A list of best practices to establish an IP strategy and enforce IP rights.

To establish an IP strategy the approach needs to be systematic; the following checklist is designed for general use and may not have relevance to every company (depending on company size, market, etc.):

– Identify your strengths: The products, the technology or the services that are essential to the company’s growth in the future. Create an overview of the past investment tendencies and the development opportunities inside and outside the company.
– Identify the prior art: Look in patent databases for patents within relevant fields. The number of patents as well as their content can reveal important strategic and technical information which may influence strategic decisions.
– Keep an eye on your competitors: Identify the most innovative competitors and find out how they protect their rights and which technical solutions are patented.
– Manage your IP rights:

  • Decide how the company’s trademark and other business identifiers can be used – and by who.
  • Decide on a policy for copyright (who is allowed to use protected material and under which circumstances?).
  • Make one person responsible for the company’s IP-policy. This person needs to have the relevant competencies ensuring that the policy is followed. In that way you will be able to react quickly and efficiently if someone uses your IP without permission.

– Choose your best strategy: Think about how to make use of IP rights in the framework of your general business strategy. IP can be used on different strategies:

– Don’t forget the international context: Determine the countries where you need protection according to your markets and the countries where your major competitors are located. Decide on the filing strategy, i.e. national applications in the relevant countries, European applications or International applications or combinations of the three options.
– Define internal best practices:

  • Develop awareness of the role of IP,
  • Formulate rules on how the company handles inventions made by employees. Establish and communicate clear guidelines to protect business secrets. Make sure that the employees are aware of these principles.
  • Develop indicators to measure IP assets,
  • Use experienced advisors.

Although intellectual property rights are granted by the state, it is up to the IP right owner to ensure that its rights are not being infringed, and if that’s the case; to take an appropriate action.
Enforcement of IP rights is necessary because people do not always respect the rights of others either intentionnally or by mistake. Infringers can erode hard-won market share and may create poor quality imitations which will quickly ruin a brand reputation in the marketplace.

If IP rights are infringed by using material without permission, it is possible to seek a remedy in law by taking a case to court, – for example, seeking injunctions and damages.

In some countries it may also be possible to take opposition proceedings before an Industrial Property Office (please contact it for more information: see national procedure pages). Opposition can occur before and after grant/registration and takes place particularly for registrable rights such as patents and trademarks.

A less costly and more practical approach may be to avoid litigation by negotiating a solution to illegal use with the infringer. Being able to demonstrate the ownership of a patent, registered design or registered trade mark etc. will allow a business to strengthen its position. A well-drafted patent will often be enough to deter potential infringers.

Here are some recommendations on how to prevent problems due to infringement and how to enforce your rights effectively in case of need:

  • Regularly carry out searches of new registrations for patents, trade marks and designs in order to identify those that may conflict with a possessed IP right. Pending published patent applications can also be searched.
  • In order to reduce the chances of people using your IP asset without your permission, inform them from the existence of your IP assets in any dealings. Make sure that your products or materials are marked as protected by IP rights when they reach market (e.g. publishing, selling etc.). IP rights can then also become a marketing tool.
  • A patent confers upon its holder, for a limited period of time, the right to exclude others from exploiting (making, using, selling, importing) the patented invention except with the consent of the patentee. If any infringement of a possessed patent is spotted, seeking for legal advice is the most appropriate action to take.
  • A protected design is useful only with a competitor watch in order to identify articles with the same or very similar appearance to your product. The help of a legal advisor is then necessary to look for opportunities of legal redress.
  • The trademark can be a company’s most valuable asset. Any unauthorized use of that asset has to be defended, or the brand’s value may suffer from it.