6. Enforcing IP
It is often said that the real value of your IP rights is measured by your willingness to enforce them. This means that if you aren’t willing to resource a potential enforcement action against an act of infringement on your IP, there is probably no point going through the IP management process. IP management is an integrated exercise, so acts of enforcement are just as important as the other steps in your organisation’s IP management system.
IP portfolios require long-term monitoring, evaluation and maintenance. For example, a patent application journey typically lasts more than two years, before ending with a patent grant. This process includes searching, filing, examination, implementation and grant. Having taken time, effort, and the financial investment in IP generation and protection, a business should deploy an internal IP management process to coordinate resources to ensure a successful IP journey.
a. Coordinating enforcement internally
The internal IP management process should consider developing a process for IP originators to update their own IP progress and provide feedback over the entire lifecycle of the IP asset. This facilitates communication over and beyond the IP journey and can be extended to cover communication requirements in the commercialisation stage.
b. Scanning for competitive threats and opportunities
All of the organisation’s staff should be involved in the enforcement program by proactively looking for infringers through their interaction with various segments of the marketplace. The internal IP management process should undertake regular scanning of the marketplace to identify threats and opportunities, acquire regular and ongoing business intelligence to validate findings. If findings show that competitors are following the same business strategy, the organisation should take pre-emptive action to maintain the competitive advantage position. If the findings show that another’s competitive advantage is diluted, the business could consider licensing-in their IP to strengthen the core technology.
c. Administration of the current and future asset portfolio
IP administration ensures all IP related fees and expenses are paid, policies and processes that facilitate filing fee payment are implemented and risk-management options through IP insurance to cover offensive and defensive actions are supported.
The IP originators should perform regular searches on IP database (e.g. WIPO, IP Australia) to ascertain users of similar technologies or brands. Information on potential infringements should be highlighted immediately. IP Australia’s AUSPAT (Australian patents database) now has a section known as eDossier, which provides electronic access to a suite of documents relating to the prosecution of patent applications dating back to 2006 and which are open to public inspection.
Before taking any legal action, organisations should obtain written legal advice or independent expert opinion to confirm their competitive IP position. For competitors, IP infringement actions can be avoided by arrangement of cross-licensing or settlement agreement.