“Making money from your IP” Sara Ludlam of Ludlams IP Solicitors
Leeds Inventors Group 18th March 2009
Sara began by giving a brief overview of her career, which started when she trained as an IP solicitor in London. She became an IP litigator, working in-house with several large companies. During this time she was involved in licensing such well-known trade marks as Lacoste®, Kickers® and Kangol®. She now runs her own company in Leeds.
Licensing is one of the most common ways of making money from your Intellectual Property – allowing others to produce / sell the product in return for licence fees. Sara pointed out that the first question for anyone in business should be – What Intellectual Property have you got? Until you know what you’ve got, you don’t know what you can sell. The most obvious things initially are the company name and the product name. If you can’t protect these things they can be much more difficult to sell. She passed around a packaged air freshener and asked the audience to think about what types of intellectual property might be relevant to that particular product. Even something as ordinary as this had several types of protection on it.
As well as patents, trade marks, designs and copyright she discussed trade secrets which, like the other types of intellectual property, can be licensed. The formula for Coca Cola is one of the most famous trade secrets. Confidentiality agreements can be useful in all of these situations but it is important to disclose information to as few people as possible.
Patents and registered designs in particular have a limited life span, but other types of Intellectual Property such as trade marks and copyright can be used to increase the value of a product. Gore-Tex® fabric was invented 30 years ago and the patents expired some time ago. However the company insisted that any licensees used the Gore-Tex® trade mark. In doing so goodwill was being built up around the Gore-Tex® brand. It became very familiar and the trade mark built up its value. Trade marks can last indefinitely so it can be a powerful tool to help build your reputation. It is therefore important not to focus on just one aspect of intellectual property.
When licensing your intellectual property it is important to think about the details of the licence. The IP owner can determine such things as the term of the licence, the territories (countries) of use, the field of use (such as the internet) and whether or not the licence is exclusive. Sometimes the IP owner will stipulate a certain number of sales before a licence is extended or renewed. There should always be an option to get out of an agreement if such stipulations are not met, and quality control should be built in can you see samples regularly? Can you inspect the licensee’s factory? Agreement should be reached on who should take action if the IP is infringed – the owner or the licensee? Who, if anyone, is to pay infringement insurance?
It’s always a good idea to keep records of when you were developing your ideas. Potentially it could act as evidence should any disagreements end in court.
The more thought that can be put into how you intend to get the product to market and how you might want to licence it the better.
http://www.ludlams.co.uk/ tel: 0113 2307476