Discover smart technological solutions to IP issues and hear expert advice on developing a smart strategy for filing, managing and enforcing trademarks in our recent webinar on ‘Smart IP’.
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Effective IP portfolio management does not only require access to the right technology and tools. IP firms and departments also need to consider how they approach their day-to-day IP tasks, as Vanessa Harrow, Managing Director – Trademarks at Novagraaf UK, explains.
Gone are the days (for most of us) where those with the longest hours in the office are considered the most successful. Where presenteeism was once applauded, there is now a greater focus on productivity. The pandemic has focused efforts even further on achieving that elusive work/life balance, with employees searching for more flexible or part-time roles and employers looking for ways to differentiate themselves in a competitive market.
More than 3,300 workers at 70 British companies, ranging from small consultancies to large financial firms, are currently taking part in the world's biggest trial of a shorter workweek, with employees working a four-day week with no loss of pay. At the same time, the cost of living and inflation continues to creep upwards, placing more and more strain on budgets and resources. Both individuals and businesses are under pressure to do more with less.
If you already feel as if you don’t have enough hours in the day, how do you find the time to step back to reassess how you are working and introduce new measures to achieve the efficiencies and cost savings you need? Our recent webinar discussed in general how ‘Smart IP’ can save busy IP departments time and money through the application of technology and tech-enabled processes and solutions. Here, we examine in greater detail how to make that aspiration a reality.
How to work smarter (not harder)
- Get access to the right technology and tools
An important first step is to speak to your IP provider to ensure you have access to and are utilising the most readily available IP management tools. At Novagraaf, for example, clients can use EasyIP, our secure client-facing portal designed to provide instant and real-time access to the portfolio of IP rights we manage on their behalf.
Via a single dashboard, clients can immediately access a global overview of their registered rights, including the trademarks protected and for which goods and services. They can quickly run reports (such as the useful gap analysis report, which identifies any holes in protection), check upcoming maintenance and watching deadlines and even provide instructions to Novagraaf via the portal.
EasyIP is a prime example of how technology can facilitate remote working. It centralises documents and correspondence onto a single platform, provides real-time overviews to inform decision-making, and is available 24/7 across multiple devices.
→ Find out more about our EasyIP platform by contacting our team today.
- Build efficiencies and automation into your ways of working
Of course, Smart IP is about so much more than simply having access to an IP portfolio management tool such as EasyIP; it is also about a way of working. It refers to an approach to IP management that enables you to harness potential for efficiencies and cost savings without compromising your protection and enforcement strategy. What does that mean in practice?
Smart IP can apply to the entire life cycle of IP rights, but to give you some examples from a trademark perspective, it can (and should) involve the following:
- Smart searching
Trademark availability searching is one of the most critical steps of brand/product development and recommended when developing a new brand or extending an existing brand into a new market (geographical or otherwise). While it may be tempting to bypass searches to save budget, this is invariably a false economy. It is a waste of time and money to file a trademark that could ultimately be blocked and carries the more costly risk of litigation or a forced rebrand.
Fortunately, the early stages of searching provide the perfect opportunity to apply Smart IP. It is possible to undertake identical knock-out searches relatively quickly and cheaply with the appropriate use of technology and automation. While such quick searches are not suitable to fully clear a trademark for use and registration, they can play a vital role in narrowing down an initial long-list of names into a more focused shortlist for comprehensive searches.
As automation and technology improves, it may even become possible to undertake a more comprehensive risk analysis in the future. As a company in the Questel group, Novagraaf is perfectly poised to ensure clients not only have access to such services, but also that our clients can continue to benefit from the combination of Questel’s Markify search technology with Novagraaf’s high quality legal and consulting services.
- Smart filing
Once you have chosen your trademark(s), the next step is to secure protection: How can you do this strategically and cost-effectively?
- Use the priority period to protect appropriate brand elements: Depending on your need, this could include all brand assets or only those unlikely to change in the short-to-medium term. The input of an adviser can be invaluable in deciding what to protect – and when.
- Understand the limits of technology: Although some IPOs now offer online tools to help draft specifications of goods and services, achieving the right level of coverage is no easy feat. In general, specification drafting requires a more sophisticated understanding of terminology and nuance than such platforms can currently supply. The support of an IP adviser can help brand owners quickly filter through the noise to obtain the right coverage.
- But, apply technology where it can help: A notable example is the switch to online filing. In some jurisdictions, such as the UK, a discount is applied to official fees for online applications. IP management systems, such as EasyIP, can also generate considerable time savings for clients. For example, by reducing routine administrative tasks as well as paper/email correspondence by enabling clients to tracking case status digitally: updates at each stage of the application are available, with official registration certificates also hosted on the platform.
- Smart maintenance
Save money by streamlining routine tasks. Rather than simply renewing registrations, automation and technology can enable you to quickly review your portfolio to assess whether registrations still provide the right level of cover; whether they need to be renewed; whether they can be consolidated with other rights; or whether ultimately they could be allowed to lapse.
For instance, Novagraaf provides a useful overview of all upcoming renewal deadlines in EasyIP. The portal provides clients with a clear snapshot of the rights due for renewal, the scope of those rights, the deadline for renewal and the anticipated cost of renewal. Attorneys can also add advice regarding the need to renew the registration, and clients can provide instructions via the click of a button within the portal.
One of the best ways to benefit from smart maintenance is for IP owners to consolidate their portfolio management with a single adviser. By entrusting searching, filing, maintenance and enforcement to a single adviser, you can achieve the careful balance between automation and technology and the human judgement that is so critical to Smart IP. Not only will you achieve a single source of data, but your chosen adviser will also be fully aware of all your commercial and legal strategy considerations. Centralising the portfolio also provides significant time and cost savings, as you only have to deal with one point of contact rather than having the portfolio spread over multiple providers.
- Smart enforcement
There are two main elements to smart enforcement: monitoring and enforcement.
There are many tools for watching third-party trademark and domain name applications, as well as brand protection tools for monitoring trademark use in the marketplace. However, relying on fully automated monitoring tools can result in you being inundated with thousands of results to filter through and assess. That is why Novagraaf promotes a hybrid approach with our Smart Monitoring for trademark and domain watching and marketplace monitoring. On behalf of our clients, we take the important first step of filtering the results, so clients only have to see the hits of genuine commercial concern and where their input or instructions are required.
A similar hybrid approach can also be applied when it comes to enforcement. Automatically sending out pre-action or cease and desist letters can backfire, resulting in negative PR repercussions. Such letters are often very aggressive in approach and do not account for the nuances or commercial realities of each specific case. By utilising a hybrid approach, the early stages of enforcement can be automated according to an agreed strategy, allowing for a streamlined action that avoids the traps and risks associated with fully automated enforcement.
More and more businesses are also exploring the use of smart contracts (self-executing digital agreements) to save time and money. Applicable IP contracts include licence agreements, settlement agreements and assignment agreements. Even businesses that do not have enough contracts to warrant the use of smart contracts, can still take steps to automate and streamline contract management. For example, IP advisers can help review agreements to remove unnecessary and cumbersome boilerplate clauses to leave templates which can easily be amended and implemented for most situations. While not fully automated, this can still deliver significant time and cost savings.
Smart IP: The application of technology by design
Smart IP is not simply about smart tech, it is also about smart humans. Until automation and technology advance to the point where they can be used in isolation, the support of smart humans remains key to reaping the benefits of Smart IP management. In other words, smart IP is about managing your portfolio in a way that utilises automation and technology at the right times, but also overcomes their limitations.
The client journey is at the forefront of all our service development at Novagraaf. We are continually looking to find and develop tech-enabled solutions that allow our clients to reap the benefits of Smart IP management by combining automation and technology with high quality legal and consulting services.
If you’re interested in further exploring how Smart IP might help you or your business, get in touch to discuss our bespoke solutions. If you missed it, you can also watch our webinar on Smart IP where we discuss the topic of smart enforcement in greater detail.
Vanessa Harrow is Managing Director – Trademarks at Novagraaf UK.