Whether you have been trading for 12 months or 12 years, most businesses will have some form of intellectual property (IP). It is a good idea to conduct an IP audit where you review your current IP assets and their status.
An IP audit can help to:
– Evaluate the strength and scope of your IP assets;
– Identify IP infringement risks;
– Uncover potential threats to your company’s bottom line;
– Devise and implement policies for IP asset management; and
– Improve your innovation and competitiveness in your industry.
By systematically identifying and recording IP owned, used, or acquired by your business, you can determine if you are making the best possible use of your existing IP.
How do I identify intellectual property?
We would recommend that you create an IP register or database which lists all intellectual property including details about how each item is protected.
The IP register should include all IP that you believe that you own, IP you are currently developing and IP you are currently using.
Your IP register may include, but not be limited to the following items:
– Trade marks
– names (registered or unregistered) including business names, company names, and domain names
– copyright
– new products, processes or patentable inventions
– trade secrets, know-how and confidential information
– designs (registered or not)
– circuit layout rights
– new plant varieties (registered or not)
Once you have an IP register, don’t forget to periodically review it to ensure that it is up to date.
Who owns the intellectual property I have identified?
On your IP register, you should also keep a record of which IP is owned and by whom.
Considering each item on your register, ask yourself:
– Was the IP created by an employee? If so, have you ensured that you have captured ownership of the intellectual property in their employment agreement, and protected it with confidentiality
and other clauses in the employment agreement?
– Was the IP created by independent contractors or consultants? If so, have you ensured that they have assigned ownership rights of the intellectual property in their engagement agreement?
– If the IP is jointly owned, have you gained formal permission to use it?
– Is it someone else’s intellectual property? If so, have you been granted a licence to use it in the way that you do?
A Court decision in 2017 (Insight Radiology Pty Ltd v Clinical Imaging Pty Ltd) highlights how ownership can become a complex matter. For example, if you were to register a trade mark under your own name, but your business is using it, problems could arise. One way to get around this could be to have a licensing agreement in place between you as the owner and your business as the user. However, this agreement needs to be drafted in a way that takes the Trade Marks Act 1995 and its requirements into consideration.
Is the intellectual property being used?
Trade marks, for example, become vulnerable to removal (see trade mark opposition) i.e. if they are not used by the named owner within a prescribed period of time (in Australia, this is typically 3 years).
Keep evidence of use including:
– Copies of invoices, business cards, stationary, packaging and advertising material showing trade mark use in relation to as many goods and services as possible, in as many states of Australia as
possible; and
– Details of advertising and promotional costs relating to trade marks.
Protection strategies: Registered v Unregistered
As shown in this illustration, there are various forms of IP. It is important to remember that it is more difficult to enforce your rights if registration has not been granted.
If you already have IP protection rights in place, for example a trade mark registration, make sure you record and diarise when renewal or maintenance fees are due so that your rights do not lapse. If you had a professional such as a trade marks attorney file the application, they can keep a record of renewal dates and will inform you of any upcoming deadlines.
A new year and a new decade means new business goals. If you need assistance, please feel free to contact one of our attorneys for an initial complementary consultation and we can help you get your intellectual property rights sorted.