Does Your IP Strategy Need A Check-Up?

Intellectual property is a complex and dynamic field. How you can leverage it to your advantage is dependent on your circumstances and business goals, and also on understanding where you sit within the greater IP landscape, which includes considering and responding to your competitors changing strategies.

So, to ensure that your strategy is finely tuned and responsive to your own and your competitors changing circumstances, and to safeguard yourself from disputes through oversights, it is important to maintain an IP ‘health checklist’ to guide you from the beginning, and to keep you on track throughout the life of your business.

1. Identify. With help from your attorney, identify each piece of intellectual property that delivers you a commercial advantage. These include:
   • Your business name and/or product names
   • Your trade marks, which include logos and/or graphics used in connection to the particular product, process or service
   • Innovative or pioneering products, processes or services. This can include designs and key functional characteristics
   • Your domain names, as well as website and social media accounts
   • Any trade secrets and internal business processes
   • Any databases you use, including customer lists
   • Artwork or distinctive designs or characteristic packaging
   • Your supplier or distributor agreements
   • Any custom software and systems

2. Ownership. Confirm that you own all of your IP
   • If you have externally created IP, ensure that it has been assigned to you
   • Make sure that exclusive agreements are in writing, and that your business entity is a party to the agreement
   • Examine employment contracts and ensure that all employee IP creations are covered by relevant IP clauses
   • Consider whether you have granted rights to others that could affect your ownership
   • Confirm that domain names, social media accounts and relevant agreements are in the correct name

3. Multiple entities and ownership. Where your entity is part of a larger group, consider whether your IP is owned by the right one
   • Find out whether any IP has remained in the name of an older entity, which maybe be deregistered, after a restructure
   • Consider whether the IP is in the correct entity for adequate protection, and not in the name of a trading entity
   • For co-owned IP, consider all the potential implications and take steps to guard against identified hazards

4. Consider whether it is in your interests to register:
   • Patents for novel working features of products or processes
   • Designs for products novel shapes or designs
   • Word trade marks for business and product names
   • Logo trade marks for a symbol or image which represents your brand
   • Shape trade marks for non-functional product shapes
   • Device trade marks for distinctive logos and artworks
   • Elements of the senses – scents, sounds and colours that are inherently linked with your goods or services

5. Strategy and monitoring. Consider your strategy – are you ready to enforce if you need to?
   • Are each of your products, processes and services marked with your registered rights? This could be ‘patent pending’, ‘TM’, ®, etc
   • Ensure you are monitoring and watching for competitor IP infringements
   • Have you seen an attorney if you are aware of infringers? Will you consider a letter of demand?

6. Monitor competitors and developments. Do you track your broader IP landscape so that you know what your competitors are up to?
   • Do you keep a watch on all relevant databases (trade mark, design and patent) to catch and oppose potentially conflicting competitor applications?
   • Are you ensuring that ongoing searches of IP registers are undertaken to identify new leading technology, as well as important new trends?
   • Do you search patent and design databases for technology you may be able to employ without any royalty requirement?
   • Do you monitor the landscape to detect gaps that you can fill through your own research and development?

7. Safety to proceed. Do you fully understand the implications for you of your competitors IP? Do you know that it is commercially safe for you to conduct your business?
   • Have you undertaken a freedom to operate search?
   • If you are adopting a new business name, have you ensured that it does not infringe another’s trade mark prior to using it?
   • Have you ascertained whether importing or selling new goods or services infringes on the IP rights (patents or design registrations) of third parties?
   • Are you sure that any trade marks you intend to use for new products or services don’t infringe those of third parties?

8. International export. If you’re looking to go international, have you thought about the implications of export?
   • Have you undertaken a search of the applicable IP in all relevant receiving locations?
   • Have you registered your trade mark and other IP such as patents and registered designs in each of the export destinations, and considered a foreign language equivalent trade mark?
   • Are you aware of the different processes in the foreign jurisdictions so that you don’t undertake unnecessary, costly steps that may be applicable in Australia, and don’t overlook any additional processes?

9. Agreements. Are your agreements sufficiently protecting your IP rights?
   • Have you considered all methods to limit exposure to disputes, including warranting that your goods, services or processes do not infringe a competitor’s IP?
   • Have you looked over contractor agreements to ensure that IP created by them is owned by you in return for payment?
   • For distributor agreements that facilitate use of a trade mark as a business name, has the goodwill produced in the trade mark accrued to you as the owner?
   • If you have licence agreements such as licence grants for distributors or manufacturers, do they ensure that improvements and advances made by licensees are owned by you?
   • Do each of your employment contracts contain a clause that IP generated in the course of employment is owned by you?
   • Have you put in place processes for all outcomes, including the potential for a third party infringing a licenced IP right? If this occurs, will you or the licensee be responsible for the legal costs? Consider also if your licensed IP infringes a third party – who will pay defence costs?
     

     Author: Daniel Abraham | Registered Attorney & Principal at Platform®IP

     This publication is introductory in nature. Its content is current at the date of publication. It does not constitute legal advice and should not be relied upon as such. You should always obtain legal advice based on your specific circumstances before taking any action relating to matters covered by this publication. Some information may have been obtained from external sources, and we cannot guarantee the accuracy or currency of any such information.