When it comes to protecting their intellectual property, many organisations don’t know where to start. Andrew Nicholson distils the do’s and don’ts of Intellectual Property in these ten commandments to live by.
Don’t assume you are first If you are second to invent the lightbulb you may be infringing and face legal action. Background checks are vital.
Don’t wait too long to register Some rights need to be registered for protection and time limits may also apply. These are strict and if you wait too long you may miss out.
Make sure you won’t lose your rights if you disclose Some forms of IP may only be registered if new (not publically known). Consider confidentiality agreements. Rights may be lost if disclosed.
Secure your IP from others Document your relationships. Get assignments (and warranties) from third parties including management, staff and contractors. Don’t assume that you own it because you paid for it.
Obtain appropriate warranties and indemnities You should always ensure the creator of an original work confirms the work is their own and has not been taken or copied from another source.
Other countries = different rules Don’t assume registration in Australia will protect you offshore. Australian law is not always identical to other countries. Consider use (and strategy) internationally and obtain overseas registration.
Ensure your terms and conditions (including website) address IP Where you supply (or receive) or develop new product/solutions, ensure you address who will retain ownership of IP (c.f ownership of product). Is a licence necessary? Who will own jointly developed IP? Who will own any data created?
Maintain registration and licences Products or service offerings may change after registration, such as following technological improvement. You may need to update existing registrations or file new applications. Diarise renewal dates. Don’t use IP if licences expire.
Understand and document intra-group arrangements Licences and assignments must be in order. If not, you may be unable to enforce rights, or claim damages, or may have registrations cancelled. [Courts will not fix shortcomings]
Privacy Compliance Changes to the Privacy Act mean that your policy will be out of date if it is more than 12 months old. Not securing confidential information is often related. Notification of data breach is now mandatory.
Don’t think there are only ten commandments These commandments are only an example of matters which should be considered. There is no substitute for professional legal advice.
"The content of this publication is for reference purposes only. It is current at the date of publication. This content does not constitute legal advice and should not be relied upon as such. Legal advice about your specific circumstances should always be obtained before taking any action based on this publication."