Magazine BEAST #12 2018

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10 #Business | Legal The competitive advantage that industrial property provides to any company depends on its sector of activity, on its strategy, but also on its interaction with the competitors. For instance, patents often constitute essential protection for inventions that can be easily copied. However in certain cases, trade secrets or a market lead advantage may be more appropriate and effective. Industrial property strategies fluctuate from one organization to another and there is no ideal model to follow. Large companies with significant financial resources generally pursue a strategy of filing and/or acquiring, then maintaining, a large number of patents. However, for most start-ups and SMEs, developing and maintaining a large patent portfolio can be prohibitively expensive. The key for a small business is to initially consider one or more patents focused upon its core technology, known as « Crown Jewel » Patents. Ideally, a company should collaborate with experts to identify the key innovative elements of its products or services and then take educated choices about the most appropriate form of protection to use, taking into account development costs, market maturity, product and service life cycles, competitor strategies, etc. Are the intellectual assets protected enough? The basic principles for developing an effective industrial property strategy are to put in place a mechanism for identifying the company’s intellectual assets which can be protected, to examine suitable types of protection and then to decide upon appropriate and effective registrations. The possibility of combining different types of protection should not be overlooked: several types of intellectual property can be applied to the same innovative effort. Indeed, the name and logo of a new product or product line can be registered as a trademark; the shape, colors and design of a new product can be registered as an industrial design; and the technical invention incorporated in a new product or process can be protected by a patent. What are the best practices in industrial property strategies? • Assess and catalogue your existing and potential industrial property rights. • Maintain confidentiality for your new technologies until professional advice is acquired. • Ensure that the industrial property strategy is a key element of the company’s overall strategy. • Collect competitive information and analyze your competitors’ industrial property titles to avoid infringing their rights before engaging their markets. • Enforce your rights if they are infringed. • Make sure the members of your company are aware of the importance of an industrial property strategy. • Use industrial property to add value to your company, its products and its services. In highly competitive markets with significant size differences between actors, commercial activity and growth can prove difficult for SMEs and start-ups. A sound industrial property strategy that includes the registration of industrial property rights helps smaller actors to both leverage their innovative advantage in such markets, and lock the value of the innovation underlying their competitiveness into the company. Marks & Clerk, founded in 1887, is always looking for new ways to build on its heritage to better serve its clients. The network of offices has grown over the years, with new Marks & Clerk offices opening their doors regularly. Luca Polverari and Stéphane Ambrosini, agreed to grant us some advice on industrial property. “Document every creative process, with dates, places, names and respective contributions, both to facilitate the identification of intellectual property generated from innovation efforts, and to clarify its origins.” “At any time before a first patent or design application is filed for an innovation, always use written confidentiality agreements signed and dated by all parties attending a confidential meeting at which that innovation will be discussed.” “When deciding to file applications to protect your intellectual property, keep in mind the exporting potential of your current and future commercial activities, the respective geographical scope of IP rights, and the non-extendable legal timescales for extending that scope”. BEAST MAGAZINE #12
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Magazine BEAST #12 2018

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