IP Management

IP Management Malaysia

What is IP Management?

Intellectual property exists in every company. Companies have their unique selling point, offer services or goods that are different from that of their competitors, or have internal systems or processes that are not common and customer lists that are confidential to them. All of these are related to Intellectual Property Rights (IPRs), rights that have been created by the company and rights that are proprietary to them.

Unfortunately, many companies are either unaware of their rights or are not fully maximising the potential in their rights. At KASS, we assist companies in identifying their intellectual property assets, determining ownership of the assets, protecting the assets, managing the assets, ensuring that the assets are exploited by the company itself or through licensing agreements, and regularly assessing the need to continue with the maintenance of the asset. This whole process is referred to as IP Management.

What are the steps involved in IP Management?

1. Conducting an IP Audit

  • We assist companies in identifying their existing IP rights.

  • We advise on the need for new IP rights.

  • We advise on the ownership of the assets; if acquired through third parties, whether it has been transferred to the company through proper assignment agreements.

2. Advising on the Protection of the IP rights

  • Once identified, we advise on the manner of protecting the IP rights (types of rights applicable, laws and legal provisions available in a particular country, limitations, etc.).

  • If registrable (e.g., patents, utility innovations, trademarks, industrial designs, new plant variety), we advise on the procedure, risk of objections, chances of securing registration and so on.

  • Where registration or certification can be obtained but it is only voluntary (e.g., copyright notification and geographical indication), we advise on the benefits of the voluntary notification or registration.

  • Where the IP rights should be kept as a trade secret or as confidential information, we advise on the manners of keeping them as such.

  • We advise on local and foreign protection strategies in respect of the company’s business needs, purpose and markets.

3. Advising on the Use of the IP to Generate Income

  • Once identified, and where possible, the IP rights are protected. We then advise on the manners in which the IP rights can be exploited by the company.

  • The IP rights can be used in products offered for sale to customers. In these situations, licensing of the IP rights would not be considered as the IP rights give exclusivity to the company and thus, the company can charge premium pricing.

  • The IP rights can also function as a bargaining tool in negotiations with competitors or players in an associated industry. We advise on the possibility of cross-licensing the IP rights with another asset that is important to the company to increase competitiveness.

  • By utilizing IP rights of others (through licensing), the company can focus on its core competencies and improve its products or services.

  • Other income generating strategies (franchising, assignment by territory, etc.) will also be considered with the company depending on the industry it is in.

4. Conducting IP Valuation and Evaluating the Future of the IP Asset

  • Although it is difficult to value IP rights (as they are intangible assets), they can be valued according to methods that have been established over the years. At KASS, we advise on the method of valuation and embark on the valuation exercise as necessary.

  • In general, IP rights have a lifetime and thus need to be evaluated from time to time to (i) assess whether they should be allowed to lapse or kept in maintenance, and (ii) assess whether they satisfy the business needs of the company. Often, IP rights need to be revisited to strengthen the assets (e.g., protect improvements to existing patents, protect trademarks in new business areas, etc.) as businesses evolve over time.

IP Management is an art by itself. Without appropriate management, a company will be handling its IP rights in an ad-hoc and piece-meal manner. That does not give the company the maximum benefit and worse still, exposes the company to unnecessary risks!

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