07 May 2019
Whether it’s latent or highly managed, locked down or open source, there is not a business in existence that doesn’t have IP in its DNA. Often, IP sits at the heart of what enables a business to differentiate or dominate in its market.
When evaluating the IP your people create, your business buys or your competitors assert you infringe, make sure you think about it from both an ownership and an enforcement perspective – investment in ownership will strengthen any subsequent enforcement strategy (offensive or defensive).
Set out below are a number of key questions that will assist in both setting your IP strategy and making transparent any legacy IP issues you may need to confront. These questions are usefully asked across all common IP rights – trade marks, designs, domain names, copyright, patents – as well as trade secrets and confidential information.
If embedded in an organisation, they will go a long way towards helping avoid the pitfalls of fragmented or fragile ownership and wasted investment in IP.
1. What do you own, who else has an interest, and do you need to protect your title?
IP can be a result of in-house enterprise collaboration or an acquired asset. At the creation phase (often a honeymoon period), assumptions can be formed about who owns the IP – especially when senior employees have external appointments or work is commissioned – that can compromise a chain of title in perpetuity.
To counter this, make sure you address at least the following from the outset:
2. Who owns something you need or something that causes you grief?
Investment in your freedom to operate can not only avoid infringing third party IP rights but also highlight where the sweet spots are, and where the return on investment is greatest. If there is crucial IP you need access to, consider whether your strategy is to challenge (invalidate) or co-operate (licence). Stress test the IP you purchase in the same way.
3. Publish or protect?
Sometimes, an ownership strategy can be about preventing anyone from owning IP as opposed to securing it for yourself. In tech-heavy and research intensive sectors, there can be more to be gained from publishing an invention (so no one can own it). This avoids the diligence of keeping something confidential and the costs of patent protection, but also ensures a competitor who may be making parallel innovation doesn’t lock you out.
1. How will the IP withhold a cross claim?
An allegation of IP infringement is most often met after a denial of infringement, with a cross claim that the IP right asserted is at risk or invalid. The easiest win in a cross claim can be an attack on ownership. Shore this up before any enforcement action is taken, and strategically work through what the consequences are if the IP is threatened or, worst case, invalidated. Some IP is so business model crucial that protective measures are warranted before any dispute is kicked off.
2. What’s the ROI?
Accumulating IP is not an end game. Flexing those rights is where the real return on investment can be realised. Australia is a sophisticated, rights-owners friendly jurisdiction. When successful, injunctions are awarded in addition to monetary relief which is compensatory as well as punitive (where infringement is flagrant).
Robust IP rights are a powerful tool to protect innovation and the competitive advantages they embody. There is also an intangible benefit in cultivating an enforcement reputation – copyists are less attracted to businesses that enforce their IP. Consider the infringer from the same perspective (are they likely to fold or fight?).
The content of this publication is for reference purposes only. It is current at the date of publication. This content does not constitute legal advice and should not be relied upon as such. Legal advice about your specific circumstances should always be obtained before taking any action based on this publication.