Intellectual Property (IP) should be well managed – in the same way that a company manages all of its other assets. Unfortunately, because of the intangible nature of IP, it often gets overlooked. This brief guide aims to identify some of the issues and practices that will assist a company in being more able to effectively manage IP that already exists, and to identify and capture IP that may be created in the future.
Who may create IP?
Anyone within an organisation can create IP: engineers, managers, technicians, scientists, graphic artists, marketing personnel, web designers etc. Also important to understand that third parties may create IP, for example, when a company contracts another person or organisation to do some work on its behalf.
When might IP be created?
Some simple considerations might help…..
- Are new product or service names/brands being coined?
- Are new logos and packaging being created?
- Is a new online platform being launched (e.g. website, social media page)?
- Are problems being solved?
- Are reports, checklists, flowsheets or other summary documents being produced?
- Is money being spent on research, testing or trials?Are improvements being made to products, processes, business practices etc.?
- Are things being developed or created within the business that others may wish to copy or which is going to make (or save) money?
If a company is doing any of this, then IP will be created that may be valuable to the company.
What steps can be taken to help identify and capture IP?
- Document brain-storming sessions for new product and service names and logo designs
- Use good recordal means for inventions such as an Invention Disclosure Document and/ or laboratory notebooks.
- Regularly review any records of inventions and take appropriate steps to protect IP, as required.
- Address IP issues at meetings: in particular R&D meetings, project meetings, marketing meetings, at board meetings, and business development and strategy meetings.
- Liaise regularly with external IP professionals.
Good business practices
- Consider an IP policy to assist the company to consistently identify, protect, manage and defend its IP
- Develop a sound records management system – Have a filing system for correspondence and documents. – Keep a separate file for every application for a registered IP right. – Keep an IP database or register, for example using a simple spreadsheet application. – Don’t publish information without reviewing whether it is safe to do so – early publication can remove the possibility of patent or other formal protection later. – Keep records of publications and disclosures. – Keep a record of all agreements with third parties. – Identify confidential documents and mark them ‘CONFIDENTIAL’ and keep them secure. – Ensure that ownership and use of IP is addressed in all agreements with third parties. – Make sure that contracts of employment address ownership of IP and the correct treatment of confidential and proprietary information.
- Use appropriate markings: -Copyright © plus the year for copyright materials. -® or ™ to identify registered and unregistered trade marks respectively. Regularly review the IP portfolio: is it appropriate for the current and future needs of the business?
Know the ‘IP Landscape’
This is about understanding what is happening in the business environment relevant to the business. It helps identify what customers and competitors are doing. It enables a company to better determine what IP is being created by them, thus reducing the risks of infringement, as well as identifying opportunities for licencing brands and technologies (both ‘in’ and ‘out’). It also assists in identifying any potential third-party infringements of the IP. Knowledge of the ‘IP landscape’ can be achieved by maintaining a general awareness, for example, by reading trade and scientific publications, attending conferences, or talking to colleagues. More formal searching techniques can also be used, for example, through the use of free databases available using the Internet.
Promoting an ‘IP culture’ in the workplace
- Having a healthy IP culture in the workplace can greatly assist with IP management issues.
- Provide education and awareness training for employees.
- Nominate an ‘IP Champion’ – someone who is a primary contact for IP matters.
- Encourage and reward employees for their innovations.
What are the risks of poor IP management?
- Money can be wasted because third party rights restrict the utilisation of work that has been done.
- Opportunities may be lost because a company is unable to stop competitors or generate an income from royalties.
- IP that has been created is taken and used by ex-employees or contractors.
- A company could be on the receiving end of an infringement lawsuit.
Action items – Trade Marks Considerations
- What marks do I have/will I have?
- Where am I using them now and where will I use them in the future?
- How am I using them?
- Are they registrable where I use them/will use them?
- What is my trade mark budget?