The annual BIO International Convention begins in San Francisco
today. Spanning three days, this event is marketed as a
"Global Event for Biotechnology" and is one of the
largest of its kind. Attracting over 15,000 industry leaders it
represents an excellent forum in which companies can nurture new
and exciting partnerships. To put the scale of this event into
context, some 29,279 partnering meetings were conducted at BIO 2015
Scotland is always well represented at BIO with local SMEs,
universities and public bodies all using the event to bolster their
international business networks.
For most of these organisations, preparation for BIO 2016 will
have been ongoing, at a minimum, for many months. The cost of
attending can be significant, meaning there is a real need to
extract as much benefit as possible from events of this scale. One
area which can occasionally be overlooked and on which successful
business partnerships can hinge, is a well organised and strategic
intellectual property (IP) portfolio
Aside from researching the attendees and business interests of
potential partners, there are several additional steps you should
take to ensure that your intellectual assets work as hard as they
must for your business.
Being able to leverage and extract a tangible benefit from your
IP requires a certain degree of knowledge of those rights that vest
within your business. To this end and prior to any discussions with
third parties, it is recommended that businesses conduct an IP
audit. An IP audit will not only assist in identifying what
patentable technology you are developing and/or using, but also
those brands and designs which could be adding further value to
Crucial to the success of any investor-led IP due diligence
process is an accurate understanding of the status, strengths and
weaknesses of your pending or granted patent, trade mark and/or
design rights. An analysis of this type can easily be built into
any IP audit.
There are often grants available through Scottish Enterprise to
enable SMEs to commission an IP audit from a professional IP firm.
The precise form of the audit may vary but usually a patent
attorney will undertake a review of a company's assets and make
recommendations for protection. These audits can provide a
competitive advantage in the marketplace and we have supported a
number of companies in this regard, with all confirming the
benefits of going through the process.
When businesses attend events like BIO, their aim is often to
discuss their commercial goals and innovations with as many
potential partners as possible. However, non-confidential
disclosures pose a serious risk to the validity of your IP and as
such you should ensure that you are properly protected beforehand.
An audit will help you identify what IP should be protected and you
should pay particular attention to placing the relevant protection
around your most important and prominent products, processes and
Deciding what type of IP protection should be used to protect a
product is not always easy and while a patent might represent
appropriate protection for one particular type of product, another
may be better suited to design protection. Patent and Trade Mark
Attorneys can work with you to determine how best to protect your
Whether you are seeking investment or licensing opportunities,
potential partners will want to conduct due diligence on your IP
Due diligence can be considered as an important IP health check
and will usually involve looking at the ownership of your IP, its
legal status and your freedom to operate.
In terms of ownership, important questions to be answered are:
Does the IP vest with the correct entity? Does the entity own what
it thinks it does? Does the entity have the legal documentation to
prove ownership and/or entitlement to the IP?
A review of the legal status will look at any pending and/or
granted IP rights to determine the scope of protection and whether
or not all relevant renewal fees have been paid.
Freedom-to-operate reports look at the likelihood of one
entity's activities infringing the IP rights of another. An
investor will want to know that you have considered the risk posed
by third party IP rights and that you have developed a strategy for
dealing with them.
By devoting a little time to assessing and organising your
intellectual assets, you can maximise your participation in events
like BIO and nurture those successful business partnerships that
are important for growth.
The focus on the product being obvious or anticipated as at a certain date provides powerful protection and commercial certainty without conflicting with a patentee's ability to obtain patent protection.
The High Court considered a claim by Azumi, the owner of high-end Japanese restaurant Zuma against Zuma's Choice Pet Products Limited (ZCPP) and its director Zoe Vanderbilt for trade mark infringement.
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