With the large number of intellectual property infringement litigation publicity in the news media, more and more enterprises realize the risk of infringement is present throughout the whole process of business activities, which needs to pay more attention.
I, Potential Intellectual Property Risks
Intellectual property risks in enterprise can be decomposed into risks in R&D activities, risks in production activities and risks in trade activities.
1. Risks in R&D activities. Risks in R&D activities include: before a research and development project is launched, no detailed prior art search is conducted, resulting in the risk that the research is duplicated and self-development outcomes cannot be used; after completion of research and development, no intellectual property right is claimed, leading to the results that the outcome of the research and development is copied by others and the enterprise itself cannot use the outcome; during cooperation with other parties, no contract is introduced to define the belonging of intellectual property obtained in the cooperation, the risk of intellectual property disputes of the cooperative parties appears.
2. Risks in production activities. The risk in production activities mainly is present in the process when procurement chain of suppliers provide products and technology, no evaluation is made to the intellectual property involved in the products and technology to be provided and intellectual property infringement on third party may result; during the commissioned the production of R&D, ownership of the resulting intellectual property rights, use and confidentiality are not clearly defined, intellectual property disputes might be caused thereby; for upstream or downstream cooperative partners, duty of confidentiality and intellectual property rights attribution are not clearly defined, risk of loss of corporate intellectual property may be resulted.
3. Risks in sales activities. During the sales activities related to the product, trademarks, slogans, and marketing program may lead to the risk of infringement of intellectual property rights.
For the above risks and intellectual property infringement disputes, it is clear that the main causes are the lack of effective management of intellectual property, the lack of effective early warning system and the lack of the infringement prevention mechanisms.
II. Solution to the risk of infringement of intellectual property rights
To address the risk of intellectual property infringement, recommends that companies should strengthen the management of intellectual property rights, the establishment of early warning and prevention plans to proactively prevent the risk of intellectual property rights.
1. Strengthening intellectual property management system. Enterprises should first strengthen the intellectual property system, in accordance with the enterprises’ own characteristics and development goals, the enterprises themselves or entrust professional institutions to build their own intellectual property management system, which requires the leaders’ attention, full participation, the establishment of the intellectual property department , clear responsibilities of all departments, so as to establish management process and improve the intellectual property management system. Through the system, to better protect research results by patent applications, technical secrets, etc., to develop the use of intellectual property, risk management and control procedures, establishing a scientific, rational and effective intellectual property rights management system.
2. Implementation of Intellectual Property Warning Plan. The presence of the intellectual property risk is due to the uncertainties in the business, thus enhancing risk prevention is the main and effective way to reduce risk. In the R&D activities in the project in stages, should be carefully conduct a patent search and analysis evaluation; after the R&D activities have been completed, determining effective intellectual property protection through a robust review process, timely taking different forms to apply for patents on R & D results protection; evaluation of suppliers in the procurement phase of IPR, by way of a contract binding supplier to businesses in order to avoid infringement of the intellectual property of others suppliers; before the new product sales, strengthening early warning system on patents, trademarks, marketing programs , slogans and other intellectual property rights, to avoid the risk of infringement, but should also strengthen regularly monitor on competitors to prevent infringement of intellectual property rights of the enterprise. In addition, if companies use contract research or commissioned manufactured cooperation with others, in the contract, ownership, use and benefits of intellectual property rights should be clearly defined, signed confidentiality agreements and other legally binding treaty to prevent the encroachment of others intellectual property rights of the enterprise.
3. To establish and improve the intellectual property archives. Intellectual property archives can be used as important legal evidence, sound files can be equipped to effectively deal with intellectual property infringement litigation. Complete intellectual property files include research and development records in R&D activities, product knowledge assessment data, patent application materials and all other information and documents related to the results of R & D. In addition to R&D-related patent documents, the intellectual property archives should also include intermediate materials, file history, bills to pay patent fees, patent documents and other related documents. Specific intellectual property files should be summarizing the characteristics of intellectual property activities to ensure the integrity of various types of complete data files to better prevent and respond to intellectual property risks.
4. Preventive Measures by Contracts. Contract is an important economic activity and basic legal document. Enterprises should actively take advantage of the legal validity of the contract to guard against risks. In the contract, enterprises should require suppliers in the procurement chain ensure that the products do not infringe the intellectual property or infringement once, and suppliers bear the corresponding tort liability. In commissioned production, enterprises and designated manufacturers should sign a contract. The other party should be agreed in the terms of contract for failure to apply for protection of intellectual property rights confidential. For joint development of technology, cooperation should be clear ownership rights and the right of the parties to the R&D results.
To prevent employees’ misconduct intellectual property risk to the enterprise, especially in the design process the core technical personnel may repeat a conventional design and technical solutions, if such persons switched to other businesses, it is easy to lead to legal disputes, intellectual property risks to the enterprise. Therefore, enterprises should also pay more attention to the contracts signed with employees, clarifying ownership of service invention and prohibition of service in competitors, employees shall be kept trade secrets and technical secrets, thereby to prevent intellectual property risk caused by the loss of employees for the enterprise.
5. The use of patent information to prevent infringement risks. When enterprises find there is possibility of infringing others’ patents when launching a product in a market, it is better to conduct a warning analysis or Free-to-Operate analysis, in order to avoid infringement. If you find the presence of the risk of infringement, patent information can be used, for example, technical solutions that patent owner gives up during prosecution, prior art technical solutions, technical solutions in which some elements are omitted and technical solutions described in the specification but not reflected in the claims, to effectively avoid the risk of infringement.
III. The Conclusion
Intellectual property right under the era of knowledge economy is a powerful means of guaranteeing a place of business in the fierce market competition. Enterprises should establish and continuously improve its intellectual property management system, system, and actively take targeted patent mining, layout, early warning, contracts and other means of prevention infringement risks, in order to better explore the market, protect the innovations of enterprises, and promote the continuous innovation and development.