CENSIS white paper: Intellectual Property in Business

Intellectual Property in Business: IP basics, IP management, IP strategy
IP Management during Growth
7 Catalogue your IP (IP register)
Intellectual property management is essential and
critical in a business that wants to benefit from the value
encapsulated in IP assets. The consequences of not
having IP management are straightforward: you cannot
develop, evaluate or organise your IP strategy or even
issue an effective NDA. Especially when you do not
know what you have in terms of IP assets.
The first step in IP management is to record your IP
assets in a methodological and organised way. Some
people may view cataloguing IP as a dull task, while
others might be excited and inspired by it. Whichever
one of those describes you and regardless of your final
approach to IP rights (e.g., closed, open), you should
catalogue your IP and keep the IP register up to date,
so you can use it to your full advantage. 17
If you consider raising capital and seeking investments
for your company, determining your IP assets – which
technology and business features they cover, which IP
rights are in the portfolio – will be a vital requirement.
As said earlier, it is good practice to keep records of
your IP assets from the outset, from the first internal
invention disclosure, the first patent application,
Table 4: Information for an IP asset register
first pieces of code, first OSS licences. Commonly,
companies use software products designed to capture
such information, including an irrefutable time stamp.
In the initial phase of IP management, an IP register
does not have to be overly complicated. Table 4, gives
an overview of information that an early-phase IP
register should/should not include.
An IP asset register will typically include the metadata
of the asset, rather than the asset itself. That said, the
location of the asset should be reflected upon and
recorded. In particular, unregistered rights, confidential
information, contracts or licences may simply reside
in an email inbox or a desktop storage location and
be forgotten about – however, it is good practice to
store these in a known and secure location to ensure
ease of accessibility and security of the key data. The
same applies to information kept in a physical form,
for example, printed documents, prototypes, working
models or any other physical embodiment of an
inventive idea. A company should consider physical
security measures such as controlled access to the
facility or introducing special restricted areas. Printed
documents, such as designs or drafts of agreements,
should be stored safely in a designated manner (see
also the section on IP-relevant policies).
Category of IP/IP-relevant IP What to include What not to include
Patents and patent applications Patent numbers, jurisdictions covered, The full text
filing, registration and issue dates, title
or brief description, digital location
Confidentiality agreements Parties to the agreement, role of parties The full text
(employees and consultants, partners),
start date and/or end date of the
agreement (the term), digital storage
place, and evidence of what information
is tabled or exchanged during the term
Invention assignment agreements Parties to the agreement, role and The full text
respective contributions of the inventor/s
(employees and consultants, partners).
Start date, digital location
Trade marks
Trade mark numbers, jurisdictions covered,
filing, registration and issue dates, title
or brief description, digital location
Trade secrets and proprietary Title, date, inventors/creators, who The full content of a trade secret
know-how
was involved, digital location
Technology licences from third parties
Open-source software used in (or used
to create) the seller’s products and services
Parties to the agreement, the subject
of the agreement, the specific use rights,
start date and/or end date of the
agreement, digital storage place
OSS licence type, main conditions,
short description, digital location
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Palfery (n 5) 56.
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