Intellectual property (“IP”) rights are a valuable commercially assets. However, it is sometimes not taken seriously because of its intangible quality.
The resale or book value to any IP right which is still in enforce will have resale value and can in some cases be used as security against other investments.
However, IP rights can diminish. Listed below are some reasons as to why this may happen:
- Design, trade mark and patent registrations may lapse irretrievably if renewal fees are not paid on time.
- A copyright, unregistered trade mark or design right will become of no value if a third party successfully claims that use of the right involves an infringement of the third party’s own IP right.
- If the owner fails to bring proceedings against others who infringes its rights (i.e. the copying of music and films).
- The subsistence of IP rights can also be challenged for example, in a copyright infringement claim, the defendant may allege that no copyright subsists in a literary work because it is substantially a copy of a pre-existing literary work.
A key factors in determining the value of a company’s IP is how separable it is from the business as a whole. IP that produces a steady flow of income is much more easily valued and separated from the owner’s business as a whole than an IP right which is obviously valuable, but less separable or transferable (such as copyright in a company’s website pages).
Security with Patents
Under s30 of the Patents Act 1977, parties are able to take an equitable charge over a patent and over any licence or sub-licence of a patent. The requirements are that the charge must be in writing and signed by both parties, otherwise it is void. It also needs to be registered at the UK Patent Office within six months of the charged being agreed.
Note: If a charge remains unregistered it will be void against a liquidator or administrator of the company which owns the patent.
Security with registered trade marks
Registered trade marks can be assigned to for example to banks by way of security. A requirement is that the company will need to use the registered trade mark in the course of its business. Once the mark trade has been assigned to the lender it must be accompanied by a licence allowing the original company to use the trade mark going forward.
Note: It is vital that the licence is exclusive, as additional licences could dilute the value of the registered trade mark if they are allowed to use it in the course of trade also.