I hope many of you had the opportunity to listen in on Sandra Dawes’ great sessions on planning for 2018 and are spending the time to set out and act on the plan you are developing using her fabulous workbook. I know I am and in the process of doing so checked out the resources that the Canadian Intellectual Property Office (CIPO) provides for businesses to get a handle on the intellectual property (IP) they have and what they can do to formalize and leverage their IP rights.
So, to help you with your planning, you can add an IP audit of your business assets into the mix. Starting with the easy to read and use resources in the CIPO’s IP Toolbox (https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr04320.html) you can get a good initial grounding in IP and how to factor it into your business plans.
Take for example, the “IP Inventory Checklist” which lists a variety of types of business assets that you could have operating at the core of and for the benefit of your business (e.g. branding elements, customer lists, software applications) and the kind of IP rights to consider in relation to those assets. You can also refer to https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04055.html for additional insights on the types of business assets that are commonly part of many enterprises and which can give rise to IP rights.
Once you have what you feel is a reasonably complete inventory, you can then check out the “Intellectual property in Canada” fact sheet which provides an indication of the nature of the IP rights that may apply to the business assets you identified in your inventory. To fully leverage the IP rights you have you can refer to the guide entitled, “Intellectual Property – It’s yours. Own it.” to learn more about how the process of creating business assets leads to IP creation and the steps you can take to identify and formalize your IP (e.g. register copyrights and trademarks). There are also individual, more detailed fact sheets to explain what the different forms of IP are and how they can be leveraged, namely for copyrights, industrial designs, patents, trade secrets and trademarks.
Finally, moving from the IP Basics tab on the CIPO’s IP Toolbox page you can access other tabs with information relating to IP when you export goods and services and other information resources.
If you are thinking, how you can identify all of the business assets to include in your inventory beyond what is exemplified in the IP Inventory Checklist, start by simply listing any products and/or services you have developed and sell, and the tools you use to help you sell and market what you sell. Copyrights, industrial design rights, trademarks and patent rights will be relevant to what you give the public access too (e.g. your products and services), while trade secret rights will apply to those assets (e.g. confidential information) that the public does not have access to, but that you leverage internally to support your business and gain a competitive advantage (e.g. to make your business more efficient, or develop new business lines and opportunities).
While conducting your audit consider setting up a spreadsheet to create your inventory and add in information to document details about what you have and the steps you take to formalize your IP and leverage it in B2B and B2C contexts. For example, include in your inventory when the business asset was created, by whom, under what written contract (if any) and whether you have a written assignment (transfer of ownership) from the creators of the assets and related IP rights to your business. Then include a column with information about steps you have taken or would like to take to formalize the IP rights in your assets.
If some of the business assets you have were licensed in, or obtained from third parties (e.g. stock images, products you sell), include the contracts in your inventory which give your enterprise the permissions to use, apply, distribute, lease, or sell those assets and identify the provisions in those agreements which specifically refer to the permissions you have to leverage third party IP rights and what you have to do in exchange to maintain those permissions. These contracts also represent a form of IP rights, which together with what you have invested in to create form the foundation of your business.
Obviously, the intention behind doing an IP audit and creating your inventory of assets is to use it, update it from time to time and determine how you want to invest in IP for your business. Once created, it is itself a business asset that should be maintained as a trade secret. You can use your inventory to make decisions by correlating the performance of your business to the assets and associated IP rights. If you choose to consult with an IP professional on the many ways you can make use your inventory, consider: i) consulting on what other information to include in your inventory, ii) how to map out budgets to formalize key IP, iii) identify DIY steps you can take to protect and leverage your IP, and iv) milestones to be aware of so that you can be confident that you always have a full picture of all of the IP options and value available to support your business.
Kyma Professional Corporation