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Key considerations for an effective IP strategy

IP an afterthought? I think not.

When starting or developing a business, Intellectual Property (IP) often finds itself on the back seat compared to various other business considerations. And yes, even though it does make sense to put a slight hold on obtaining registrable IP protection in some cases, for example if you are an up-and-coming start-up looking for funds to get going, it is integral to keep the presence of IP and the potential to protect (or safeguard) said IP in mind. After all, IP is a valuable asset and could eventually be the golden ticket to get the $$$ valuation that your heart desires. 

In light of the above, I strongly believe that it should be a vital element of any business to have a set IP roadmap/strategy in place. In some cases, it may even be a good idea to have a designated person with a responsibility to, when appropriate, slam on the brakes and say “Wait! Here may be some IP that we need to investigate first.”

Developing a detailed IP strategy involves considering various aspects unique to an organisation or individual and there is no blanket strategy that can be implemented by all. That being said, some important considerations when developing an IP strategy are briefly discussed below:

Owning the IP

The question of who owns the IP (and ensuring that the answer is “You”), is an extremely important question to ask for any business or individual.

Why is this important? Is the answer not obvious? Generally, only the owner of the IP is entitled to register and/or commercialise it. However, it is important to understand that, if you have an idea but for whatever reason commission someone to help you execute the idea, in some cases, the party helping you execute the idea may in fact be creating IP associated with the idea and, by default, be the owner of the IP (see the discussion on copyright below).

For example, a common occurrence in industry is that a party has an idea, but they lack the skills or capacity (time or hardware) to realise the idea. To help them realise the idea, they commission a third party to develop a mobile application, an artistic work (2D design), or technical/engineering drawings relating thereto. In terms of the governing law, the third party (or creator of the work) owns the IP (or copyright) in those works until an agreement is entered into that transfers the IP from the third party to you (or your business).

Accordingly, one of the most important considerations of a successful IP strategy should be IP ownership. Where you consider involving any third parties, or any employees, in executing/developing an idea, it is important to have agreements in place and make sure that any IP generated while doing so is automatically assigned to you. These agreements may be designated IP assignment agreements or provisions for the assignment of IP included in employee agreements, developer agreements, or the like.

Even though it is possible to enter into assignment agreements after the work has been completed, this is not ideal and it is recommended that care is taken to allow for the automatic assignment of IP upon creation thereof.

By way of example, you can read more about patent and trade mark ownership cases here:

Ownership of Trade Marks – Identifying the Correct Applicant – Michael Buck IP (mbip.com.au)

A Lesson in Patent Ownership for Australian Universities – Michael Buck IP (mbip.com.au)

Identifying the IP

A further important consideration for an effective IP strategy is putting measures in place to identify potential IP. Even though the identification/flagging of potential IP, in principle, is a pretty straightforward task, it is something that, unfortunately, often comes as an afterthought.

Identifying potential IP in the early stages of a project is of critical importance as, generally, it keeps the door wide open to most forms of IP protection and paves the way forward, in this regard. For example, if the potential IP is only identified after an idea/project has been made public, it could terminate the option of obtaining patent protection for the project.

One of the most effective ways to ensure that potential IP development is being flagged, is by nominating one or more dedicated “IP investigators”. These IP investigators may be tasked to flag any aspects or features of a project that may be worth protecting or safeguarding. The IP investigators may, for example, be project managers or members of a team working on the project.

These IP investigators, or any other nominated individual/individuals, may also be tasked to conduct checks or research to explore the protectability of the flagged IP. Not only does this help to provide some clarity on the way forward (such as whether to put branding on products, for example), it also assists in avoiding unnecessary costs when trying to register one or more forms of IP.  Such checks or research may be conducted to determine whether it is, in fact, possible to register the IP. For example, a trade mark can only be registered if there are no existing identical or confusingly similar trade marks (that have either been granted or are still pending). As such, a simple search may help determine if any other entities/products/projects are associated with a similar mark or name. Similarly, one requirement of a patent is that it should be new. Accordingly, it is advised to conduct some research to establish whether any features identified as being potentially patentable has not already been disclosed/made available to the public.

Not only would the above checks assist to determine if the IP may be protected or registered, it could also help identify the risk of infringing any trade marks or patents. 

More detailed searches may, in some cases, be required and it is advisable to contact a law firm that specialises in IP for advice in this regard.

Protecting the IP

An effective IP strategy should further set out options on how to protect / safeguard potential IP once it has been identified.

In general IP can be divided into two main groups – registrable IP and unregistrable IP – and it is important to distinguish between these two groups so as to ensure that the correct steps are followed to protect the IP.

The most common forms of registrable IP, at least in Australia, include patents (innovation and/or standard), trade marks and registered designs, whereas the most common forms of unregistrable IP include copyright and trade-secrets (know-how).

When it comes to registrable IP, the patent strategy should clearly set out what you want to protect, where you want to obtain protection, and what your reasons for obtaining protection are.

The above considerations may depend on various factors. For example, what you want to protect may include evaluating whether you simply want to protect your name so that people can easily identify your products in trade, whether you want to protect a technical solution to a problem that you (or your product) solved, or whether you have a unique design and want to protect the physical appearance of an article.

In addition to determining what you want to protect, it is also important to determine where you want to obtain protection. This normally ties in with the question of why you want to obtain protection. If the answer is because you want to prevent competitors from entering the market in countries/jurisdictions where you intend on operating, you may want to obtain protection in those jurisdictions. Alternatively, if you want to sell your business, idea or product to another entity, you may wish to obtain protection in jurisdictions in which potential sellers normally operate, for example. However, as some forms of IP are territorial and the registration thereof is considered to be quite expensive, it is important to be strategical about where you obtain registered protection.

It should further be appreciated that obtaining registration for IP is ultimately a business decision and various factors need to be considered before proceeding therewith. For example, looking at patents, it is important to always take precautions to keep your invention confidential before disclosing it to any third party, business partner, or the like. This can be done with a confidentiality agreement or by including confidentiality clauses in your business contracts.

A consideration that ties in with “what you want to protect” should be which form of IP is most suitable in a particular case. For example, if you have developed a product/platform in a field where there is constant development and you believe that the contributions of your product/platform are limited, it may be better to look at a trade mark as opposed to a patent. The reason may be that a trade mark is, generally speaking, less expensive and has a longer lifetime compared to a patent

Turning to non-registrable IP – these forms of IP often go unnoticed and people tend to forget about the value that it offers. For example, all works created, such as source code, instruction manuals, product presentations, etc. are protected by copyright. Copyright is considered an “automatic right” in that your work is protected from the moment that it is fixed in a material form (it is important to note that it is not the idea itself that is protected but rather the expression of that idea).

Even though copyright is difficult to enforce, it does carry value and it is important to be mindful thereof. For example, in cases where patent protection is not an option due to budget constraints or eligibility issues, copyright could be a valuable fallback. Copyright is known to be one of the most difficult forms of IP to manage and, as such, it is important to consult an IP attorney before making any decisions to reply on copyright protection.

A further form of non-registrable IP is a trade secret. A trade secret can, in some cases, be a very handy alternative to a patent. The idea behind a trade secret (as suggested by the name) is to keep an idea/technology secret. In other words, it is a form of protection that involves keeping any information, unknown to others, that you consider valuable or that provides a competitive edge to you over competitors, as a secret.

A trade secret may cover both technical and commercial information and its advantage is that it is a low-cost option to safeguard any information that provides you with a competitive edge.

As such, an important consideration of an IP strategy should be how to keep information that does not need to be public out of the public domain. One method of doing so is to include a simple clause in a contract to prevent employees from disclosing trade secrets. A further method may be to limit access to information by password protecting the information and only providing access thereto to people that need the information to perform their daily duties. Trade secrets may include client lists, financial data, marketing strategies, or the like.

It should be appreciated that, as opposed to most forms of IP that may be used to defend your rights, a trade secret owner cannot prevent others from using the same technical or commercial information, if they acquired or developed it independently by themselves through their own R&D, reverse engineering, marketing analysis, etc. Accordingly, careful consideration needs to be given when considering the option of trade secrets and, again, it is important to contact an IP attorney before relying on trade secrets as a way of safeguarding information.

What does this mean?

All-in-all, an effective IP strategy should (in no particular order) include measures to:

  1. Identify potential IP in a project;
  2. Determine if, how, and where the IP needs to be registered; and
  3. Ensure that ownership of the IP belongs to you or your organisation.


IP is an asset with the potential to be extremely valuable to an organisation or individual regardless of its size, popularity, reputation, or the like. As such, it is important to have a well thought out IP strategy in place to move IP from that backseat into the front. In fact, lay down your best pillow and get a blankie to make sure IP is a key consideration of your business remaining on that front seat.

If you would like expert IP guidance in relation to your specific technology field and industry, please feel free to book a meeting with one of our attorneys – initial consultations (up to 45min) are free of charge.

Further reading: Intellectual Property Management Strategies for Small Business – Michael Buck I.P. (mbip.com.au)