Legisway-GCs manage IPs
Legal13 March, 2017

How GCs can better manage intellectual property registrations

Are your intellectual property registrations at risk?

Intellectual property – whether it is physical or digital – is likely one of your company’s most important assets. Intellectual property (IP), like inventions, words, symbols or artistic work, are often the main sources of revenue for your business. And as such, they need to be protected.

Registering IP rights including patents, copyright, and trademarks is the first step towards protecting your company from illegal use, counterfeiting and piracy risks. However, companies also need to proactively manage intellectual property registrations to avoid missing renewal deadlines.

Here are some tips for GCs to manage intellectual property registrations:

Maintaining your IP registration

Once you have registered your IP it’s your responsibility to protect it by ensuring it remains valid

While many registration bodies send renewal reminder letters, it is important to keep track of renewal dates internally. Missing a deadline can have serious negative consequences for your business, as well as other parties like licensees. You simply don’t want to leave renewals up to chance.

The validity length of your registration will depend on the registration body and type of IP. For example, an EU trademark registrations last for 10 years, while a Community design registration lasts for only five years. It is also your responsibility to respect the time limits for renewals. Many have some form of grace period but late renewals can be subject to additional fees so it is best to avoid any delays.

Finally, if a registration is cancelled due to a failure to renew, there is no guarantee that it can be re-registered. Not only might re-registering cost more than a simple renewal, during re-application conflicts may be identified and authorities may grant you less protection than previously held.

Staying on top of your IP registrations

If you are managing various IP registrations, staying in control of all the details can be challenging. This is especially true if your IP registrations are spread across different entities. However, as General Counsel, your CEO and CFO likely expect you to report on the status of all intellectual property at the drop of a hat.

To report on IP management, you need to track renewal dates in addition to other relevant information. These details might include the type of IP, registering authority, the law firm involved, filling date, effective date and registration number.

Here are some key reports that can help in-house lawyers stay onto of their IP management:

Active registrations

A report of active IP registrations with relevant details, like registering authority, etc. A report of active registrations can be useful for reporting on the value of your company’s assets, like during due diligence proceedings. If your company is global, you may also want to filter active registrations by location – even displaying them on a map for easy reference.

Registrations expiring

A report on active registrations that are about to expire can help you get ahead of renewal deadlines.

Inactive registrations

A report of inactive registrations can be provided to anyone who is looking for a historical overview of past IP registrations.

Draft registrations

A report of IP registration in draft, or not yet granted, can help you stay informed of registration status and the overall IP lifecycle.

Final thoughts

With proactive management of your IP registrations, you can stay on top of renewals and never miss a deadline again.

However, if your IP related data is hidden in a spreadsheet you may still risk missing an important renewal deadline. To avoid this, use a cloud-based repository that consolidates all of your IP registrations in one central location and allows you to set up alerts and status reports for your colleagues.

Learn more about the importance of reporting for General Counsel in our free eBook.