Intellectual property (IP) is vital to ensuring your business success. This checklist should provide you with a useful starting point on how to protect these important business assets.

Management systems

  1. Appoint an IP manager.
  2. Budget for obtaining and defending your IP rights and avoiding infringement of third party rights.
  3. Establish an IP awareness program for your management and staff.
  4. Conduct regular IP portfolio reviews, and assess business value of each IP asset in terms of:
    • providing competitive business advantage
    • generating revenue
    • necessity to attracting investment.
  5. Review all current projects for emerging innovations, brands and other IP.
  6. Establish and maintain an IP register.
  7. Incorporate IP tollgates into your product development process.

Copyright

  1. Retain records relating to creation of any work that may be entitled to copyright protection, such as:
    • textual material
    • published works
    • computer programs
    • dramatic works
    • artistic works
    • film and sound recordings
    • musical works.
  2. Where work is created by a third party, obtain an assignment of copyright.
  3. Ensure that all copies of the work are marked with a copyright notice: © year of first publication/copyright owner’s name.

Confidential information

  1. Identify what is confidential and keep an original copy secure.
  2. Implement measures to ensure information is kept confidential within your organisation, including:
    • establishing physical security
    • limiting access and copies
    • ensuring employees are aware of and agree to keep information confidential.
  3. Have third parties sign a confidentiality agreement before giving access.
  4. Mark all documents and other material containing confidential information CONFIDENTIAL.

Ownership and licensing

  1. If ownership of IP is to be joint between two or more parties, agree on rights of each party to:
    • licence
    • assign
    • litigate
  2. Document any licence arrangement to include provisions relating to:
    • parties to arrangement
    • warranties and exclusions
    • property being licensed
    • infringement responsibilities
    • scope – exclusive, sole, non-exclusive
    • payments
    • geographic coverage
    • duration.

Employees/consultants

  1. Have employees/consultants enter into an agreement to:
    • keep information confidential
    • assign to your organisation any IP that they may create or develop for the organisation.
  2. Conduct exit interviews with departing employees and ensure retention or return of all documents to organisation.

Patents

  1. Check that your product or service does not infringe any third-party patents, including conducting patent infringement search(es).
  2. Remain alert to unauthorised exploitation of your invention by third-parties and consider preventative action by monitoring activities of competitors, identifying breaches and assessing the impact on business.
  3. Thoroughly document a potentially inventive idea, and have the document read, signed and dated by a witness (who has entered into a non-disclosure agreement with you).
  4. Document the progress of any developmental work.
  5. Delay offers to sell or publicly disclose the invention until the patent application is filed.
  6. Conduct a search to form a preliminary view on patentability of the invention.
  7. File Australian and foreign patent applications as appropriate.
  8. Routinely assess the commercial value of patents and patent application portfolio.

Designs

  1. Check that your product does not infringe any third-party design registrations, including conducting design infringement search(es).
  2. Remain alert to unauthorised manufacture, sale or use of your design by third-parties and consider preventative action, by monitoring activities of competitors, identifying breaches and assessing the impact on business.
  3. Thoroughly document a potentially new or original design, and have the document read, signed and dated by a witness (who has entered into a non-disclosure agreement with you).
  4. Document the progress of any developmental work.
  5. Delay offers to sell or publicly disclose the design until the design application is filed.
  6. Conduct a search to form a preliminary view on registrability of the design.
  7. File Australian and foreign design applications as appropriate.
  8. Routinely assess the commercial value of design applications and registration portfolio.

Trade marks

  1. Choose a trade mark that is distinctive, not descriptive.
  2. Before adopting a mark, conduct a search to determine if it is available, and the rights of other parties are not infringed.
  3. Register the mark in Australia and in foreign countries to obtain more easily enforceable protection.
  4. Remain alert to unauthorised use of the trade mark by third-parties and consider preventative action by monitoring activities of competitors, identifying breaches and assessing the impact on business.
  5. Use marks as adjectives, not as nouns or verbs in advertising and marketing materials.
  6. Do not copy or imitate in any way another company’s names, trade marks, logos or get up.
  7. Use the trade mark regularly and in a consistent format and rendition.
  8. Distinguish the trade mark from surrounding words and images.
  9. Always use ™ or ® (if registered) adjacent the trade mark to indicate propriety rights are claimed in the mark.

If you have any further questions about safeguarding your IP, contact us via +61 3 9614 1944 or attorney@pof.com.au