UK government should publish guide on registering charges against IP assets, says expert

Out-Law News | 16 Mar 2015 | 3:58 pm | 1 min. read

UK businesses looking to raise finance by exploiting their intellectual property (IP), or financial institutions looking to provide such finance, would benefit from clear advice on registering a charge against an IP asset.

Intellectual property licensing specialist Louise Fullwood of Pinsent Masons, the law firm behind Out-Law.com, said the Intellectual Property Office (IPO) had missed an opportunity to provide such guidance to businesses in its recent IP Finance Toolkit (44-page / 287KB PDF) paper.

Many innovative companies leverage their IP to raise funds to help grow their business. Some approach banks or other lenders for funds and in return those lenders look to obtain a security over those registered IP assets, such as patents, trade marks or registered designs.

The UK IPO provides an admirably straightforward process for businesses to register charges on IP and for lenders to register their security interest on IP and make third parties aware of the hold they have over those assets, Fullwood said.

However, she said the process is not always fully understood by businesses and financial institutions, and that intellectual property offices outside of the UK do not always have a clear process for registering security interests against IP. The IP Finance Toolkit would have been an ideal opportunity to provide a central reference point for both innovative businesses and lenders on where and how they can register charges or security interests for IP in the UK and other parts of the world, she said. The guide could detail the cost of registration and explain what the impact of those capital-raising arrangements are on IP licensing and the protection of rights, she said.

"What would be very practical and is not included in the IP Finance Toolkit report is a user guide to charging IP assets and registering security interests against registered IP," Fullwood said. "Whilst this is relatively user-friendly at the IPO it is not the case internationally and this is an area where both chargor and chargee tend to need to obtain a good deal of detailed legal advice."

"I am sure that business users, and indeed lenders, would find some initial guidance to be helpful. I am regularly approached by clients who have quite unrealistic expectations of the extent to which charges and security interests can be registered and the size of the associated costs," she said.