The Gatherer | Volume 2

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26|The Gatherer
I ntangible assets, which
include intellectual property
as a primary component,
comprise anywhere
from 50%-85% of your
organisation’s capital value.
The following questions
for management will assist
directors to show compliance
with directors’ duties and help
ensure sound IP governance
practices are in place.
As with physical assets, such as land,
plant and equipment, management
should be delegated the operational
responsibility for managing
intellectual property (“IP”) and
reporting to the Board, but it is up
to directors to ensure the proper
governance is in place to manage
such assets. The following questions
will assist directors in that process.
Question 1: Has an IP
audit been done to locate,
identify and understand the
company’s main IP assets?
In order to properly manage
IP assets, they first need to be
identified and prioritised in order of
strategic importance and value. It
is not sufficient to only know that
the company has say 5 patent
families and 2 trade mark families.
Understanding details around
status, scope and strength, and also
current and planned use of any such
protected IP assets should be key
outcomes of a sound IP audit.
Other key know-how and trade
secret based IP assets should also
be sought to be identified and
where necessary suitably captured
as part of any IP audit process.
Question 2: Is an updated IP
plan and procedure in place
and being followed?
A formal IP plan is one of the most
effective tools directors can have
to ensure that management takes
IP seriously and recognises the
value and opportunities that can
be realised from IP assets. The plan
should be considered and approved
by the Board and should include:
• Company IP policy and
procedure manual;
• IP business plan or strategy
document; and
• A list of senior management
responsible for implementing
the IP strategy, together with
clear KPI’s.
Question 3: Has an IP
revenue assessment
been performed and
implemented?
IP assets can be leveraged to
increase return on investment in the
same way as physical assets.
Companies with best practice IP
governance processes in place
schedule regular reviews to
identify latent or under-leveraged
IP to deploy for further revenue or
benefits for the company.
For example, in 1990 CSL limited
owned no patented intellectual
property. A decade later it owned
174 patents and its portfolio
continued to grow. The growth
of CSL’s patent portfolio was
accompanied by a growth in its
market valuation and sales.
Question 4: How does the
company compare with
its peers in ownership
of registered intellectual
property rights?
In most industries, there are
accepted benchmarks for the levels
of IP (including patents and trade
marks) a company should hold in its
IP portfolio.
Where management cannot
demonstrate any patents or trade
marks covering key products and
services, this is an indication the
portfolio needs to be benchmarked.
A starting point for any such
benchmarking is an assessment of the
relevant “IP Landscape” as it pertains
to your company’s business activities.
Question 5: Is the company
exposed to infringement
actions from competing
intellectual property rights?
As the company invests in
developing new products and
services it needs to have processes
in place to ensure it does not
infringe the intellectual property
rights of others. For example, prior
IP GOVERNANCE UNPLUGGED.
10 QUESTIONS TO ASK MANAGEMENT TO ENSURE IP
GOVERNANCE IS IN PLACE. to entering into a clinical trial for
a new drug, a company should
undertake a freedom to operate
search and/or an infringement
analysis to prevent the new drug
from being blocked by patents.
The R&D department should be able
to demonstrate an understanding
of competing rights of competitors
to minimise litigation risks when
new products are released. The
aforementioned IP Landscape
review can also provide valuable
insight into 3rd party IP rights
that may be ‘in play’ in respect of
planned commercial activities.
Worst-case scenarios for
mismanagement include intellectual
property infringement litigation and
class actions for mismanagement of
IP assets.
Question 6: Are there any
current corporate issues
that expose directors
to regulatory sanction,
shareholder actions or class
actions?
Class actions have already occurred
in the US which contain allegations
against directors relating to IP
mismanagement. They include
failure to disclose adverse facts
regarding patent enforcement
efforts, failure to disclose inadvertent
lapse of key patent maintenance
fees, false claims regarding licensing
agreements, false claims regarding
exclusivity of company licences,
promotion of known invalid patents,
false press releases regarding
licences to use famous brands and
wasting corporate resources in
patent litigation without merit.
An Australian example is Chemeq
Limited. In 2006, Chemeq was fined
$500,000 by the Federal Court of
Australia for breaches of continuous
disclosure provisions in part relating
to an announcement about a patent
grant, which was later found to
be false. The presiding judge was
Justice French, now the Chief
Judge of the High Court of Australia.
This was then the highest penalty
awarded in Australia for breaches of
continuous disclosure rules.
Question 7: Is there an
IP review built into joint
venture engagements or
other third party project
involvement?
When the company works with
other companies to develop IP,
management should have processes
in place to clearly address the
capture and management of any
IP that is developed, and most
importantly, ownership of jointly
developed IP and legal agreements
that clearly deal with those issues.
In the absence of any terms to the
contrary, it should be considered
that IP ownership around new IP
developed as part of joint program
of work typically resides with the
creator. Such an outcome may result
in significant problems for companies
who may rely on some of all of the
‘project developed IP’ for subsequent
projects with other customers.
Question 8: Is IP due
diligence built into
corporate transactions?
Often senior executives get caught
up in “getting the deal done”. It
is up to directors to ensure that
both the physical and non-physical
(IP) assets underlying the deal
are captured and properly valued,
from a qualitative and quantitative
perspective.
The strategic drivers behind an
acquisition should be supported
by properly managed IP within the
target company.
Question 9: Is the senior
executive responsible
for IP management
sufficiently integrated into
the company’s strategic
planning and sufficiently
resourced?
If the company is going to fully exploit
its IP return on investment, and
align IP strategy with the broader
business strategy of the company,
the Board needs to ensure the
executive responsible for managing
IP is sufficiently senior and has the
resources to get the job done.
IP protection and management
activities should underpin broader
commercial objectives and so IP
managers need to be abreast of
ongoing developments and future
plans, and vice versa.
Question 10: Does the
Board require IP awareness
training or should it seek to
appoint a director with IP
experience?
Given that IP is the most valuable
asset class of many of today’s
company, it is imperative that
directors have a basic understanding
of IP issues in order to comply
with their duties. For companies
with high dependencies on their
IP assets, directors should consider
appointing to the Board a colleague
with commercial IP experience.