Intellectual Property (IP) is a valuable asset for business owners – so it is vital that you understand your business’ IP from the outset in order to protect, enforce and exploit your rights.
Below are some of my top tips for protecting your Intellectual Property:
Understand the IP held within your business. (for example, Trade Marks, Patents, Designs and Copyright). Seek legal advice at an early stage so you can ensure you have readily identified your business’ IP rights at the outset.
Keep your IP confidential. Any product which a company develops should be kept confidential prior to any disclosure. All confidential documents should be marked as such to ensure that all parties are aware of their confidential nature. The disclosure of confidential information should be protected with a Non-Disclosure Agreement (NDA) or confidentiality agreement.
Record your IP. The development of any product should be well documented and kept safe, and all documents should be dated to record when the product was developed. Ensure that you keep detailed records of any work which attracts IP.
Register your IP. Consider protection of such rights where possible, and that you are not inadvertently infringing earlier registered or unregistered IP.
Include IP rights in employee and consultant contracts. All relevant employees and contractors should have Intellectual Property and confidentiality clauses in their respective employment contracts or contract for services – this will ensure that the parties understand the agreed position:
For employees – although generally speaking, IP created by an employee is owned by the employer, if IP is created by an employee outside the course of their employment, the employer may not have rights to it. Therefore, an employment contract should always clarify that IP created by an employee, whether inside or outside their duties, belongs to the employer.
For consultants – the use of outside consultants should be looked at carefully. A consultant will generally own the IP rights for the work they produce for a business – this is the case irrespective of whether you have commissioned and paid the consultant for the work. An express provision governing ownership and use of those rights to be created by the consultant should be included in any contract with the consultant before any work is carried out.
Monitor your IP. Ensure your registrations and unregistered rights of IP are kept up to date and renewed where possible. Review any third-party applications for registration which may affect your IP. Most IP legal professionals will offer a ‘watching service’ for registered trade marks – this will flag up any applications for marks that are the same or similar to your registered trade marks and are being used for the same or similar goods/services.
Enforce your rights in IP. Remain proactive against third-party activities which may threaten the value and commerciality of your IP. In turn, this will also ensure that your registered and unregistered rights do not become diluted in the marketplace.
In summary, IP is a complex area of law and there are a number of things to consider. In addition, as the IP held in a business is usually closely connected to the activities and the goodwill accrued by the business, we always recommend that you look closely at your IP at the outset and consider seeking legal advice around IP strategy, protection and exploitation in order to clearly visualise monetary value of IP within your business.
The information above is not and should not be taken to be legal advice. You should not take action or omit to take action based on this information.
If you require any help on the issues raised above please contact:
Theresa Grech, Partner and Head of Corporate (Cardiff)
Tel: 029 2055 7234
Email: [email protected]
Matthew Hiscox, Director of Trade Marks
Tel: 029 2167 2684
Email: [email protected]