IP Services
IP can be technically and legally complex, expensive and is often not aligned with the client’s business plan.
Frequently overlooked at an early stage of a business, the lack of proactive management of Intellectual Assets (IAs), IP Rights and IP portfolios can lead to an underestimating of the true value of a business.
When raising capital (either equity or grant money), there is frequently a disconnect between investor/funder-investee IP expectations and a lack of understanding on developing value from IAs and IP Rights.
This even though the customer is continuously creating value-adding knowledge, such as IAs and IP Rights.
Example – software business
IAs created – software code
IP Rights suitable for protecting the IA ‘software code’ – copyright, patent
You can read our article for Barclays on the topic: ‘Understanding the value of your startup’s IP’.
Strategic IP Services
Retained support
Advising on innovation and IP management and strategy, often as a pseudo- in-house attorney on a retainer basis
Strategy
Providing strategic IP advice aligned with the business’ commercial plans, often involving undertaking a mapping of the commercial plans and products to the business’ IAs and IP rights
Due Diligence
Conducting IP due diligence in investment transactions, representing either the investor or the investee company.
Evaluation
Undertaking IP Auditing and IP Evaluation, for the purposes of understanding the types of value-adding intellectual assets and rights created by high-growth companies
IP Clauses and IP Schedules
Advising on IP clauses in and creating IP Schedules for various agreements (licence, research collaboration agreements, etc) negotiations, thus working closely with the solicitors drafting these agreements
Freedom to Operate
Undertaking freedom to operate and patentability opinions
Disputes
Providing advice and input into IP disputes and litigation
Enforcement
Advising on enforcement of IP Rights
University Technology Transfer Practices
Advising on technology transfer practices, representing either the university’s Technology Transfer Office or the university spin-out or start-up
Patent Box and R&D Tax Relief
Advising on the use of IAs and patents in obtaining UK tax relief (the tax relief applications are made by specialist companies)
Services for securing, maintaining and enforcing IP Rights
Searches
Trademark initial consideration and online searching
Red-flag novelty searches for initial consideration
Patent and design novelty searches (via Specialist Searching Company)
Intellectual Asset (IA) and Innovation Management
Advising on Intellectual Asset identification and Management, including assistance with the creation of in-house Innovation Management tools and practices
Registrable IP Rights
Patents
Drafting and filing patent applications in UK, EPO and WIPO
Prosecuting patent applications to grant, often using ‘accelerated prosecution’ by means of Green Channel and/or Patent Prosecution Highway
Patent maintenance and renewal
Patent enforcement
Trademarks
Drafting and filing trademark applications in UK and EUIPO (via Associate)
Trademark initial consideration and online searching
Trademark filing, prosecution, registration and renewal
Advising on trademark interparties matters at the UKIPO
Trademark portfolio management
Legal support for trademark disputes
Advice on trademark infringement and passing off
Designs
Filing design applications in UK and EUIPO (via Associate)
Unregistrable IP Rights
Copyright ©
Advising on securing copyright protection and appropriate copyright notices
UK unregistered trademarks ™
Advising on identification and securing of UK unregistered trademark protection
UK and EU Design Right
Advising on identification and securing of UK and EU design right protection
