Identifying what IP to protect

...and the importance of maximising the value of your invention. Technical innovations have a commercial value that can generate significant income. But if you don’t protect your intellectual property, you leave yourself vulnerable to a third party stealing your idea.

A strong intellectual property portfolio plays an integral role in the success of innovative companies. However, for a young company, it is important to focus valuable resources on what really matters. Businesses have different needs but broadly speaking any innovation or brand development should be considered for patent, design or trade mark protection. The key is to seek the right advice and make sure you maximise the value of your intellectual property.

Here are six tips to consider when it comes to developing and protecting your intellectual property (IP):

1. Protect your product/brand - whatever you protect, it must work for your business. Your IP must at least protect what you sell, the processes you use and/or your principle brand – but the ultimate aim should be to ensure that your IP covers as much as possible, adding value to the business.

2. Prepare and plan - consulting with staff will help you identify innovations important to your business but most Patent Attorneys will offer a free, no obligation meeting to help clients decide how best to secure protection for their IP. When meeting a Patent Attorney you should prepare a detailed summary of your innovations and be prepared to discuss what distinguishes these developments from those already disclosed in the prior art.

3. Avoid disclosures - in order not to destroy your chances of securing protection for your IP, it is essential that you avoid making any public, non-confidential disclosures. Sometimes discussions with third parties are important and in these cases non-disclosure agreements can be useful. However, their effect is limited and you should proceed with caution. Our advice is always to avoid any unnecessary disclosures until you have secured protection for your IP.

4. Keep records - ensuring clarity over issues such as ownership and inventorship is of paramount importance. To this end, keep regular and accurate notes of your internal meetings, discussions and interactions with third parties.

5. Research - is there a market for your idea? Where and what do you intend to sell? Is there anything relevant already in the public domain? Conducting your own internet searches can help and it is often relatively easy to identify issues for discussion with your Patent Attorney. However this is no substitute for employing the services of a specialist searcher.

6. Seek professional advice - obtaining proper protection for your intellectual property can be complicated and you should always obtain professional advice before taking action yourself. Most Patent Attorneys will be able to advise what requires immediate protection; but the skilled Attorney will ensure that whatever IP protection you pursue, it protects as much as possible and makes a significant contribution to your business.


Dr Richard Gibbs
Partner and Patent Attorney, Marks & Clerk
Contact: 0141 221 5767