Anticipate your 2022 annual intellectual property budget
Acquiring, maintaining and defending trademark, design and patent rights is inconceivable over the long term without perfect cost control. It is in this perspective that it is recommended, during the elaboration of the annual budget of an economic actor, to establish each year a statement of the intellectual property rights. This statement should at least include the following points:
- Acquisition of rights
It is strongly advised each year to match the requests for industrial property rights with the business strategy.
Indeed, it is not exceptional to see economic actors filing superfluous applications for titles, such as names or logos registered as trademarks for numerous goods and services, without any long-term commercialization of the latter, or covering countries in which the products will ultimately never be manufactured or commercialized.
The balance between industrial property rights and business strategy must be finely assessed, because one also needs to be cautious to avoid registrations that are too limited, geographically, technically and/or sectorally, leading to insufficient protection.
More generally, it is important to ensure a good synergy between trademark, patent, design and copyright protection for the same products.
Attention is also drawn to the examination procedures (notifications from the offices, etc.) as well as to pending opposition proceedings, the analysis of which makes it possible to estimate costs for the future annual budget.
- Use of trademarks and risk of loss of rights
It is essential to examine each year the delicate question of whether or not trademarks are being used and may become vulnerable to a non-use cancellation action, in order to better assess the risks of loss of rights.
In addition and on this occasion, all the operations that have recently affected the ownership or the term of use of the trademarks (i.e., change of legal form, address, company name, assignment, license, pledge…) will be identified and the cost of the required recodals with national, European or foreign registries will be included in the forecast budget.
- Maintenance of rights
For patents, it is important to consider annually whether or not to maintain titles that are insufficiently used, never used or whose technology has become obsolete. The question of whether or not to pay patent annuities must be asked, in particular for the oldest patents, since annuities become more expensive with time.
For trademarks, designs and domain names, this point will be examined before their date of renewal. In addition, consideration will be given as to whether the list of goods and services claimed must be limited or not, and whether to maintain or not all originally designated countries in view of the actual use of the trademarks in said countries.
- Defense of rights
Finally, trademark surveillance, a fundamental tool to identify new applications that may infringe the owner’s rights, must be budgeted and, if necessary, reconfigured according to new data on the protection and marketing of goods and services.
At the same time, the costs of ongoing administrative and/or court actions intended to fight the infringement of intellectual property rights will be estimated.
In addition to the points already mentioned, the annual review must also be the occasion to draw up a “checklist” of all the actions to be implemented for the coming fiscal year, according to a schedule determined according to priorities and to extend, if necessary, this approach to all intellectual property rights (know-how, trade secrets, copyright, etc.).
BUGNION SA’s intellectual property attorneys will advise and assist you in this proactive annual review.