map onto key competitor products, or cover space that you want to protect from competitors? You may be able to do this yourself, but see above – your attorney will be working and with details of your product line, pipeline and main competitors can do this mapping for you. Depending on the size of the portfolio/product line, consider agreeing a budget for this work up front!
- Once the mapping is complete, consider dividing the rights into tiers. For example, patents protecting your core products are likely to be most important (tier 1), but within that certain countries might be more or less important (e.g., UK and USA might be tier 1, but Brazil might be tier 2 or 3). Allocate a tier for each item on the list, but try to not have more than 3 or 4 tiers, or this will become unwieldy.
You should end up with a clear idea of what IP rights you own, what they cover, how important each right is to your business and how much that right is likely to cost you over the next 12 months or more.
You can now make an educated business decision about which rights to continue to support. For example, patents covering products that are no longer part of the line can be dropped or sold. This can be done by patent family or by country. Rights that are going to be disproportionately expensive compared to their tier of importance can be dropped. Get rid of the dead weight!
Also, think ahead. What important projects are you working on or likely to be working on after lockdown that could lead to valuable IP? Conserve some budget for new developments and filings!
Helen Henderson & Elizabeth Swan
Life Sciences and Chemistry group
If you require further information on anything covered in this briefing, please contact Helen Henderson or Elizabeth Swan ;or your usual contact at the firm. This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP May 2020