Creating tangible value from an intangible business asset

The value attributed to intellectual property (IP) on balance sheets continues to accelerate. The large US tech giants, such as Apple and Google, have led the way in championing IP as a central component of their brand and business. In an increasingly service-driven world, there is an ever-greater reliance on IP to drive growth.

The era of digital disruption has forced IP on to the boardroom agenda. As corporates respond to new entrants and innovators in their respective markets, often pivoting from merely manufacturing goods to providing both products and services, there has been a significant rise in research and development (R&D) spend and a proliferation of innovation hubs, often based on collaborations between startups and incumbents. This has had the knock-on effect of raising a number of issues relating to IP, including ownership and protection.

With IP grabbing the attention of C-suite leaders, it has become apparent that many sophisticated multinationals lack a full picture of their IP portfolio. They often find IP siloed in various business units depending on the company’s products and services, which may have been developed by different teams in different countries or be third-party IP that has been acquired through mergers and acquisitions. If a fractured, rather than focused, view is taken of IP, it begs the question whether it is properly protected and fully optimised.

“For some businesses, IP is very much front of mind. Management has a thorough understanding of their IP assets and are supported by specialist internal and external IP counsel,” says Dominic Farnsworth, head of IP at Lewis Silkin, a top-100 UK commercial law firm. “However, many businesses either don’t have the same understanding or fail to appreciate the importance of protecting their ideas, inventions and data.”

IP is frequently under-resourced in organisations or built up in a disjointed manner with no overall understanding of whether they have the appropriate patents, trademarks and domains. Businesses will often just assume they have all their bases covered, but IP does not lend itself to retrospective fixing. If a company doesn’t register a trademark, its ability to stop somebody from using a similar mark or domain name can be severely compromised and failure to patent an invention is an invitation for brazen copying.

By understanding the full IP journey, from capture to realisation, companies can build IP into their corporate strategy to support key business goals

“The territorial nature of registered IP such as trademarks, patents and designs is a particular headache,” says Tom Gaunt, patent partner at Lewis Silkin. “You might register a patent only in Europe for budgetary reasons, but then find yourself unprotected if it takes off in key markets such as the United States and China. IP strategy is not a dark art, it just needs to be thought out and budgeted for. We are constantly instructed by clients looking to fix IP headaches caused by an absence of appropriate strategy.”

A lack of clarity on the full portfolio of IP assets also means other commercial opportunities are missed. Many businesses fail to realise that much of what they both create and deal in is IP. And that IP is not just an asset to be protected, but a monetisable asset and a core element of future growth. In the automotive industry, for example, IP is playing a huge role as data and the internet of things transform everything from the software in cars to the content they host. In addition, banks are strong IP owners, not only in their headline brands, but also in their databases and software.

“Understanding the opportunities afforded by IP means appreciating all its areas,” says Cliff Fluet, IP and digital media specialist at Lewis Silkin. “IP isn’t a single category, but covers a panoply of rights and assets, including registered and unregistered rights as well as soft IP like copyright and hard IP such as patents. Some think if they just have a domain name then they’re fine, not understanding the power of a trademark or the importance of a global strategy for domain names across a portfolio of businesses. IP could be the core of your future monetisation strategy and you don’t realise it.”

By understanding the full IP journey, from capture to realisation, companies can build IP into their corporate strategy to support key business goals. This includes driving IP creation and acquisition, focused R&D, highlighting divestments where IP holds no value to the business or using IP as leverage in negotiations.

Lewis Silkin has decades of experience actively managing, defending and helping to optimise IP portfolios and brands, from inception, value analysis and protection, through to rollout, commercialisation and disputes. The law firm is unusual in that it offers a complete 360-degree IP service across trademarks, copyright, designs, patents and domains, both contentious and non-contentious. It provides portfolio audits and active asset management, and uses technology, online tools and innovative structures to deliver services in an efficient and user-friendly way.

In an era when a more holistic approach to IP portfolios is needed, Lewis Silkin provides a joined-up, cohesive offering that helps companies get a handle on one of their most important intangible assets. The firm has in-depth sector knowledge across retail, technology, manufacturing, advertising and marketing, sport, and media and entertainment.

“Most law firms with IP teams focus on commercial deals and litigation. We go much further,” says Farnsworth. “Our team incorporates not just lawyers, but also trademark attorneys, advising on the acquisition and registration of trademarks and designs, as well as managing global IP portfolios.

“Being able to handle every aspect of a brand’s life cycle, from creation to protection to commercialisation, has driven our growth in IP. Beyond that, we wanted to create a one-stop shop addressing all IP needs, so last year we acquired a boutique firm of patent attorneys and now we can deal with all a client’s IP holistically under one roof. That’s quite a unique and exciting proposition.

“We’ve built Lewis Silkin up to cover the full width and length of the playing field in terms of IP expertise, but we add height too. By that I mean the value of IP doesn’t sit in a vacuum. The ability to dial in commercial, data regulatory, competition and tax experts from the firm to support our clients’ IP ventures provides them with a greater springboard for success. And it is this that makes us one of the leading players in IP.”

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