Capturing and Commercialising Your IP

Capturing and commercialising your IP can be tricky - but it's very important to do.

So, how do you capture and commercialise your IP? I don't think you'll be surprised to hear that there's no "one size fits all" approach. The path to successful commercialisation of IP can vary. This is because every company is different and the types of IP they own will be different.

Commercialising IP can take any number of forms. Once you have designed your product or service, you might:

• manufacture and sell your goods or supply services
• contract manufacture and sell your goods or supply services
• license your IP and know-how
• sell your IP and know-how.

Generally speaking, companies who innovate and maintain the ability to manufacture and supply products will retain the lion’s share of revenue. However, licensing or other partnering models can reduce risk. This is especially true for companies that do not have the capacity to manufacture or distribute.

How to find the right commercialisation path for your company:

Step 1

First, you should take the time to understand your IP and how it affects your strategy. Market validation work goes hand-in-hand with this for your new initiatives.

You should examine your current IP, in both registered (patents, designs, trade marks) and unregistered forms (know-how, trade secrets, copyright). When examining your IP, consider:

• any strengths, weaknesses and gaps
• whether the IP you have or are entitled to is focused on areas that meet commercial goals of the business
• whether some of your IP needs to be culled or reinforced.

Step 2

Next, you should introduce business processes to better capture, protect and exploit IP and know-how within the business.

Capturing and protecting IP

You can capture and protect IP by:

• educating staff to ensure they know enough about IP
• using employee idea disclosures
• using appropriate employment and contractor agreements and non-disclosure agreements
• having appropriate security arrangements, exit procedures and training to ensure know-how and IP remains in the business
• involving IP champions or an IP manager/advisor early on, to ensure the business focuses on the right areas
• developing some "stage-gating" of new ideas, which helps to determine early if a new idea is able to be and should be patented and whether you have freedom to operate in the new space. You might find that a trade secret is a better bet.
• developing a culture that rewards or incentivises staff to develop and disclose ideas
• looking to partner with others who can fill gaps and add value (many of the world’s most successful innovators license in IP to add to their own products and technology)
• ensuring endorsement and participation in an IP culture from the top down.

Exploiting IP

You can exploit IP by:

• regularly reviewing new ideas and concepts to trigger the correct IP decisions (protection/FTO) along the way
• aligning your IP protection and product development timelines
• continuously questioning whether a particular product development aligns with the business and whether it can be commercialised – don't fall into the trap of following ideas slavishly because they seem attractive. Validate your market.
• understanding all options open to the business.  For example, a new business process could be:

-               kept secret and used only within the business

-               patented and only used for the business

-               the subject of other IP protection (such as a trade mark for the process, copyright in documentation and software used in the process and designs registered over the shape of certain materials or equipment used in the process or produced as a result of it)

-               licensed to third parties in other territories or in other fields of application

-               licensed to third parties in your own territory or field

-              subject to a combination of the above.

Final thoughts

• Make sure the high-level corporate hygiene matters are looked after (eg, employment agreements, assignments, non-disclosure agreements). Don't leave it until your company has been approached for a take-over.
• Look for ways to build a long-term, sustainable competitive advantage through ongoing innovation. Don't rely on the Mark I version of a successful product. Keep innovating to keep several steps ahead.
• Look at the possibilities through a wide lens. IP and know-how can play a large role, but they are unlikely to be the entire answer, especially for the long-term and if licensing is on the cards.
• Introduce an innovation and IP-led culture, which will help you to:

-               ensure your company captures value

-               keep ahead of your competitors

-               build a successful business for the long term.

Simple processes and triggers can be implemented in your company to create IP awareness and achieve much of the above. Talk to an expert in intellectual property for advice on creating a culture that helps everyone understand the value of IP to the business.

By Anton Blijlevens, AJ Park

Because situations differ, the above must not be used as a substitute to seeking professional legal advice.