Are you about to launch a start-up? If so, what intellectual
property (IP) do you have and how is it protected?
Whilst this probably isn't the most exciting topic of
conversation when starting a new business venture, it's
essential to consider as these will be among the first questions
investors will ask of you.
Below are five tips to keep you on top of your IP, and help your
budding business retain the commercial value of its IP in order to
continue to attract investors.
Know your assets
What exactly is IP? IP is a valuable asset that distinguishes
your business from your competitors. It can be a brand, logo,
invention, design or the practical application of an idea. An
important first step for every business owner is to identify his or
her IP. Below are the four most common types of IP:
A common mistake that people often make when starting out is to
overlook what could be potentially valuable IP. If you're
unsure, talk to an IP lawyer - a specialist who'll be able to
tell you what you have and assist you with conducting an IP
If you think that registering your business name and having a
trading history is enough to protect your IP, you're wrong. You
need to take steps to protect it.
IP falls into two categories: registrable and non-registrable.
Knowing if you can protect your IP and what steps to take are
essential to your business avoiding unnecessary and expensive legal
Have an IP lawyer conduct a search for you through IP Australia,
the Australian Government intellectual property office to determine
if you have the right to use your IP, and most importantly, take
steps to protect it - preferably before you start doing
Don't make the mistake of failing to protect your IP because
your business is a start-up and you'd rather invest your money
on other things like promotion. You'll regret it if you
don't register your rights because IP registration systems in
Australia are priority based and therefore it works on a
'first-in-best-dressed' basis. You don't want your
competitors getting an advantage and stealing your ideas before you
get a chance to protect them. Imagine trying to justify relevant
legal expenses to your new investors!
Know how to keep it confidential
Does your new business have an internal trade secret and
'confidential information' protection policy? You need to
remember to keep your ideas confidential until you have taken steps
to protect them. If disclosed, their registrable status could
either be at risk of being compromised or stolen by competitors.
Once an idea is out there, you can't bring it in again!
Know that you own it
Without some additional safeguards in place, the next time a
disgruntled departing employee walks out the door he or she may
also walk out with your valuable IP. Make sure your employees sign
IP assignment agreements, or have relevant provisions documented in
employment agreements. If you are hiring independent contractors,
it's a good idea to get a written assignment of the IP they
create for your business. It's also worth having clear
agreements in place to ensure you retain ownership of your IP when
licensing your IP. Again, consider consulting with an IP lawyer who
can help you with all of the nuances of commercial agreements to
help you retain control of your IP.
Know the marketplace
Keep an eye out for copycats. As the owner of IP rights, it is
your responsibility to police your rights and take action to
prevent others from infringing them.
The actions that can be taken against a person who infringes
your rights and the legal remedies, which can be ordered by a
court, are set out in legislation. Each type of IP right has its
own legislation. If you believe consumers are being misled, there
may also be action which can be taken under the Australian Consumer
Law or common law for passing off. If you suspect your rights are
being infringed, seek the assistance of an IP lawyer to advise the
steps you should take. You need to act swiftly as a court will not
take kindly to an applicant that sits on his/her hands.
It's a good idea to have an enforcement policy in place that
requires the maintenance of records of the IP you own, as well
details regarding the conduct of the infringing party and any
evidence of confusion in the marketplace? If you need to take
action, maintaining these records will help prove your case.
Going back to my first point, it is essential that you know your
IP rights. Knowledge of your IP will help to enforce your IP rights
and in turn, retain their commercial value and continue to attract
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.Madgwicks is a member
of Meritas, one of the world's largest law firm
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