Myriam Davidson

What is your proudest professional achievement to date, and why?

Although I have applied our holistic IP strategy service to many of my clients and I have a sense of pride when they achieve their business objectives, my proudest professional achievement is building up such an amazing team of IP strategists at Stratford Intellectual Property. Seeing the impact that they have on the prosperity and success of our clients is incredibly gratifying.

Your VIP service is all about creating peace of mind when it comes to IP strategy. Can you tell us more?

Our VIP service is a holistic IP strategy design and implementation service that pragmatically and proactively integrates the management of an IP portfolio with other IP-related business processes to maximise value and minimise risk. For IP strategy to aid business strategy, this could mean looking at fostering an IP-aware culture, incorporating IP processes into innovation, considering the best forms of IP protection for each innovation and ensuring follow through, aligning budget and resources to market-relevant product lines and jurisdictions, and optimising IP operations.

Trade secrets can be a key part of clients’ innovations but incorporating them into an IP strategy presents various challenges. What can IP professionals do to overcome these?

Most clients are aware that trade secrets are important, but struggle to develop an overview of these assets and to manage them intentionally in a holistic manner. To increase the likelihood of successful trade secret management, IP professionals can help by incorporating these assets into their innovation, people and IT management processes. Practically, this will be easier to implement by in-house or contracted-in IP professionals. However, private practice can still support this by providing recommendations and guidance where possible.

Identification of assets can include framing and communication around IP mining for all types of intangible asset, as opposed to merely patent mining. Once identified, assets need to be protected based on their IP type. When trade secrets are identified, follow-up action is critical (as opposed to just focusing on the registerable IP types). Trade secret management should include meta-data cataloguing to ensure that they are incorporated into the IP portfolio. Further, people management should be intentional so that individuals with access to the secret are aware of its status and their responsibilities (especially if the individual is external or leaving the company). Crucially, IT best practices such as security processes, cybersecurity training and rights management should always be adhered to.

IP rights and their application to data is becoming more prevalent; what should companies be on the lookout for?

The size, use and impact of data on business continues to increase at an exponential pace. As a company develops its data strategy, treating data as an asset and applying an IP strategy lens to it is essential to maximise value and minimise risk. Understanding the data and its purpose will allow targeted, actionable follow-up. Value can be increased by categorising and layering different but compatible IP rights on the data (eg, trade secrets on data sets, copyrights on database structures and patents for methods of manipulating data), while mitigating the risk of unintentional loss of rights by targeted attacks on confidential information can be achieved through cybersecurity systems and employee training on phishing techniques. Managing IP risk with data in collaborations can include descriptive licensing agreements around data use, as well as the modification, ownership and confidentiality requirements. 

What, in your view, makes a world-class patent portfolio?

Starting with the end in mind to develop a business and market-relevant patent portfolio is what makes it world class. It is thus crucial to ensure that relevant innovations are identified and protected by the appropriate type of IP right and then apply patenting judiciously. For example, assets that would be better covered by a trade secret should not be disclosed in a patent. Further, while drafting, structuring the patents to be substantiated and comprehensive while the claim matter remains detectable and enforceable makes for a world-class portfolio. Other tactics will vary based on industry and company stage. For example, multinationals can focus on carving out space within intricate families and may include picket-fencing strategies, while SMEs are unlikely to have the resources to do this. In these earlier stages, balancing short-term priorities (eg, the ability to develop an initial IP position and support access to capital) and medium-term priorities (eg, commercialisation) is key.