An Expert Discussion with Dr Janice Denoncourt on Intellectual Property in the UK

The landscape of intellectual property (IP) in the UK is undergoing significant transformation, driven by technological advancements, globalisation, and evolving legal frameworks. As businesses increasingly rely on innovation and creativity to maintain competitive advantage, the complexity of IP management has surged. This has led to the emergence of new career opportunities and professional roles within the IP sector. To find out more, we spoke with Associate Professor Dr Janice Denoncourt. In this expert discussion, Dr Denoncourt shares valuable insight on how to mitigate IP risks, best practice procedures for effective patent portfolio optimisation, and outlines the key IP considerations in M&A transactions, amongst other topics.
 
Have there been any recent regulatory changes or interesting developments?
 
The range of IP-related careers is rapidly expanding beyond the traditional patent and trade mark attorney professions, especially in a sustainability context.
 
In April 2025, I presented a talk entitled, Embedding interdisciplinary research and contemporary IP careers at the 25^th Anniversary of the Centre for IP Policy Management (CIPPM) Conferencehosted by Bournemouth University, UK. The Conference theme was IP and changing landscapes. There is a need for interdisciplinary IP expertise, research, teaching, knowledge sharing beyond the traditional IP law career pathways.
 
Traditional IP law careers include: IP law legal advisor, specialist IP judge (solicitor, IP bar, IPEC); patent and/or trade mark attorney; IP office examiner, IPR business and management consultant; inhouse IP legal counsel; and IP law teaching & research academic.
 
New-style ‘IP law and beyond careers’ include: innomediary, start-up adviser, IP journalist, IP finance specialist, IP-backed finance banker, IP valuation specialist, specialist R&D, intangible assets and IP rights accountants and standard setting experts, Chief IP Officer (CIPO) in national or international companies, IP policy advisors, legal officers and IP economists in national and global IP institutions, NGOs, IP insolvency/bankruptcy specialists and last but not least, specialist IP expert recruiter.
 
With many more post-graduate Masters and PhD students specialising in IP rights law, there is a need to expand our understanding of what we understand by a career in IP and highlight new opportunities in the field.
 
The IP professions always have an eye on the future in order to meet the needs of innovators, creatives and entrepreneurs which improve our society. The new career options noted above will shape the work in the IP field in the future, on both a domestic and a global scale. Our new generation of IP students can’t be what they don’t see!
 
Are there any new changes on the horizon and, if so, what implications do you anticipate?
 
The IP world is increasingly benefiting from the use of patent analytics. This technology uses patent information to uncover insights and identify patterns in a particular area or technology field, ultimately helping organisations make better strategic decisions. 
 
Patent analytics analyses patent data to understand a firm’s patent portfolio, patent families, market trends, competitors, and assess potential commercial opportunities. 
 
Key aspects of patent analytics involve data collection and analysis techniques whichgathers and analyses patent data from various publicly available databases and sources such as the UKIPO, Esp@cenet and private client patent portfolio data if agreed etc. The software is usually able to map and visualise the relevant patents to create visual representations to better understand relationships and trends. 
 
In particular, future trend analysis contemplates identifying emerging technologies and innovation patterns to predict future research and development (R&D) trajectories. 
 
Internal patent management can benefit from in depth portfolio analysis to assess the strengths and weaknesses of its own patent portfolio compared to competitors. In addition, analysing how patents reference each other (citations) assists to identify key inventors, players and influential technologies in the market. Engaging with patent analytics may also enable patent analysts to identify areas where there is little or no patent activity known as ‘white space’ potentially indicating exciting opportunities for innovation. 
 
Finally, the patent portfolio data enhances corporate decision-making providing evidence-based insights to support R&D, IP strategy, commercialisation and licensing evaluation. For further information see The World Intellectual Property Organization (WIPO) Biennial Technology Trends Report.
 
How can companies mitigate IP risks to protect themselves for both the short and long term?
 
Very little attention is paid to the risk of threats to valuable IP rights posed by insiders in the business.
 
In a business context, an insider is usually someone with access to confidential, non-public information about the company, its research and development or its operations. This includes employees who work directly for the company, such as officers, directors, as well as those who may have access to this information through their relationship with the company (e.g. advisors or consultants). Individual shareholders or entities that own more than 10% of a company's shares are also considered insiders in many jurisdictions. There are also employees known as ‘temporary insiders’ – these are people who, due to their professional relationship with the company, have access to material, non-public information under a duty of trust and confidence, such as lawyers, accountants, or consultants. Other temporary insiders could even be work experience students, stagiaires, those undertaking placements.
 
Malicious insiders can have several negative effects on your business. In the main they can cause damage to the business's existing and pending IP rights, goodwill, brand and corporate reputation.
While insider threats to strategic IP rights assets are rare, they can still result in significant financial and non-financial harm to a firm.
 
Malicious insiders will usually have some level of access and permission to use sensitive commercial or confidential information or trade secrets, whether related to their job function or not. The person can intentionally make it public outside the organisation. These insider threats are extremely dangerous and must be addressed immediately. Technology tools exist to monitor network traffic and identify abnormal transfers leading to the identity of malicious insiders.
 
Startups and smaller firms also need to be cognisant of IP risks – they often overlook IP protection, misunderstand its importance to the future of their business and subsequently fail to implement robust strategies.
 
However, often it is the company that harms itself, rather than a malicious insider or a competitor. This can happen when the company prematurely discloses and publicly shares information about their IP assets. This may be due to probing by industry players such as analysts, business journalists and even company shareholders and potential investors. While corporate governance and reporting require disclosure and transparency the legal standard applies to only to ‘material assets’. Others may be able to act faster to secure a patent or trade mark before the company. There may be legal remedies for making trade mark applications in bad faith, however the patent system operates on a ‘first to file’ basis so the opportunity to file may be lost.
 
Disclosing an unprotected trade secret idea could end up in the hands of a competitor, leading the firm to jeopardise trade secret status and thus lose the opportunity to patent an invention. Before disclosing an idea or IP-related confidential information, there are several practice steps that should be taken to reduce risks: (i) Secure the information internally and limit access; (ii) Ensure tailored non-disclosure agreements (NDAs) are agreed with new people in an innovative project. Legally binding your insiders and collaborators will provide peace of mind beyond verbal agreements and handshakes; and (iii) Only share information in tiers as the innovation project progresses, reducing the risks associated with revealing fully developed ideas from the outset while building trust with the growing team.
 
What are the best practice procedures for effective patent portfolio optimisation?
 
Most patent experts and patent portfolio managers have knowledge and understanding of IP insurance. Many firms insure their intangible property such as IP rights, and tangible property such as equipment and machinery but don’t insure against the risk of key individuals such as inventors dying or having serious health issues. There is another insurance product relevant to ensuring resilient IP portfolios. This is known as ‘key person insurance’. It is a form of business protection policy that protects a firm from financial loss if a key individual dies or becomes critically ill. The policy provides a lump sum payment to the business, helping it cope with the costs of replacing the key inventor and potentially mitigating other financial impacts.
 
Who is a key person?
 
A key person is someone whose death, critical illness or disability would seriously impact the firm’s profits. In the main, companies tend to insure their founders, company directors or other individuals whose skills, knowledge, experience, or leadership are vital to the business's success, such as a specialist with unique expertise. Some inventors are prolific and make outstanding contributions to the firm’s profits. One way to determine if an inventor is key is by the number of patents they are noted as inventor on as well as the amount of royalty payments they receive. Identifying key inventors within the business is an important aspect of contemporary IP management. In a firm that internally develops innovation leading to patented inventions, the value of key person insurance will typically cover the cost of an interim replacement if no employee could fill that role immediately, and recruitment and other incidental costs to help you take time finding and/or training the right permanent replacement. A policy could cover three to five years of the inventor’s salary.
 
Who can benefit most from taking out a key person insurance policy?
 
Key person insurance is relevant for inventors who may be working on critical innovation projects and product development and are thus vital to the firm's success. If the inventors are no longer able to work due to illness or death, the firm could lose access to confidential R&D knowledge and face significant financial strain when covering inventor replacement and recruitment costs. A key inventor’s absence can disrupt ongoing projects leading to product launch and market entry delays (foreseeable financial losses). The policy can be tailored to the firms’ needs.
 
How does key person insurance work?
 
First, the firm proposes an insurance policy upon the key person's life – it only applies to humans and does not apply to AI-inventors. There are different types such as level term, decreasing term, and inflation-linked cover to suit business needs. The key person insured retains no beneficial interest in the policy. In the event of a claim, proceeds are payable to the firm.
 
In summary, the funds provided by a Key Person Insurance policy can be a valuable tool for protecting firms, small and large that rely on the skills and knowledge of an inventor and help the firm to continue operating and maintain profitability while searching for replacement staff.
 
What are the biggest mistakes patent holders make and how can you help them to overcome these issues?
 
In the contemporary business environment, it is easier than ever to breach IP rights law accidentally or negligently – without intent. This may occur for example, through independent invention or using an orphan copyright work.
 
In an innovation context, a crucial risk is the possibility of someone else having already patented the same invention, or that existing public knowledge (prior art) invalidates the inventor's patent monopoly claims. This can lead to wasted effort and financial loss. 
 
In the knowledge economy, with snowballing amounts of IP rights being registered and created globally, ‘IP accidents’ are increasingly common according to IP scholar Dr Patrick R. Goold in his book IP Accidents: Negligence Liability in Intellectual Property (2022) Cambridge University Press.
 
Goold cites the example of the demise of a well-known Canadian firm, Research in Motion (RIM) and its wireless email technology invented and patented by RIM’s found Mike Lazaridis. In 1999, RIM launched the BlackBerry Pager which was an immediate commercial success. Only a couple of years later RIM was stunned to face a patent litigation suit brought against it in 2002 by American firm NTP.
NTP alleged that the BlackBerry pager infringed its patent-protected wireless email tech that they alleged had in fact been invented by Thomas Campana earlier in the 1980s. NTP, a small Virginia-based, was virtually unknown in the market, a two-person ‘patent troll’ company that did not manufacture or sell any products.
 
RIM firmly believed it was the first to invent the technology, supported by its granted Canadian and American patents. Nevertheless, NTP won the patent infringement litigation. Worse, NTP secured an injunction to stop the production of BlackBerry pagers. In 2006, to avoid further commercial reputation and pecuniary damage, RIM reluctantly agreed to pay NTP back-dated licence fees totalling US$612.5 million.
 
The impact of RIM’s IP mistake was considerable resulting in a costly and time-consuming litigation despite the due diligence steps it had taken to try to avoid IP infringement. Sadly, the risk is worse for independent inventors without a corporate safety net. Fortunately for RIM it was first-to-market and the company did not suffer non-commercialisation. However, from a public policy perspective the duplication of effort is nevertheless economically wasteful. In the end, RIM did not become insolvent. Rather, a series of additional patent lawsuits with Glenayre Electronics (2001), Good Technology (2002), Handspring (2002), Xerox (2003), Visto (2006), Motorola (2010), Eatoni (2011), Mformation (2012), Qualcomm (2017) and Facebook (2018) added to RIM’s financial burdens, distracting it from core business activities leading to market decline. Ultimately RIM shifted its focus away from smartphone hardware and into software and cybersecurity services. 
 
What are the key IP considerations in M&A transactions?
 
A merger between two companies affects stakeholders in each company differently. Assuming a merger has gone ahead, an early consideration is usually brand alignment within the wider range of IP rights that may be merging into one larger, super IP portfolio. Some IP will align with corporate branding plans and other IPRs will be superfluous IP and either sold or left to lapse. When companies merge, gaining a big picture understanding of the IP rights of each party, how they protected and which entity will own them can make the difference between a seamless merger and needless expenses. The nature of the IP will depend on the field of business, e.g. if a biotech company is part of a merger then it will likely bring patents (biotechnology), trade marks (brands) and copyright (AI or software used in R&D) to the newly merged firm. While all the IP should be catalogued, it will be important to identify which IP rights make the business competitive and have the potential to create future value. The newly merged firm will scrutinise the future projected earnings and competitive position of the IP families to drive growth and new strategy.
 
An acquisition is a different legal transaction. In general, the two common structures for acquiring a company is an asset purchase (specifically identifying and documenting IP assets) or a company share purchase. The approach to the transaction dictates how best to IP evaluate the IP rights assets. In the former, the buyer has a higher degree of control over what IP rights they buy. Buyers will cherry pick and exclude those IP rights assets that have unwanted liabilities. In a company share purchase, if Company A purchases Company B (including its IP portfolio) Company B usually remains the legal owner of all the IP, at least for a while. Any liabilities associated with Company B are now indirectly owned by Company A.
 
Regardless of which type of transaction occurs, it is important for the parties to agree on ownership of pending patents and trade marks and identify unregistered IP involved in R&D projects, relevant confidential information and trade secrets. Other legal risks require scrutiny such as any IP disputes (e.g., ownership, regulatory non-compliance or third-party claims and litigation) that will affect freedom to operate and future value. Governance of the new IP rights will be crucial to ensuring the intangible asset value acquired either through merger or acquisition is at least maintained and there is a clear path to create future value.
 
Dr Janice Denoncourt (BA, LLB, GAICD, LLM, PhD, SFHEA) is Associate Professor Law at Nottingham Law School, Nottingham Trent University and Solicitor (non-practising). She is the author of Intellectual Property, Finance and Corporate Governance (2018, 202)) Routledge. Janice was formerly the sole Inhouse Counsel for an IP-rich publicly listed mining technology firm in Western Australia prior to becoming an academic lawyer.