Moving IP strategies beyond the token

INTELLECTUAL property is a valuable asset and businesses need to start managing it strategically as a core part of their operations, according to Perth’s leading IP managers, experts and practitioners.

Curtin University professor of entrepreneurship and intellectual property, Kelvin Willoughby, said there were potentially large returns for companies that invested the time and effort to develop a strategy for managing their IP.

“If you’ve got a strong culture of respect for IP, and prowess in exploiting it, it gives you great freedom,” Professor Willoughby told a recent forum hosted by specialist IP law firm Wrays.

He said managers needed to think carefully about their company’s overall strategy, and match their IP strategy accordingly.

While many companies think of their portfolio of patents, trade secrets and trademarks as something to be hidden away in a filing cabinet, a firm’s IP strategy should be accorded the same priority as other important strategies such as marketing, the forum heard.

“If a firm is interested in IP, it’s not a matter of filing a bunch of patent applications; they have to think of what kind of IP is right for them at the time,” Professor Willoughby said.

Wrays group head of management and strategic services, Albert Ferraloro, agreed that was a sensible approach to IP strategy.

“Once you know what you want to do as a business, then you have to ask what kind of IP your business will create, or what IP you will need to licence or acquire,” Mr Ferraloro said.

Orbital’s director of intellectual property management and planning, Steven Ahem, has seen his firm’s IP strategy change as the company transitions from R&D to product supply.

“When you have a concept, you’re trying to protect it in a fairly wide area, because you don’t necessarily know where your concept is going to end up or what its impact will be,” Mr Ahem said.

“When you get to the other end of the scale and you’ve got a product, you have a more defined market and a more defined target because you know where it’s going to be used.”

Mr Ahern said a business’s IP strategy should be focused on the question of how valuable a patent was to a company.

“You need to think about protecting your key market, but also not going overboard and protecting all the possible markets where it’s not going to generate a return,” he said.

Developing a culture of sophistication and awareness about a firm’s IP can actually foster a culture of innovation on company and industry-wide levels, according to Professor Willoughby.

“Having well developed and defined property rights that are discussed explicitly and materially actually creates freedom for people to engage or not engage,” he said.

“I think that keeping these issues vague and in the dark can undermine free and open engagement between parties.”

There are other costs that can arise from failing to properly engage with IP, according to Mr Ferraloro.

“A lot of companies, particularly those that have a lack of IP awareness, launch right into patenting; but what people don’t realise is the costs can increase quite remarkably,” Mr Ferraloro said.

These costs can start around $6,000 at the initial part of the patenting process, and can escalate to around $30,000 when decisions need to be made about which countries the company needs specific protection in.

“Often companies treat the first stages of patent application as a ‘box-ticker’ and they don’t always communicate the ongoing process of patenting with their financial people, so they get a rude shock,” Mr Ferraloro said.