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In an increasingly competitive corporate landscape, intangible assets such as intellectual property (IP) can be key differentiators for companies. As such, properly managing an IP portfolio may be more important today than ever. Technology has emerged as a vital part of this process. Companies have a huge choice of software tools and online services which will enable them to keep track of their IP assets. IP offices have also begun to embrace technological innovation, with many taking their IP databases online. Making this information publicly available for access both domestically and internationally allows companies to better identify risks from a registrability and patentability standpoint.

CANADA

McCarthy Tétrault LLP

“Canadian companies generally are not doing enough to manage their intellectual property (IP) portfolios. Many Canadian companies do not invest sufficient resources in formulating an IP strategy appropriate to their business goals. Too often, companies file for IP right protections because they wanted to tick a box for potential investors, instead of considering whether the type of IP asset is appropriate for the company at that specific time. Canadian companies do not spend enough resources on designing, implementing and updating their IP strategy.”

ARGENTINA

Marval O’Farrell Mairal

“In recent years, we have seen many Argentine companies acquire more experience and become much more sophisticated in managing their intellectual property (IP) portfolios. We view this as a very positive development in the country’s IP landscape, as most local companies historically paid little attention to protecting their IP rights. As for patents, it is key to bear in mind that Argentina is not yet a member of the Patent Cooperation Treaty (PCT), which poses a challenge for local and foreign companies alike.”

UNITED KINGDOM

Marks & Clerk

“Management of intellectual property (IP) portfolios is largely dictated by budget and resource. Companies need to balance the cost of protecting and enforcing their rights, against the value that intangible assets bring to their business. As always, it is strongly recommended to seek professional advice concerning your IP, to understand better what assets are protectable and where budget is best allocated to strengthen a portfolio. A strong portfolio of rights, coupled with good enforcement activity against third parties treading too closely on a business’ brand, is key for building a strong trademark portfolio.”

FRANCE

CMS Francis Lefebvre Avocats

“We appreciate that intellectual property (IP) portfolio management is a costly activity that companies generally try to reduce. However, dynamic management of portfolios is becoming more crucial, especially in light of the forthcoming implementation of the unitary patent (UP) and of the Unified Patent Court (UPC). This significant reform should not be overlooked by companies. The UP will provide uniform protection in participating member states. If they want to use this new kind of patent, companies with pending European patent applications will have to decide within a short period of time after the grant decision.”

ITALY

Herbert Smith Freehills

“An issue that we have being seeing recently is the difficulty faced by start-ups attempting to protect their inventions, their know-how or their trademarks with accurate intellectual property (IP) assets. This happens because start-ups often do not have big enough budgets that can be committed to IP protection, and they start their business thinking that they can always obtain protection at a later stage. However, they often start using a specific trademark and investing their money in marketing and promotional activities with a specific brand, only to find out later that there are existing earlier trademarks that could oppose their IP assets, or even that in a specific jurisdiction their mark cannot be registered as it lacks distinctive character.”

POLAND

Hogan Lovells

“In my experience, companies in Poland are often not fully aware of the need to protect and effectively manage their intellectual property (IP) assets. As a result, they may be missing opportunities to generate value from their portfolios. Companies ought to consider registering their IP early enough in the IP development process, so that they can effectively protect themselves against infringers. This is particularly the case for patent and utility patent protection, both of which have been largely underutilised by Polish companies to date.”

PEOPLE’S REPUBLIC OF CHINA

Lifang & Partners

“In China, many foreign companies manage their intellectual property (IP) portfolios well, but they could do better. Companies in China usually have a decent-sized patent portfolio, given that the costs of obtaining and maintaining them are not that high in China, particularly compared to other major markets such as the US, EU or Japan. Notably, some companies have not retained a high-quality IP team, which should include individuals with a good understanding of the Chinese IP system as well as an ability to keep abreast of rapid changes in the system. Accordingly, these companies' patent portfolios are often not managed effectively.”

HONG KONG

Norton Rose Fulbright Hong Kong

“Larger companies are now generally very aware of the available means of intellectual property (IP) protection, and have developed sophisticated in-house strategies for their IP filings. They are also experienced in maintaining and enforcing their IP rights. On the other hand, many small and medium enterprises (SMEs) may still lack the same level of awareness regarding IP protection. A number of factors should be considered when devising IP strategies, such as the goal of the business, such as long-term sustainable growth versus short-term exit for capital return, as well as the locations of its main markets and supply chains.”

CONTRIBUTORS

CMS Francis Lefebvre Avocats

Herbert Smith Freehills

Hogan Lovells

Lifang & Partners

Marks & Clerk

Marval O’Farrell Mairal

McCarthy Tétrault LLP

Norton Rose Fulbright Hong Kong