How to Manage Intellectual Property to Create Wealth: part 1

Establishing awareness of intellectual property amongst staff of your company is essential for early maximizing the value of your intellectual property and the wealth of your business and reducing the possibilities of accidental non-confidential disclosures, that could prejudice successful patent applications and negatively affect the value of your intellectual property and ultimately the wealth of your business.

Regular training sessions of staff on intellectual property are key and should include the following:

• how to identify and protect intellectual property;
• how to use patents to improvements of technology;
• understanding Patent Process; 
• how to deal with confidential information (see some examples in the scenarios below);
• record keeping of intellectual property, including laboratory notebooks and policy on intellectual property; and
• who to contact in case of need.

The record keeping procedures and manuals will address the following questions:

• has the inventor kept the idea confidential? 
• is there a written description of the idea and has been kept safe and confidential?
• how the idea has been generated? If during a collaborative programme, then was it agreed beforehand who owns what?
• is the idea a new product, a new material, a new process for making something? If so, is it patentable or protectable in any other way?
• is the idea a variation in a product or material or process? If so, it is still likely to be patentable or protectable in any other way?
• who generated the idea? The answer to this question is very important in the event self-employed or other third party consultants are involved in any research and development or collaborative project.

The main object of this record keeping is to track, protect and maintain all relevant intellectual property rights of the business so that intellectual property can be licensed, assigned or exploited to the fullest extent and benefit of the company.

The record keeping procedures should also include a form upon which, potential inventions should be recorded identifying the following:

• Who: department and research area;
• Named individuals: inventors and authors;
• What: technical description;
• Why: perceived novelty;
• How to use the information: potential applications/markets;
• What else is needed: background or third party intellectual property and information.

The correct use of laboratory notebooks by staff  is also essential. In the event of a dispute laboratory notebooks may be required to be presented as legal evidence.

It is therefore recommended that:

• permanent bindings are used on notebooks (loose leaf books should be avoided to prevent possible removal or substitution of pages);
• pages should be numbered and any additional drawings cards or computer printouts should be permanently attached to the notebook clearly identified and have reference made to them in the notebook;
• all projects related and other activities, such as breaks in research due to secondment or holiday should be recorded factually; and
• the notebook should be reviewed regularly by someone who understands the technology involved, each page should ideally be signed by a witness and again the choice of the witness is important and should not be someone who may be nominated as core inventor. The witness should also sign and date and graphs, chart, printouts, which are inserted into the laboratory notebook.

In addition, to the use of appropriate record keeping procedures and notebooks, an evaluation of IPR policy should be adopted. Such an evaluation should include factors, such as potential market, market, impact, competitive products, timing, intellectual property protection available and experience in the field concerned.

Finally, once relevant intellectual property rights have been identified, protected, exploited and enforced, it is advisable that, regular audit of such rights is undertaken to ensure that, the intellectual property rights reflect the current needs of the business and that expenditure is limited accordingly.