CENSIS white paper: Intellectual Property in Business

Intellectual Property in Business: IP basics, IP management, IP strategy
IP Management during Growth (continued)
12 Time and money in IP
Intellectual property management involves planning
and managing two types of resources: time and money.
It is undeniable that some IP rights can be very costly
and time-consuming, and this deters some people from
getting into registerable IP rights. So, it goes without
saying that you must allocate financial resources for this
exercise.
Costs incurred can relate to preparation of
applications, registration, maintenance, enforcing
IP rights, and also staff training, hiring new staff
members and consultants’ remuneration.
The expenses associated with IP management can be
substantial; thus, it is advisable to look at them as a
long-term investment that offers your business
new opportunities and facilitates access to external
sources. 30
A company may consider seeking IP financing
incentives, such as tax reliefs and relevant public
funding to finance IP portfolio development. For
example, the UK government offers Patent Box to
reduce corporation tax on profits. 31 This offer is directed
at companies that maintain and commercialise IP in the
UK, allowing them to apply a lower rate of corporation
tax to profits earned from their patented inventions.
Likewise, R&D tax schemes 32 for SMEs and large
companies are designed to boost innovation efforts
and to bear at least a portion of the risk that such efforts
may involve.
Many countries offer patent boxes, and an overview of
the schemes can be found at Tax Foundation, ‘Patent
box regimes in Europe’ https://taxfoundation.org/
patent-box-regimes-europe-2021/
Time is required in the preparation phase for some
registrable IP rights like patents, trade marks or designs.
The preparation includes analyses of the state of the
art, elaboration of claims, drawings and specifications.
It will also take time to choose one or other form of
IP protection as well as to conduct the market and
business analyses on which IP decisions should be
based.
With the exception of patents, many registrable IP rights
can be granted (registered) relatively quickly, i.e., within
months. However, to enjoy protection from a granted
patent, an application may take some years to progress
through to grant. And in business, time is money. That
waiting time during the long application process is filled
with various actions required by the patent office, such
as international filings, examination or publications.
These activities generate further expense such as patent
attorney or patent office fees. The waiting time can
be partially offset by acceleration procedures and by
a judicious filing strategy, but even with acceleration
an application will be pending for several months as a
minimum.
Pending patent applications are still assets that can be
licensed from the outset, but their value increases once
the patents are granted (their monetisation becomes
more feasible as well). Given the time it takes to secure
a grant, I would advise companies to start early and
then plan patent applications (as well as application
for IP rights) well in advance of a product launch.
30
ISO Standard 56005:2020, Clause 4.6.
31
‘Guidance Use the Patent Box to reduce your Corporation Tax on profits’ (HM Revenue & Customs, last updated 7 May 2020)
accessed 27 July 2021, See also ‘UK patent box relief changes from 1 July 2021’
(BDO, 26 April 2021) accessed 2 December 2022
32
‘Guidance Claiming Research and Development tax reliefs’ (HM Revenue & Customs, last updated 20 March 2020)
accessed 2 December 2022
28