INTELLECTUAL PROPERTY MANAGEMENT AND CONSULTING Use continous innovation to create radically successful businesses. Your ultimate assurance for sustainable growth in business value.
www.fusecap.co.ke
We have networks to offer IP services in 17 Francophone member states of Organisation of African Intellectual Property (OAPI)
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useCap Consulting is a premier consulting firm registered in Kenya as an Intellectual Property (IP) technical support service provider in the African region. FuseCap Consulting is licensed to practice IP as a patent agent in Kenya and with support of a network of IP professionals operating in the region. We have networks to offer IP services in 17 Francophone member states of Organisation of African Intellectual Property (OAPI) among other regional Intellectual Property Offices (IPOs) such as African Region Industrial Property Organisation (ARIPO). We combine the technical, commercial and legal skills to offer comprehensive intellectual property service. As a result, we are able to provide seamless advice for the creation, commercialisation, management, protection and enforcement of our clients’ intellectual property rights, a fact that sets us apart in the market. FuseCap Consulting draws as needed from multidisciplinary pool of intellectual asset and Technology experts, Business visionaries, academics and legal counsel to address comprehensively the needs of our clients on each assignment.
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TABLE OF CONTENT
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IP Protection
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IP Renewal
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IP Enforcement
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IP Search
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IP Strategy
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IP Commercialisation
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IP Protection Traditional thinking has been that protecting intellectual property creates a defence against competitors. However, developing an intellectual property portfolio on strong foundations of protection can also serve as a competitive strategy to win market share. FuseCap Consulting offers services for protecting intellectual property of all types: patents; plant variety rights; trademarks; copyright; designs; confidential information; trade secrets; and domain names. These services include:
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Advising on legal rights and remedies for obtaining IP protection under Kenya law and in other countries around the world. Carrying out searches in Kenya and in more than 60 countries, to determine novelty, the availability for use and whether or not conflicting designs, patents or trademarks have already been registered. Advising on validity and whether an invention, design or trade mark can be registered. Managing applications for patents, designs, trademarks, and plant variety rights, including full documentation. Developing and implementing filing strategies. Prosecuting applications through to grant. Advising on domain name portfolios including suitability of names already registered, negotiating purchase of domain names from third parties, recovery of infringing domain names, as well as managing registrations and renewals. Monitoring services.
Advising on legal rights and remedies for obtaining IP protection
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IP Renewal FuseCap Consulting recommends a leading independent annuity service provider, Computer Patent Annuities Global Limited (CPA), which manages patent, trade mark and design renewals. FuseCap Consulting has entered into service agreements with CPA and, when it refers clients’ cases to CPA, will financially benefit from the renewal of those cases by CPA. CPA is a limited liability company based in Jersey which specialises in the processing of intellectual property renewals on a global basis. As an indication of the magnitude of the operation, more than 900,000 renewal applications are processed by CPA each year, with two million cases under its management.
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IP Enforcement Advising clients on appropriate measures for safeguarding their intellectual property rights, guiding them through processes to ensure their rights are enforced and respected, or defending them against allegations of infringement. These are complex tasks, requiring a depth of expertise and skill in dispute resolution and litigation. To develop and maintain an intellectual property portfolio after obtaining protection, owners of intellectual property rights need to ensure that; ++ ++
Others do not infringe their rights, and Their business activities are not adversely affected by the rights of others.
FuseCap Consulting dispute resolution and litigation capability is drawn on extensive experience with devising optimum tactical solutions in a cost-effective manner for Kenya and international clients. We employ the following methods to ensure intellectual property rights are respected, observed and enforced with the aim of enabling clients to build their portfolios:
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Monitoring services Oppositions Border Protection Court Proceedings Alternative dispute resolution - negotiation, mediation, arbitration Revocations and removals.
IP Search FuseCap Consulting is one of the leading IP firms in Kenya with an inhouse dedicated search team. The expertise of our searchers has been developed over many years and is unparalleled in Kenya. Our team provides searches of the patent, trade mark and design registers and conducts in depth market survey. Searching services enable clients to stay informed of market activity, industry
developments and applications for rights which may be potentially competitive or trespassing. They are the crucial first step in any measure taken to enforce intellectual property rights. IP monitoring service will also enhance existing brand protection and can be used to stay abreast of competitors’ movements by monitoring trade mark applications and the use of brands in the market place.
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Advising clients on appropriate measures for safeguarding their intellectual property rights 7
IP Strategy The real value of intellectual property is exploited when existing and potential future rights contribute to the goals of a business. For this reason, it is important to regularly review how intellectual property rights fit in to the bigger picture, to re-assess their value to the business, to adjust tactics according to new directions and strategies and to mitigate risks arising from changes in the business context. The process of strategizing and developing intellectual property portfolios is equally driven by the fact that businesses are subject to continually changing environments and what works today could work differently (or not) in times to come. Overall, intellectual property strategies take into account the commercial goals of a business, its competitive environment and the technology (if any) behind the intellectual property. Reasons for developing sound IP strategies are particularly strong when a business is: ++ ++ ++
Sourcing for funding. Expanding into new markets. Getting ready for sale, merger or acquisition.
IP Audit An audit is a key mechanism for establishing the scope of an intellectual property portfolio. The portfolio can either belong to a client or to a third party into which due diligence is being conducted. The key steps to an audit are: Identification: identifies, describes and defines the intellectual property which is already registered or could potentially be registered such as inventions, trademarks, designs, plant variety rights and the like. It also identifies other rights such as copyright, trade secrets and staff know-how. Ownership: establishes who owns the intellectual property.
Methods used in developing IP strategies include the intellectual property audit, due diligence and portfolio development.
Legal Protection: develops a plan for unregistered intellectual property outlin-
Building an intellectual property portfolio creates a potential for increasing the space a business occupies in its market 8
IP Due Diligence ing optimal methods of protection and the types of applications to be sought in order to achieve and maintain a competitive advantage for the business. An analysis will usually provide indications on how to protect trade secrets and in-house knowhow.
Due diligence is generally required and conducted prior to the transfer of intellectual property rights or assets through commercial transactions such as mergers or acquisitions or where investment is being made into the business. Due diligence is an investigative exercise to check for the existence and quality of assets which are the subject of the commercial transaction. Those contemplating the commercial transaction are seeking a good understanding of the intellectual property assets underpinning the commercial transaction.
Liability Assessment: looks at liabilities or risks associated with the intellectual property identified such as:
The due diligence process generally follows the steps of an intellectual property audit. Venture capitalists often undertake extensive due diligence exercises prior to committing investment. Such exercises should be endorsed as any due diligence exercise required upon the exit of the venture capitalist is likely to be even more rigorous. Anything that would not pass the exit due diligence should be detected before the venture capitalist invests.
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What, if any, ownership risks and liabilities exist? What are the documentation/ record keeping standards? What risks are associated with trade secrets/know how? Key personnel liabilities? Potential or existing litigation/opposition issues. Are there any obligations or encumbrances on the intellectual property?
Valuation of Intellectual Property: though audits do not involve putting a monetary figure on a piece of intellectual property, the relative value of intellectual property assets can be estimated by assessing whether each piece of intellectual property is revolutionary in its field or whether it is a link in the chain to achieving an end result. Another issue to consider is the freedom to operate in terms of competitors’ positions. This valuation stage may also lead to rationalisation of the portfolio in cases where resources are expended on intellectual property assets that are no longer aligned with the current and/or future commercial direction of a business. Recording: Audit findings should be recorded and stored. They should serve as; references and analyses for subsequent regular audits, as background information for due diligence exercises as well as guide portfolio development and eventual commercialisation activities.
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Other aspects to due diligence other than those covered in an intellectual property audit may extend to considering potential regulatory issues, product liability issues, assessment of in-house procedures and staff training, trade practices and consumer sales advice as well as a review of the funding conditions. In many instances these aspects vary according to the nature of the business (start-up, spin-off, research institute, established company) and maturity of the technology.
IP Portfolio Development Building an intellectual property portfolio creates a potential for increasing the space a business occupies in its market. While a patent, trademark or design application is a necessary step toward securing exclusive rights to an invention or brand, this alone may not provide sufficient returns or carry significant commercial weight. As the strength of a portfolio increases so should commercial leverage of the business. In order to develop an IP portfolio, a portfolio needs to be managed and regularly reviewed against business objectives. We work with clients to define and establish the mechanisms for portfolio development. As part of this process, we assess various factors to determine how IP portfolio enhancement can be achieved such as: ++
Will a development enhance or add to the overall commercial objectives of the business? ++ Are the benefits of the development likely to outweigh the cost of securing intellectual property protection? ++ Will filing for intellectual property protection create barriers for entry to the market or make it more difficult for competitors to operate? ++ Will filing for intellectual property protection enhance the likelihood of securing collaborations, further funding or provide commercial leverage, for example by providing licensing opportunities? ++ Will subsequent intellectual property assets provide back-up should a part of the existing intellectual property be challenged by a third party? For instance, we can consider a patent which provides exclusive rights in relation to an invention. After filing an initial application further improvements or developments surrounding the invention might be produced which may need additional protection to retain their value. In addition, design, trademarks, copyright works or domain names developed in conjunction with or resulting from the initial invention could also add value to the portfolio, particularly if protected and exploited.
IP Commercialisation Once intellectual property is protected and developed it is ready for commercialisation and in turn create revenue. As intellectual property is not a physical product, it is easy to lose control over what happens to it and therefore the commercialisation process needs to be carefully managed. Written agreements for different situations should be entered into wherever possible. For instance, the following should always be documented in writing: ++ ++
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Transfers of intellectual property rights from one party to another. The limits on licences granted to other parties to use intellectual property rights. Coexistence arrangements relating to intellectual property. The settlement of disputes involving intellectual property.
Unlike physical property, intellectual property requires specialist skills in preparing agreements. FuseCap Consulting has extensive experience in: ++ ++ ++
Advising clients how to commercialise their intellectual property. Negotiating agreements relating to intellectual property. Preparing and reviewing intellectual property agreements.
FuseCap Consulting can assist in preparing a broad range of agreements related to the commercialisation of intellectual property rights including: ++ ++ ++ ++ ++ ++ ++ ++ ++ ++ ++ ++ ++ ++ ++ ++ ++ ++ ++ ++
Memoranda of understanding, Letters of intent Licences Assignments Non-disclosure agreements Research and development agreements Technology transfer agreements Product development agreements Franchise agreements Sponsorship and promotional agreements Distribution and merchandising agreements Manufacturing agreements Commissioning agreements Joint venture agreements Software agreements and licences Hardware agreements Out-sourcing agreements Website development hosting and indexing agreements E-commerce and internet related agreements Shareholders agreements
IP Licensing Licences are one of the most common forms of intellectual property related agreements. They grant a party the right to use all or a part of intellectual property that it does not own. Licenses can increase revenue by generating income from markets that the IP owner cannot or does not want to access.
Franchising The core of a franchise arrangement is a license of intellectual property. Franchise agreements are necessarily complex due to the need to protect the interests of the franchisor, the franchisee and the other franchisees.
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Once intellectual property is protected and developed, it is ready to be commercialised 11
FuseCap Consulting Group Ltd 9th Floor, Transnational Plaza, Wing B, City Hall Way, Nairobi P.O. Box 7096 - 00200 T: +254 733 494 139 | +254 722 781 554 consulting@fusecap.co.ke www. fusecap.co.ke
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