Deborah Niven, an IP specialist at hlw Keeble Hawson, one of Yorkshire’s largest law firms, is urging SMEs in creative and digital sectors to take advantage of government funding to audit their intellectual property.
Through the government’s Business Growth Service, the IP Audit Plus programme provides funding of up to £3,000 – including VAT – for an IP professional to assess the value of a business’s IP collateral.
The audits, which are suitable for all sectors, enable established companies to take a step back and assess where the value lies in their business.
Explains Deborah: “Often at the start of a business, only minimal consideration is given to intellectual property and contracts in order to begin trading, but over time the firm builds up a brand, develops products or services and expands along the way.”
“Audits of this nature that we’ve conducted enable directors and owner/managers to gain a clear picture of any IP assets, ensuring these can be managed effectively and used as part of the business growth strategy. This awareness is particularly important where the audit has demonstrated that IP protection is key to the development and commercialisation of a particular product or service, and can also be a critical factor in valuing a business for a future sale, management buy-out or for an injection of funds from private equity investors.”
A report from the Intellectual Property Office on the IP Audit Plus found that the audits had highlighted new business opportunities in 31 per cent of participating businesses, with 43 per cent – more than four in ten companies – identifying new opportunities to exploit their IP through initiatives such as licensing and franchising – and 28 per cent reaping financial benefits as a direct result of their audit.
In a further business boost, the report demonstrated that IP reviews had opened up new financial support streams such as equity funding and grant funding.
Adds Deborah: “Businesses may not consider IP to be high on their agenda. The most valuable IP asset might be a new product which is being developed, but the company doesn’t see it as either inventive or protectable when actually it is.
“An improvement to an existing product or service, or a new way of doing something, can often be protected – leading to licensing opportunities, additional income streams, or even a monopoly in the market place if they gain patent protection.”
An effective IP audit report and recommendations may cover:
· Patents – identifying applications, granted patents and potential patentable technology
· Trade Marks – identifying registered and unregistered trade marks, searching existing marks if registration is recommended
· Designs – identifying registered and unregistered trade marks and considering potential protection
· Copyright – establishing who owns copyright on databases, software, websites, marketing/promotional material, photography, film etc. This includes considering ownership of copyright where such work has been commissioned by a client – or any work carried out by a freelance for a creative agency – explaining the process for ownership and database right. This is an area frequently misunderstood by both designers and their clients.
· IP management – including confidentiality and non-disclosure agreements, trade secrets, know-how, employee agreements and dissemination of IP policy, contracts, licensing including royalty payments, evaluating existing IP agreements
· Loopholes in IP, including copyright and trade marks, that enable copycats to undermine a business
· Identifying opportunities for royalty streams, based on a percentage of the net selling price of any products sold.
The final report will identify any weaknesses in a business’ IP and advise on what protection can be sought. It will also make recommendations for further action and possibly steer the business in a direction which wouldn’t have previously been considered.
To qualify for funding for IP Audit Plus businesses must be registered on the Growth Accelerator Programme, part of the government’s Business Growth Service.
For more information see http://www.ga.businessgrowthservice.greatbusiness.gov.uk