TIPS FOR SME’S AND CREATIVES WHO WANT TO PROTECT THEIR INTELLECTUAL PROPERTY ASSETS

On the occasion of World Intellectual Property Day, we started a conversation on the topic of intellectual property rights with Anna Maria Stein, a lawyer with international experiences who follows up the European Community’s calls for proposals to support SMEs in the field of intellectual property, innovation and digitalisation at the law firm Avvocati Associati Franzosi, Dal Negro, Setti. In the first part of our talk, we focused on her experiences with the WORTH Project and the partnerships of its first call, highlighting some interesting case histories. Today, we would like to focus on some tips for SMEs and creative people, which may help them approach the topic of intellectual property rights, or to deepen it further.

Anna Maria, can you tell us what is the situation in Italy, and in Europe, regarding intellectual property?

Unfortunately, especially as far as SMEs are concerned, there is not much in-depth knowledge on the subject. However, we can say that recently, there has been a very positive evolution in this sense, thanks to the efforts of trade associations and chambers of commerce to raise awareness among SMEs about the value of IP assets. Thanks to this effort, we have seen a growth in the use of these important tools by SMEs and small creative industries.

What is the main obstacle for SMEs to decide to protect their IP assets?

Intellectual property rights are key assets that can generate income through marketing and licensing and add value to an SME. Unfortunately, one of the main obstacles that small companies face in this area is the financial costs that come with it. Above all, patenting costs are a deterrent for entrepreneurs, especially in these times when the pandemic crisis has led to cost cutting in general and IP protection costs even more so. In fact, companies that find themselves in difficulty tend to use capital to continue operating, giving up critical assets such as patents. I think it is necessary to find a way to economically incentivise SMEs so that they do not stop patenting. Intellectual property, in fact, is not and cannot be only for large companies; the ability for SMEs to innovate and find advanced and innovative technological and production solutions is valuable and for this reason it should be protected.

What should an entrepreneur do when deciding which assets to protect?

My advice, first of all, is to seek the advice of an expert in the field who can help identify which invention, technology or product to invest capital in for patenting, or for example, whether to use Trade Secrets protection. The entrepreneur, on his side, must make some fundamental assessments: the first of which concerns his brand (trademark), it is necessary to make a careful and thorough evaluation of the sign that will be used for the next few years, what will be the logo on the products and so on. Once the brand has been defined, it is time for the business plan: the entrepreneur, in this case, will have to define what the focus of his company will be from now and 5 years into the future. For example, if he wants to focus on a given product or material and what he plans to work on, going into detail on what can be protected and how. The last step will be to make an economic assessment in the light of the findings. This first step, called IP due diligence, will help understand whether it is worth investing in the registration of a particular patent, or whether it is necessary to shift the focus to another IP asset. /span>

How important are confidentiality and corporate culture in the asset protection process?

Both are extremely important. If IP is not kept confidential, there is a risk that others will learn about a particular innovation and this can be dangerous, as some forms of IP cannot be obtained if the idea, design or product has been made public before registration has been applied for or appropriate protection measures have been put in place. For this reason, it may be necessary to ask third parties involved, e.g. in research and development, to sign non-disclosure agreements early in the process. When engaging with entities outside the company, it is necessary to be clear that the intellectual property will remain with the company, ensuring that any contract reflects this.

It is also very important that there is a corporate culture on this issue; employees and collaborators must – for example – be made aware of the importance of intellectual property assets. In fact, it may happen that data relating to a given project, product or material may be disclosed to third parties, which would invalidate the possibility of obtaining a patent or, in any case, information that could be used by a competitor (perhaps a larger one with more economic powers) to develop the same product in advance. For this reason, it is very important for companies to have trainings for employees and collaborators dedicated to this issue.

Which advice would you give to a creative company or SME looking to the future?

The first advice is to think about international protection of IP rights, balancing the costs of broader international protection with the likely risks/benefits of operating in the countries where a company produces, buys or sells its products. The second piece of advice I want to give is to consider licensing your intellectual property. This is a low-risk way of exploiting its value, but it offers SMEs new opportunities to conduct and develop business at home or abroad. Further advice is to use IP rights correctly and remain vigilant by regularly researching IP rights, so as to avoid unknowingly infringing someone else’s IP or identifying possible infringements affecting our company’s IP rights. Staying up-to-date and educating yourself on this topic allows you to grow and gain autonomy that will be very useful in the future.