Intellectual Property

www.thelegaldirector.co.uk

A how-to guide from The Legal Director

Providers of part-time Legal Directors with the experience and expertise you need

Protect your intellectual property

Identify your business’s trade marks, designs, patents, and copyrighted materials

Avoid common mistakes

Enforce your rights: ‘use it or lose it’

Your business’s trade marks, designs, patents, and copyright may be among the biggest assets—and represent most of the goodwill— in your business, so…

“What intellectual property assets does your business possess, and do you have the know-how to identify these assets? How can those intellectual property assets be cost-effectively protected? And how should you go about enforcing and maintaining that protection?”

Find out—and protect your business and its intellectual property assets—before it’s too late to do anything about it.

Read this guide now, then contact The Legal Director for a free initial advisory call with one of our part time Legal Directors.

Call 020 3053 8613 or emailed.simpson@thelegaldirector.co.uk

About the TLD Value Promise

We know — and can demonstrate through client data and case studies — that we can save our clients significant amounts of money and directors’ time.

Please contact us for more information and a personalised illustration of how much money we could save you on your business’s legal bills.

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You’re different, and so are we

In this guide, we outline some of the most significant

intellectual property risks to which your business

may be exposed. But we should stress that it is just a

general guide.

Every business is different, and that’s where working

with The Legal Director can really add value—while

simultaneously reducing the burden on senior

management. With one of our part time Legal

Directors working as part of your business, you’ll not

only have highly experienced intellectual property

expertise on hand whenever you need it, but also

continuity. A familiar face, operating as part of your

team, helping your business with intellectual property

management going forward.

This is very different to the way that a traditional

firm of solicitors or law firm is likely to work with

you. They will typically be far less involved in your

business, rather than being a trusted member of your

management team.

A traditional firm of solicitors or law firm will also

typically be far less business-savvy, offering advice

very much from a purely legal perspective.

At The Legal Director, our part-time Legal Directors

are seasoned—and senior—corporate lawyers with

extensive experience of the realities of the business

world. So the advice that we offer on how to ensure

that your business’s intellectual property assets are

secured will combine legal expertise with first-hand

knowledge of how businesses work in practice.

What’s more, each of our lawyers acts for a maximum

of six or seven clients at any one time, whereas in

a traditional law firm each partner can have scores

of clients they must service. This means that the

amount of time the traditional law firm partner has to

understand the client’s business is massively curtailed

and they are unable to provide the level of proactive

advice that can add real value to the client’s business.

INTRODUCTION

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Every business has intellectual property

assets—trade marks, designs, patents,

unpatented innovations, and copyright in

written materials. Many businesses, though,

don’t know what intellectual property they

possess and are confused about registering

and protecting that intellectual property.

Worse, they’ll make basic mistakes in exercising—or

attempting to exercise—their intellectual property

rights. Mistakes that are serious enough to

invalidate the protection that they had assumed they

would be securing.

Time and again, we at The Legal Director see

businesses make these basic mistakes with

intellectual property protection, leaving them open to

serious commercial risks.

What sort of mistakes? What sort of risks?

Using trade marks that can’t be registered, for

example. That’s because in trade mark law, a trade

mark should not be descriptive of—or related to—the

product or service to which it relates.

Another danger: failing to register—or renew—trade

marks everywhere your business trades, or might want

to trade. Because while in certain countries there’s

a right to sue businesses which are passing off their

products or services as yours, and fraudulently using

your trade mark, that’s not the case in every country.

Still another danger: failing to protect trade marks.

Always append the ‘®’ symbol, which is a formal

part of the trade mark. Never use the trade mark

in a descriptive context, and always act promptly if

aware of possible infringement. Fail to act promptly,

and your business may be deemed in law to have

consented.

Patents? Design registrations? Copyright? Just as

full of intricate complexities. Time and again, we see

businesses commission designs from designers, but

fail to acquire rights over the intellectual property

assets that they have commissioned and paid for.

Here at The Legal Director, our approach to

intellectual property protection is twofold.

First, we help you to identify, secure, and

defend your valuable intellectual property

assets. And second, we help you to do so

cost-effectively.

And cost-effectively in two particular ways. One, we understand that in the real world, it may not be possible for businesses to protect every aspect of every piece of intellectual property that they own. Trade-offs and compromises are essential.

Two, we’re also significantly cheaper than specialist intellectual property lawyers such as patent attorneys. So while working with The Legal Director means that you’ll still need a patent attorney for tasks which call for a patent attorney’s specialist expertise, you won’t be paying a patent attorney for the general intellectual property advice and strategy that a commercial business lawyer can provide.

Proactive protection is best

While most businesses know that intellectual property assets are important, not every business appreciates the importance of proactive protection. In our experience, it’s all too easy for intellectual property protection to be put on the ‘to do’ list, and stay there, overtaken by other priorities.

This can be a mistake. With intellectual property assets, timely action is essential—both when it comes to proactively securing that intellectual property, and when it comes to defending it from infringement.

Design rights and potential trade marks that aren’t registered in a timely manner can be disallowed if competitors or other third parties stake a claim to them first, for instance. Patents, to choose another example, can only be taken out when what is being patented is still

HOW THE LEGAL DIRECTOR CAN HELP YOU SECURE AND DEFEND YOUR BUSINESS’S INTELLECTUAL PROPERTY ASSETS

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The Legal Director works with you to identify your intellectual property assets, assess the appropriate level of protection necessary to secure those assets, and helps you to then defend those assets from any infringement of your intellectual property rights, working with other intellectual property specialists, as appropriate.

a trade secret—put details of an innovation in the public domain, even inadvertently, and a patent can be denied. And fail to defend a potential infringement in a timely manner, and you may be deemed to have given consent to that infringement.

What’s more, it is important to remember that your business’s intellectual property—its trademarks, designs, any patents, and any copyrighted materials—comprise valuable business assets that have a bearing on the price that a prospective purchaser will pay for your business.

At the very least, any such purchasers will want to ascertain the nature of any intellectual property protection that is in place before agreeing to purchase your business—all of which adds delay to the sale-and-purchase process, if proper protections cannot be readily demonstrated. If those protections are not in place, then that may well affect the price that a purchaser is willing to pay.

The overall message is clear. When it comes to intellectual property protection, get ahead of the curve—and aim to stay there.

“It’s all too easy for intellectual property protection to be put on the ‘to do’ list, and stay there, overtaken by other priorities. Don’t take chances: secure your intellectual property assets before it is too late.”

Working with The Legal Director to secure

and defend your business’s valuable

intellectual property assets is cost-effective,

straightforward, and frees up senior

management time to focus on where it

should be focused—making your business

a success.

We’ll help you to identify your intellectual property assets, assess the extent to which intellectual property protection is necessary—or cost-effective—and advise on intellectual property protection strategies and procedures. We also help you to defend your business’s intellectual property against infringements, working with other specialists as appropriate to achieve this.

Perhaps most importantly, we put in place ‘know-how’ of your product and how to protect it.

Here’s an overview of the typical steps in the process:

HOW WILL THE LEGAL DIRECTOR WORK WITH

YOU ON INTELLECTUAL PROPERTY PROTECTION?

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Saving you significant amounts of time and money

Importantly, you’ll have ongoing access to a highly experienced and flexible in-house Legal Director — for much less than it would cost to employ that level of resource full-time, or to employ a traditional law firm on an ad-hoc basis.

That will not only give senior executives such as your CEO and CFO consistent support and reassurance, it will give them more time to focus on their core roles.

Identify your valuable intellectual property

Assess the existing level of protection

Make cost effective recommendations for securing protection for unprotected intellectual property assets, such as design registration, copyright notices, trade marks, and patents

Look for ways to enhance the level of protection applicable to intellectual property that is protected

Provide guidance on how to defend your valuable intellectual property assets against infringements

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HOW DOES THE LEGAL DIRECTOR’S ADVICE AND APPROACH DIFFER FROM THAT OF A TRADITIONAL FIRM OF SOLICITORS/LAW FIRM?

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A traditional firm of solicitors or law firm

will typically operate at a distance, viewing

intellectual property from the point of view

of a one-off assignment or project, rather

than helping you with an ongoing intellectual

property management requirement.

A traditional firm of solicitors or law firm will also typically offer advice very much from a purely legal perspective, rather than providing practical advice and guidance as to how to protect intellectual property risk in the real world of business—and in particular, your business.

As covered earlier, at The Legal Director our part-time Legal Directors are seasoned—and senior—corporate lawyers with extensive experience of the realities of the business world. The business perspective they will bring to the table is especially valuable in the world of intellectual property protection, where there are complex cost-effectiveness trade-offs to be made regarding which intellectual property assets require which forms of protection.

The service we offer is also proactive rather than reactive.

Rather than helping you to deal with problems after they have occurred—which is too late—we strive to anticipate potential problems and put in place protective mechanisms ahead of time.

In short, we understand the world of business, and we understand how to secure and defend your business’s intellectual property assets in the most cost-effective way possible. In terms of protecting the health and prosperity of your business over the long term, that’s a very powerful combination of experience and expertise.

What if an intellectual property issue has already arisen?

A competitor infringing on your trade marks, or patents?

Although—naturally—much of the guidance in these pages is in respect of preventing such difficulties from arising, our part-time Legal Directors stand ready to advise on all aspects of any infringement of intellectual property rights.

We can provide expert legal guidance on how to defend your business’s intellectual property from such infringement, and cost-effectively instruct specialist intellectual property litigation lawyers on your behalf.

“In short, we understand the world of business, and we understand how to secure and defend your business’s intellectual property assets in the most cost-effective way possible.”

Every business has intellectual property.

If your business has trade marks, designs,

patents, and copyright materials, then these

may be among its most valuable assets.

But as with any asset, protecting these

intellectual property assets is vital.

Yet a surprising number of businesses fail to do just that, and so leave themselves vulnerable to loss of value.

At The Legal Director, our experienced business lawyers understand how to identify, secure, and defend intellectual property assets—and to do so cost-effectively.

Having one of our part-time Legal Directors on board, working with you on intellectual property protection, not only ensures protection of some of your business’s most valuable assets, but also adds demonstrable financial value to your business.

In summary, the three key areas where we can add the most value are::

1. A thorough audit

We audit and take an inventory of all your intellectual property assets—trade marks, designs, patents, unpatented innovations, and copyright in written materials. For many businesses, it’s the first time that they have this single, business-wide view of their intellectual property assets.

2. Clear and cost-effective advice and action

We provide cost-effective advice on which intellectual property it is worth protecting, recommend how to protect it, and instruct patent attorneys and other intellectual property specialists as appropriate.

3. Robust protection

In the event that it becomes necessary to defend infringements of your intellectual property assets, we provide guidance and strategies for doing this robustly and assertively—again, instructing other intellectual property specialists as appropriate.

Conclusion

Time and again, we at The Legal Director

see businesses make basic mistakes with

intellectual property protection, leaving them

open to serious commercial risks.

Here at The Legal Director, we are experienced in helping businesses like yours to identify their intellectual property assets, assess the extent to which intellectual property protection is necessary—or cost-effective—and advise on intellectual property protection strategies and procedures.

What’s more, should it be necessary to legal assert your intellectual property rights in the event of infringement, we’ll advise on appropriate strategies and remedies.

Why run risks with intellectual property protection, when expert and cost-effective help and guidance is just a phone call away?

Book your free initial advisory call with The Legal Director now.

Call 020 3053 8613 or email ed.simpson@thelegaldirector.co.uk

THE THREE KEY AREAS WHERE WE CAN HELP YOU TO SECURE AND

DEFEND YOUR BUSINESS’S VALUABLE INTELLECTUAL PROPERTY ASSETS

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THE LEGAL DIRECTOR 9-POINT FRAMEWORK

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The Legal Director 107 Cheapside, London EC2V 6DN Tel 020 3053 8613 www.thelegaldirector.co.uk

The Legal Director is a legal consultancy that provides businesses with high-calibre experienced lawyers on a part-time or flexible basis. By working smarter as part of the client’s business, and by delivering legal advice from a business perspective, we can demonstrably save our clients significant amounts of money and directors’ time.*

The Legal Director is the most transparent, cost-effective way of embedding a senior lawyer within your business — at a fraction of the cost of employing a full-time Legal Director or engaging with a traditional law firm on an ad hoc basis.

We match one of our lawyers to your business needs and he/she then performs as a member of your senior management team, just like an in-house lawyer. Moreover, clients can use our unique 9-point legal framework to systematically address key business areas that require legal expertise and appropriate action.

*Please contact us for a personalised illustration of how much we can save you.

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