Navigating Intellectual Property Gifts in Wills: A Guide for Charities

When a charity is gifted intellectual property (IP) through a will, it opens up unique opportunities and challenges. Understanding how to manage and utilise these assets effectively is crucial. This guide outlines the steps charities should take when they are left IP in a will.

What is deemed as an IP gift in a will?

Intellectual property gifts can include a wide range of assets, such as:

• Copyrights – rights to original literary, artistic and musical works;
• Trademarks – rights to distinctive signs, logos or expressions associated with goods and services;
• Patents – rights to inventions and processes;
• Design rights – rights to the visual design of an object.

Each type of IP has its own legal and practical implications, requiring careful consideration and management.

What steps do you need to take when inheriting IP?

• Review the will

The first step is to thoroughly review the will to understand the specifics of the gift. Key points to look for include;

The nature of the intellectual property gifted

Any conditions/restrictions associated with it

The identity of the executor responsible for managing the estate

• Consult with an IP expert

Engage with a legal expert specialising in intellectual property to assess the value and implications of the inherited IP who can help you understand the scope and duration of the rights, the potential income streams, and any legal obligations or liabilities associated.

• Verify ownership and rights

Ensure that the deceased held clear ownership of the intellectual property and that the rights can be legally transferred to your charity. This may involve reviewing registration documents for trademarks and patents, checking copyright registrations and publication records, and confirming the validity and enforceability of the IP.

• Manage registration and renewal

For certain types of IP, such as trademarks and patents, it is essential to maintain registrations and renewals. Determine the status of these registrations and take necessary actions to transfer ownership with the relevant IP office, pay any required fees, and update records to reflect your charity as the new owner.

• Evaluate commercial potential

Assessing the commercial potential of the inherited IP will allow you to identify the opportunities for potential licensing, consider any partnerships and explore ways to monetise the IP through avenues such as royalties or sales.

• Protect and enforce rights

Ensure the protection and enforcement of your IP rights by monitoring for infringements, taking legal action against unauthorised use and utilising the IP in a way that aligns with your charity’s mission and values.

What are the potential challenges involved?

Valuation disputes

Valuing intellectual property can be complex and may lead to disputes. Working with valuation experts to determine a fair market value allows you to document this process accurately and thoroughly.

Managing ongoing costs

Some IP, particularly patents and trademarks, may involve ongoing costs for maintenance and enforcement. By budgeting for these expenses, you ensure continued protection for your charity.

Ethical considerations

Ensure that the use of inherited IP aligns with your charity’s ethical standards and mission. Avoid exploiting IP in ways that could harm your reputation or contradict your values.

Summary

Inheriting intellectual property can provide significant benefits to your charity, offering new avenues for growth and support. However, it also requires careful management and strategic planning.

Should you have any further questions on navigating these complexities and ensuring that your charity makes the most of its IP gifts, please do reach out to a member of our team who are happy to assist you.