Top Ten Tips for Protecting IP in Tech SMEs
29th June 2020
The intellectual property (IP) of your business is an extremely valuable asset. It sits at the heart of the business’s purpose and is worth protecting. Bringing new people into your enterprise brings IP challenges and risks that need to be proactively managed. Even the way you promote your business and release information can pose a risk to the security of your IP. So here are our top ten tips to help protect your IP.
Tip # 1 – Educate
Educate yourself and your team on the basics of trademarks, copyrights, patent and trade secrets.
Tip # 2 – Conduct an IP Audit
Conduct a systematic review of the IP assets owned, used or acquired by your business.
Identify readily identifiable IP – internal assets such as:
- registered trademarks, copyrights, designs or patents owned by your business;
- licenses in (eg. domain names), licenses out, including cross-licenses;
- in-house work manuals, publications, training, databases, recipes/formulations;
- trade secrets, know-how or confidential information; and
- custom software.
Identify external IP assets such as:
- brands/product brands;
- goodwill and client loyalty;
- product certification and regulatory approvals;
- distribution contracts, networks, client lists; and
- marketing and advertising programs.
Assess what your legal rights are in relation to each item of IP identified and understand what value/advantage these rights give you. Good questions to ask are how much will it cost to replace the item if it were lost? What is the expected income?
Tip # 3 Develop an IP Strategy
Consider ways you can use the IP system in your strategy and to integrate IP into your strategic plan/business plan. Search databases and the internet to ensure ideas are new and to avoid infringing others. Finally, weigh the risks of registered versus unregistered rights.
Tip #4 – Register your IP
Although registration is not required to obtain and maintain trademark rights, it can be extremely helpful in enhancing and enforcing them (and reduce costs in enforcing them). If your business has global reach, then consider applying for an international trademark. Otherwise, register your local marks with IP Australia.
Tip # 5 Ensure your business owns or has right to use the IP
For employees, ensure the scope of employment is clearly defined and obligations of confidentiality are clearly articulated – suggest preparing and signing a non-disclosure agreement.
When dealing with contractors, rights must be transferred to the business from the contractor (being the creator of the IP) in writing. Note, a non-disclosure agreement does not transfer IP.
For contracts to develop computer software – ensure source code is assigned.
If IP is owned by a third party, then ensure your business has the right through the appropriate licensing to use the IP for its purpose.
Tip # 6 – use confidentiality/ non-disclosure agreements
Examine existing confidentiality/non-disclosure agreements. Be sure that the appropriate confidentiality agreements are in place with third parties to protect trade secret information that must be released outside your business.
Tip # 7 – Document licences and approvals to third parties
Have a documented system for granting licences and approvals to third parties and personnel responsible for implementing the system. This allows you to prove that an infringer did not have permission or consent to use IP.
Tip #8 – Protect your IP Internally
- Implement a document management system.
- Educate employees about the risks and ramifications associated with unauthorised removal of IP.
- Implement sufficient IT security policies and appropriate internet security measures.
- Adopt a process of review when employees at or above a certain level.
Tip # 9 Protect your IP online
As your stakeholder reach expands, your IP becomes more valuable and can be infringed by users anywhere in the world.
- Protect your IP by taking measures to discourage misuse.
- Include a section on your website that specifically states terms and conditions for use of your business’s material.
- Acknowledge the IP your business uses but does not own.
- Use tools such as ‘watermark’ as an image, identify copyright owners, its country of original and permitted uses.
- Use disclaimers as commencement of each section, or link to disclaimers.
Tip # 10 Develop an infringement strategy
This involves a strategic assessment of your IP rights and setting parameters for beginning (and ending) infringement action.
Disclaimer: Reliance on content the material distributed is general information only. The information supplied is not and is not intended to be, legal or other professional advice, nor should it be relied upon as such. You should seek legal or professional advice in relation to your specific situation.
About the Author
Phillipa Hooper is a Senior Associate at Active Law, ACS Queensland’s Preferred Legal Partner. Phillipa has over 20 years of local and international experience across a diverse range of legal areas including business and commercial law, property and construction. Phillipa can assist with structuring, business acquisitions/sales, loan agreements, mortgages, IP/trademark issues, governance, and a range of commercial contracts.
Active Law is ACS Queensland’s Preferred Legal Partner offering services in Business, Intellectual Property, Commercial Disputes/Litigation, Employment, Property, Body Corporate and Construction Law. Active Law is offering ACS members a 10% discount off legal services up to the value of $2,000 and a 5% discount thereafter. Contact the Active Law team on (07) 3160 0000 or email [email protected] to arrange a consultation.