Tips for IP protection

Written by Anuradha Salhotra | Anuradha Salhotra | Updated: Mar 31 2011, 07:32am hrs
SMEs are often the driving force behind new products, brands and creative designs. But their innovation and creativity are not always fully exploited as they are mostly unaware of the prevailing intellectual property system or the protection it affords. A good invention can be lost to larger competitors who can better commercialise the product.

Protecting intellectual property assets can increase SMEs' competitiveness in many ways. It can prevent competitors from copying their products, create a corporate identity through trademark and branding strategy, licence its know-how and conclude joint ventures and other contractual agreements involving IP.

SMEs searching for conflicting IP rights of others prior to seeking IP protection can avoid unnecessary litigation, thereby, saving time and resources. An SME's IP portfolio should be seen as a collection of key assets that add value to the enterprise.

Here are ten tips to better manage your IP and maximise returns:

Be creative/innovative: A basic premise of IP is that it is protection for innovation and creative works. So, before proceeding to obtain patent protection, it is essential for an enterprise to ensure that the level of innovation in the invention is such that it shall not be met with opposition or be refused protection under any other statutory provision, thereby increasing costs. For a trademark owner, even before adopting a trademark, it is essential to ensure the distinctiveness of one's mark rather than face expensive and time consuming opposition and infringement actions. Also, not only is it beneficial to start out with a strong and secure IP asset, it is also the extent of creativity and innovation that goes into an IP that determines its value over time.

Screen your IP for potential opposition in advance: Costs involved in pre-registration opposition of IP applications can escalate to a point where exploitation of the IP and its returns can be significantly lower. It is essential to ensure that a trademark application is beyond reproach. Remedial action can be taken at the stage of application to reduce the chances of office actions or oppositions or even post-grant infringement actions.

Be pro-active about registering your IP: The very nature of IP favours prior invention in case of patents and prior registration, and use in the case of trademarks. Obtaining a priority date for an invention is the first step towards its protection. Registration and/or grant of patent protection serves as prima facie proof in favour of rights in the IP.

Rely on your attorney for advice: Your IP attorney, whether in-house or outside counsel, would be in the best position to advise on protecting your IP. However, it is essential to ensure a correct understanding of your business goals, which must be conveyed to your advisers to ensure that your IP is managed to suit your goals.

Ensure appropriate use While most forms of uses, even using of a trademark on office stationery, is sufficient under most laws to attribute rights to an owner in the trademark, it must be borne in mind that the use is appropriate. Genericide is a serious threat to trademarks and it must be ensured that your trademark does not become synonymous with the product it is used in relation to.

Watch the journal: Engage your attorneys services to maintain a close watch on the Journals of the Trade Marks Registry and other IPO journals and consider potential dangers to your IP seriously. Most IP counsels will provide such services for free.

Be prompt: Ensure stringent and prompt action against infringement and attempts at infringement of your IP. Having procedures in place and guidelines for making decisions, the time taken to make decisions can be minimised. On taking advice of an IP counsel, businesses must ensure that valuable time is not lost in taking prompt action and follow up. Courts as well as the IPO take strict cognizance of delays in proceeding.

Sensitise: Sensitise your organisation to the importance of IP and identifying the types that are relevant to the business. Often, infringement goes unnoticed because people in the know fail to understand it. Educate and train every employee to identify spurious and infringing products. Prepare internal protocol to ensure infringements are properly reported.

Be firm but flexible: Be prepared to take strict action. Do not shy away from litigation when necessary. Court orders can be all pervasive and properly enforceable. They are useful not only for the present but also for the future. At the same time, be open to discussing and negotiating with the opposite parties. Often problems are a discussion away from resolution. Businesses would prefer to concentrate on their business targets and to keep disputes to the minimum.

Balance: Key to protecting your IP is to balance IP needs and its importance to your business needs. Cost, time and effort considerations must be borne in mind while taking steps to protect your IP.

The writer is managing partner, Lall Lahiri & Salhotra