Issues to Be Taken into Account when Drafting an IPR Strategy

Firstly, the starting point of the planning should be established, including the intellectual property rights owned by the company, management of and management responsibility for such rights, and the current level of protection. Secondly, it should be established whether the company uses intellectual property rights owned by others, and whether, for example, license and other fees applicable to such rights have been paid. In addition, potential risks and other commitments regarding intellectual property rights should be clarified.

When drafting an IPR Strategy, the following issues should be taken into account:

1. scope of the company’s business operations;

2. the company’s geographical area of operation (for example, whether business operations are carried out in other countries in addition to Finland);

3. organization of product development;

4. selection of cooperation partners (for example, in technology projects);

5. updating of the IPR Strategy;

6. exploitation of intellectual property rights (licensing, sales);

7. exploitation of the results of joint technology projects (considering, for instance, potential disputes in joint projects with companies and educational institutions, for example in relation to publication and financial exploitation of result);

8. drafting of guidelines for the staff in order to implement strategic choices relating to immaterial property rights as part of the business;

9. staff training;

10. acquisition of background rights (see below);

11. management of intellectual property rights (for example, registration of industrial rights, maintenance of rights and monitoring of infringements);

12. the rights of employees to inventions and results of product development (for example, voluntary compensation to employees).

It is important to update the strategy on a regular basis, in order for the intellectual property rights to effectively support the business operations. Feedback should also be obtained also from the persons managing issues relating to intellectual property rights in practice.

Background rights mean inventions protected by intellectual property rights, which are used as a basis of, for example, a new invention. The companies should realize that they may use protected materials. Therefore, the IPR Strategy should also outline how such background rights are obtained (for example, through license agreements). During joint projects, the background rights may be also granted free of charge to the cooperation partner.