Intellectual property lawyers

Protecting your IP should be seen as a continuous process rather a static step and we can help you every step of the way.

How you protect your IP will depend on the IP right in question.

Where the IP right in question is a registrable right (e.g. trade mark, designs and patents), then the IP right must first be registered to enable you to enjoy the benefits of it. Each registrable IP right has its own unique subsistence criteria which must be met.

The filing and registration of registrable IP rights is a specialist area. It is important to get it right to ensure that your filing will not fall apart under examination by the relevant IP office and also provide you with the maximum scope of protection that you can get.

We do not file/register IP rights ourselves but work closely with a number of trade mark and patent attorneys who we can recommend.

Where the IP right in question is an unregistered right (e.g. UK copyright) no registration is needed. There are a number of processes, procedures and practices which we can recommend to you to ensure your IP is protected.

Establishing subsistence and making appropriate filings or applications is just the start. Protection is a continuous process and also includes the following key areas which we can advise on:

• Commercialisation and exploitation
• Enforcement
• Education – policies and procedures

For more information on how we can help you protect your, IP please contact a member of the IP team.

Structuring your business to ensure the IP you own is suitably protected and isolated from legal risk should be a key priority for all businesses.

In a simple corporate structure, key IP is owned by the holding company and isolated from the day-to-day trading activities and associated risks which is carried out by the subsidiary / trading company.

Whether such a structure is adopted should be subject to detailed legal advice and tax advice relevant to your particular circumstances.

Key considerations for IP restructuring

• A business must first know what IP it owns and where it sits within its organisation. We recommend as part of any IP restructuring that a business first identifies what and where IP is used by it (whether owned or otherwise)
• Make sure that any holding / subsidiary company corporate structure is correctly created
• Ensure the IP assets are properly retained / moved into the holding company
• Ensure the contracts are properly retained / moved into the trading company
• Consider how on-going development and use of IP is managed between the two companies

For more information on how we can help you structure the ownership and licensing of your IP, please contact a member of the IP team.

Your IP can hold a quantifiable commercial value just like any other form of property. IP can be purchased, sold and licenced by owners and interested parties in the IP and therefore it is important to have a good understanding on how much your IP is worth, when it should be assessed, and how this assessment may take shape.

The most appropriate method of valuation for your IP will depend on the nature of the IP right in question.

The valuation of registrable IP rights is a specialist area and it is important to ensure that your IP valuation is revisited from time to time in order to ensure that you have an accurate idea of the current value of the IP rights that you hold as this may influence how you decide to exploit them.

There are pros and cons to each method and various factors will have a bearing on the method used including the stage of development or marketing of the IP in question, the availability of information around that and competing IP products and your commercial goals as owner of the IP.

Although there is no ‘one size fits all’ approach to IP valuation, there are three typical types of assessment:

1. The cost method – based on costs you incurred in creating and/or developing and/or protecting the IP;
2. The market value method – based on the recent performance of your IP in the market and the performance of competing products or services; and
3. The income/economic benefit method – based on the projected profit revenue your IP may generate in the future.

We do not provide IP valuation assessments on IP rights ourselves but work closely with a number of specialists who we can suggest.

For more information on how we can help you to value your IP, please contact a member of the IP team.

Commercialising and exploiting your IP can take many different shapes and forms.

Whether you know exactly what you want, or would like assistance structuring your deal from a legal perspective, we can help advise you and ensure the documentation put in place is fit for purpose.

Alternatively, you may want an agreement reviewed to check there is nothing in it which is cause for concern. We can help you do this and offer a number of different types of review.

We have experience drafting a wide variety of contracts which relate to IP. Examples include:

• IP assignments
• IP licensing agreements
• Confidentiality agreements / Non-disclosure agreements (NDA)
• R&D agreements
• Collaboration agreements
• Franchising agreements
• Joint venture agreements
• Advertising and marketing agreements
• Terms and conditions of supply
• Software development agreements
• Software licensing agreements

Whatever your needs are in relation to commercialising and exploiting your IP, please contact a member of the IP team.

Whether you want to know what your options are with regards to enforcement of your IP rights, or, are on the receiving end of an enforcement action from a third party claiming infringement of their IP rights, we are here to help.

Enforcement actions can be complex and will vary on a case by case basis depending on the IP right in question.

We can assist you every step of the way from:

1. Initial advice on the merits of a claim and formulating relevant strategies;
2. Drafting or replying to cease and desist letters;
3. Drafting and filing of court proceedings – whether county court, IPEC or the High Court; and/or
4. Advising on and drafting of settlement agreements.

We have a wealth of experience relating to alternative dispute resolution mechanisms including arbitration, mediation, and specific domain name complaint policies (ICANN Uniform Dispute Resolution Policy and Nominet’s Dispute Resolution Service Policy).

For more information on how we can help in relation to IP enforcement, please contact a member of the IP team.

Ensuring your business and relevant personnel are well informed about the IP that your business creates and/or uses is key to help you maintain, protect and exploit your IP. It can also help minimise the risk of infringing the IP rights of third parties.

Ways in which we can help you educate your workforce

• Reviewing and discussing existing practices, policies and procedures of your business to identify any room for improvement (this may be done as part of a wider IP audit)
• Provision of bespoke training sessions on IP to educate key employees on areas of risk
• Drafting of relevant policies and procedures to assist you to implement relevant practices, know-how and culture when it comes to maintaining, protecting and exploiting your IP

For more information on how we can help, please contact a member of the IP team.