How tech start-ups can build an IP strategy for success

Esther Gottschalk & Stephen Blake of Marks & Clerk

How tech start-ups can build an IP strategy for success

The latest analysis from the Centre for Entrepreneurs shows that Birmingham is booming, with more than 12,000 businesses started last year alone.

With major developments set to continue transforming the city over coming years, making it an ever-more attractive place to live and work, this trend will likely continue.

When starting a business, there is a huge amount to consider, from branding and target markets to raising finance and appointing the right people. One part of the puzzle is intellectual property (IP).

For many entrepreneurs, IP consists simply of filing either a patent to protect the invention underpinning a company or a trademark to protect brands and logos. While entrepreneurs know they need to protect these fundamental aspects of their IP, a proper IP strategy can make a huge difference to a growing enterprise.

Where to begin?

Developing an IP portfolio appropriate to your business will be a highly bespoke process, with much dependent on the nature of your business and the plans you have for its future over the shorter and longer terms and how this is balanced with your budget.

Key questions will need to be asked such as what IP is business-critical initially, and over the longer term and into what territories do you foresee yourself expanding in the future? There are also administrative but necessary questions, such as who should own the IP?

A good IP strategy would also benchmark what your competitors are doing and what can be done to ensure you are protecting your brands, technologies or products from your rivals.

Beyond patents and trademarks, there are many other forms of IP ranging from the well-known, such as copyright, to the less well-known, such as know-how and database rights. Some of these IP rights exist automatically and for free. Others will need to be registered and the process of doing so can be complicated, requiring a patentee to get to the ‘essence’ of their innovation.

Finding the IP that’s right for you

As highlighted in the report from the Centre for Entrepreneurs, many of the companies emerging in Birmingham will be in the tech sector. Disruptive technologies are redefining economies on a global scale, so it’s no surprise that so many emerging businesses fall within the broad category of digital and technology.

Acquiring IP to protect computer coding has long been seen as difficult. Given the scale of the transition from analogue to digital which the economy is undergoing, however, the law around protecting code is becoming increasingly robust. Copyright has long been a central pillar for protecting software code and good IP practitioners are now adept at identifying and capturing copyrighted code in a way that allows the copyright in it to be successfully enforced.

Another key concern for enterprises in the tech space will be data. Database rights are one of the lesser known forms of IP but can be highly valuable and could apply if there has been a "substantial investment" in obtaining, verifying or presenting the contents of a database.

For businesses beyond the digital space, perhaps companies and entrepreneurs bringing an innovative new physical product to market, patents remain the key weapon in the IP armoury. Formulating a patent strategy early on will save time and expense down the line, and will be key to ongoing success. Again there is no one size fits all solution here and much will depend upon an individual company’s products and strategy.

Formulating a worldwide patent filing strategy will be necessary, which will raise key questions about where to file and when. Likewise, for truly inventive products where there may not be a great deal of prior art (pre-existing knowledge that might limit the scope of a patent in a more established industry), well-drafted patents could potentially allow for broad protection covering not only the patentee’s business, but also valid, relevant monopolies in ancillary, non-competing industries.

Another key area of IP for enterprises in any field is trademarks. Trademarks are widely used to help protect the identities and values of countless products and companies in every conceivable sector of the economy. Trademarks define a business in the public space, giving credibility to its brands, adding to the bottom line and embodying its reputation. Thought will have to be given to what you want your trademark to say about your business, and making it protectable, enforceable and carving out its own space within your sector.

As we can see then, there’s far more to IP than is often assumed. While there’s a lot to consider, investing early in developing an IP portfolio and strategy that’s right for your business will ensure a greater chance of success and investment down the line.