AJPark

By recognising and capturing IP, a business is best placed to benefit from its innovations.  Some businesses actively develop and commercialise new products.  For others, the opportunity to consider IP protection for a new product or innovation may only arise occasionally.  Every business should have an IP strategy aligned with its business strategy to take advantage of the IP it creates.

What is intellectual property?

IP is an umbrella term that describes “the innovative idea behind new technology, products, processes, designs or plant varieties, a brand, trade secret, or the goodwill associated with a business, product or service”.

The main kinds of IP rights are:

Patents – a patent protects the ideas embodied in novel technologies, products and processes.  Patents cover a principle or idea and not just a single physical form of an invention.

Designs – a design protects the appearance of an article, such as its shape, configuration, pattern or ornamentation.

Trade Marks – trade marks protect names, logos, signs, symbols, tastes, smells and shapes that identify the goods or services of one business and distinguish them from competitors’ goods and services.

Copyright – is a property right which automatically exists in certain categories of original works.  It protects the particular way in which an idea is expressed.

Make sure you own the IP

You should not assume your business automatically owns all IP created by employees, third-party contractors or consultants.  Separating your business’s confidential know-how from an employees’ general skill and knowledge can be difficult.  Your agreement with employees, consultants and contractors should be clear on who owns the IP created by them and provide for transfers as needed.  Ownership should be clarified at the beginning of any relationship rather than at the end.

Identify what IP you have

Carrying out an IP audit will tell you what IP you own.  You may be surprised at what IP assets your business has. 

An audit will look for trade marks, patents, design, trade secrets, copyright, contracts (including licences) and business information (such as customer and marketing lists and financial information). 

When you know what IP you own, you will then be able to record it and review the IP and its continuing relevance to the business.

Identifying future IP

Seeking professional advice early in the creation of IP will help maximise the potential to recognise and protect the IP your business owns and has created.

Most IP rights need to be actively applied for if protection is to be obtained.  The exception is copyright.  Copyright exists automatically once a work is created in which copyright exists.  This includes literary works like articles, website content, promotional material and artistic works like logos and advertisements.  It is necessary to keep copies of all dated and signed copyright works in order to enforce copyright against infringers.

It is important that your innovation is not disclosed to the world at large before a final decision is made as to whether it is worth protecting.
 
Before your business makes decisions about IP protection it is essential to decide the coverage such protection will provide and whether it is free to use.  Clearance searches are essential when creating IP

You may also consider possible commercialisation pathways and conducting market research as part of a broader IP strategy.

Protect the IP

Informed decisions about IP protection can only be made once the potential of the IP has been assessed.

While protecting IP affords important advantages, the decision on whether or protect or not, should still be guided by other commercial considerations relevant to your business.

An IP policy should match your current business strategy.  IP is a tool to help businesses achieve their commercial objectives.   You need to be clear about what your commercial objectives are to ensure that you do not collect a portfolio of IP rights that do not add value to the business.

What are your competitors up to?

Undertaking a regular review of IP databases can provide valuable insights about who your competitors are and what they are doing. It will also give you ideas about product development and how to minimise infringement risk.  You may be able to identify potential business partners or acquisition targets by reviewing your IP.

Conclusion

The value of IP for a modern business is undisputed.  IP rights need to be treated in line with the overall business strategy and vision. 
IP law is complex but an important tool to add value to your business.

An edited version of this article was published in admiNZ magazine March/April/May 2007

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  Corinne Blumsky

  Partner