The company’s ambition is to move to an SaaS licensing model for future products, including the Vistogram. In order to get the financing to deliver against this ambition, the management team recognised the need for a solid IP management strategy.
The Omnivisto team includes highly experienced project managers, graphic and digital designers and coders. However, as Barnaby Davies admits, they knew little about intellectual property and intangible assets, and how best to protect and exploit them most effectively. Barnaby says: “We realised we didn’t know what we needed to know, or why it mattered.”
Omnivisto sought advice from a contact at Innovate UK EDGE, who recommended they talk to Inngot. Inngot suggested the company take advantage of the IP Audit Plus scheme, administered by the UK Intellectual Property Office, which provides a £3,000 grant to cover an IP audit.
Inngot’s experts were able to assess the company’s existing IP and intangible asset portfolio, and advised on remedial action that needed to be taken to better protect these assets in the short term. However, Inngot was also able to identify the type of assets which the company is likely to create if it successfully delivers against its ambitions of making Omnivista an SaaS platform.
It suggested the implementation of good IP habits, such as creating an innovation register and logbooks, and making sure collateral such as design mock-ups, storyboards and software versions was recorded and stored securely.
The audit carried out by Inngot also explored the criteria which the proposed product would have to meet in order to be eligible for patent protection. Inngot went into detail concerning patents. While software is not usually eligible for patent protection, there is an exception if it performs a technical function and is not merely automating or implementing existing manual processes (the software must have a ‘technical effect’). Inngot advised that this could well be possible, and suggested that Omnivisto contact a firm of patent attorneys to clarify the situation, providing a list of names of firms to Omnivisto.
Omnivisto chose a firm to work with, and on their advice, it has filed for a patent application for Vistogram in the US, both because of the highly-developed market for PPM software solutions in North America and because the US patent application process does not require full publication of the details of a patent application until it is granted.
Barnaby explains: “We were unsure whether to file for a patent because we were worried we might have to reveal too much detail of how our system works. With a US filing, we don’t have to worry about that – and we get to use the words ‘US patent pending’ in the meantime.”
Inngot’s experts also recommended a number of steps the company should take, including:
- filing for trade mark protection for one or more of the names it was using for the platform and products;
- registering relevant domain name;
- avoiding copyright ownership issues by ensuring any contracts with third parties include copyright assignation to Omnivisto, and adding clauses relating to IP generated by staff members to its employment contracts;
- and increasing protection for its software source code.
These have been actioned and the company now has registered trade marks both for its company name and for Vistogram. It has also secured ownership of key assets which were developed with the assistance of sub-contractors.