The start of the year is a great time to make sure your Intellectual Property (IP) strategy is fighting fit for the year ahead.
We have created a checklist to help you put your best ‘IP’ foot forward.
1. Identify and compile a list of your IP assets
To do this, let’s start by defining Intellectual Property.
In a traditional sense: IP includes patents for inventions, trade marks for brands, designs to protect the visual appearance of a product or its packaging, and copyright which protects artistic and literary works.
IP also encompasses, some not so traditional rights; including trade secrets, contractual arrangements with clients, suppliers and staff, databases, customer lists and the good will in a business and its brands.
Human capital is also an important part of your businesses intellectual asset portfolio – namely people’s experience, knowledge, skills, creativity, ideas and innovation.
Your IP needs to be identified /codified before they can be protected.
2. Ensure your brand is protected through a Trade Mark Registration
A trade mark is a word, phrase, letter, number, sound, smell, shape, logo, picture or aspect of packaging used to distinguish your goods or services from your competitors.
As an owner of a registered trade mark you will have the exclusive right to use the trade mark in in connection with the goods and/or services for which registration is achieved. Registration also enables you to take legal action against unauthorised use of the trade mark.
Importantly, you must register your trade mark in each country that you intend to do business. Conducting searches to ensure that you have freedom to use and register your trade mark is an important first step that is sometimes overlooked.
Some countries, like China, operate a ‘first-to-file’ trade mark registration system, where the owner of a trade mark is taken to be the first person to apply to register the trade mark. If you do business in a ‘first-to-file’ country without first registering your trade mark, you may end up losing the ability to use your mark.
TRADE MARK TIPS
- Use your trade mark consistently and in a way that DISTINGUISHES it from surrounding text.
- DO use a trade mark symbol to denote that a sign is your trade mark – TM for any trade mark, ® only for registered trade marks.
- Control how your trade mark is used on goods during manufacturing, distribution or import/export.
- Protect your trade mark in ‘first-to-file’ countries prior to doing business.
- Ensure copyright ownership of a trade mark logo is assigned from the designer to your business.
3. Protect Your Invention
A patent is one way to protect an invention such as an improved product or process.
In Australia and most other countries, a Standard Patent gives a 20-year monopoly right to exclude others from exploiting the patented invention.
The usual first step towards patent protection is to prepare and file a “provisional” patent application. A provisional patent application last for 12 months during which you are free to disclose your invention publicly, making it easier to attract investment or commercial partners without losing rights to your invention.
Typically, before the 12 month period ends, a further “complete” patent application must be filed, which can be an Australian Standard or Innovation Patent application. There are also options at this point for seeking patent protection overseas.
- Avoid publishing, selling or otherwise publicly disclosing your invention before you file a patent application as this can be detrimental to obtaining patent protection.
- Ensure you have non-disclosure agreements in place before discussing your invention with others prior to filing a patent application.
- Carry out patent searches to check that you are able to patent your invention. There is no point ‘reinventing the wheel’.
- Like trade mark rights, patent rights must be obtained in each country that you intend to do business (including manufacturing and selling).
4. Register your Design
Registered designs protect the visual appearance of a product or its packaging. Designs are registered in Australia for 10 years.
Both 2D designs – such as a printed pattern applied to cloth or wallpaper – and the 3D shape of products can be protected by way of design registration.
Products can be functional as well as aesthetic. Examples of products suitable for design registration are the shape of a medical device, furniture, embossing on flatware and patterns printed on fabric.
- Do NOT publish, sell or offer to sell a product embodying the design before filing a design application as this can result in an invalid design registration.
- Ensure you have non-disclosure agreements in place before discussing your design with others prior to filing a design application.
5. Shield your Trade Secrets from Prying Eyes
Any confidential information which provides your business with a competitive edge may be considered a trade secret. Think of KFC’s original recipe, Google’s search algorithm or McDonalds’ Big Mac special sauce.
Whereas a patent or design involves the disclosure of information in exchange for a finite monopoly period, there is no expiration period for a trade secret provided you can keep the information confidential.
TRADE SECRET TIPS
- Non-disclosure agreements are essential to maintaining a trade secret confidential when dealing with third parties.
- Ensure your business has technological (encryption or password protected databases) and legal provisions (contracts or agreements) in place for protecting confidential information.
- Only key personnel should be able to access your businesses confidential information.
6. Protect Your Content
Copyright protects original literary, artistic, dramatic and musical works, which includes computer software code and trade mark logos.
The duration of copyright protection can last as long as the life of the author plus at least 70 years. Some countries provide a registration system for copyright (e.g. China, US and Canada).
Copyright protects against someone actually copying your work – but does not protect against someone who independently creates a very similar work.
- If your business pays a contractor to create content (e.g. website content, a trade mark logo, or an animation) your business will not automatically own copyright. Ensure you obtain an assignment of ownership from the creator of a copyright work to your business.
7. Get Acquainted With Your Competitors
Before filing a trade mark, design or patenting an invention, it’s useful to conduct a search to determine what has been done before. Why waste time and money ‘reinventing the wheel’?
Product recalls, relabelling, and brand and reputational damage can be significant costs that could ruin your business. Understanding other people’s registered IP rights will help minimise your risk of infringement and enable you to determine your businesses freedom to operate (FTO).
COMPETITIVE ANALYSIS TIPS
Know your FTO and avoid ‘reinventing the wheel’ by researching beforehand. Ensuring you have FTO can prevent:
- product recalls
- unnecessary costs in repackaging and/or relabelling
- litigation and costly damages
- damage to your businesses reputation and value
If you are patenting, consider unlocking the power of patent analytics to make faster, more powerful business decisions to drive innovation.
8. Review your Contracts
It is a common mistake to rely on a handshake rather than getting a properly drafted contract or agreement.
Drafted contracts and agreements assist in:
- preventing misunderstandings, which can arise even where all parties have the best of intentions,
- bringing to light issues not previously considered that are relevant to the project/deal,
- facilitating and practicing good risk and project management.
Typical contracts include:
- employment contracts,
- development agreements,
- non-disclosure/confidentiality agreements,
- commercialisation agreements, and
- research agreements.
IP contracts need not be time consuming or expensive to prepare. A good lawyer with experience in your industry can identify and help resolve issues efficiently, and tailor the scope of the legal documentation to the scale of the transaction.
- If an employee or contractor creates IP during the course of their employment, ensure that ownership is captured by appropriate contractual provisions.
- Seek legal advice early in commercial dealings, and ensure that IP ownership and use are dealt with by a clearly drafted written agreement.