Intellectual Property Checklist

Authors: Ian Aldridge & Zeinab Farhat, Progressive Legal

Introduction

Progressive Legal® is on a mission to help Australian businesses and their owners with securing their Intellectual Property (IP) in a way that will ensure they can protect their brand, enforce their legal rights should they need to, learn more about the various IP they have in their business and understand how valuable it is for a business.

The problem we identified is that there’s no checklist out there for a business to know what they should consider when it comes to their IP. Until now…

Why is IP important?

We’ve created this checklist as a practical guide to assist businesses as IP is increasing in its value for most businesses and it’s becoming far more important than ever to take proper and reasonable steps to protect it. This is largely attributable to the advancement of technology and increase in globalisation. Many businesses are not sufficiently aware and are surprised how much valuable IP they have made when we advise them, and which has accumulated over the years.

What this checklist will cover

This checklist will:
1. increase your awareness as to how much IP you have in your business;
2. allow you to consider whether all the major boxes have been ticked;
3. provide guidance on whether there are other forms of IP you should obtain or move to register to protect; and
4. if your business legal structure has changed, have you considered whether some IP would need to be transferred in the right legal entity for it to be enforceable.

Finally, if the owners of the business would eventually consider selling at any stage or hand-on to future generations? If so, have you got your house in order? All of this should be legally neat and tidy, and all steps taken to protect the IP of the business. If not, it can potentially be fatal.

We have seen prospective purchasers balk at buying certain businesses where this has not been done, as they know how dangerous it is for a business not to have all this done because of the costly consequences that can result, which they would have seen. Opportunities have been missed as a result!

Step 1: Identifying your Intellectual Property (IP)

In order to consider what IP assets the business owns, you must first identify what types of Intellectual Property you currently have in your business (IP Inventory).  

You’ll be surprised just how much IP exists in your business! 

Step 2: Protecting your Intellectual Property

After you’ve identified the extent of your IP inventory, it’s essential that you consider the commercial/ legal risks which exist and any active steps you should be taking to protect it. This includes risks that exist either internally, with 3rd parties you engage and of course – your competition in the market you operate in.

The protection of your IP is a long process and begins from the moment you expend effort on creating your idea to the actual manifestation of that idea in physical form.

Registration of intellectual property in Australia

Trade marks: Have you registered your trade mark(s) with IP Australia? Find our trade mark registration service here.

Copyright: You do not need to register Copyright in Australia. Copyright is automatically recognised under the Copyright Act 1968 (Cth) (subject to satisfying the requirements of subsistence).

Designs: Have you registered your Design(s) with IP Australia? Our experienced registered design lawyers can help you do this.

Patents: Have you registered your Patent(s) with IP Australia? For more information about patent advice, click here.

Unregistered trade mark(s)

If you have an unregistered trade mark, you still have protection to stop other people from using it (i.e. under the common law of passing off, or pursuant to the Australian Consumer Law for misleading and deceptive conduct).

Trade mark and copyright notices

Do you use the symbol ™ for unregistered trade marks?

Do you use the symbol ® to show your trade mark is registered?

Here is an article if you want more information.

Ownership of intellectual property in Australia

Do you document your right to use IP works?

Do you document drafts and initial plans of your IP works?

Is the IP being used wholly owned by your company?

Do you require all employees and contractors to sign agreements which assign all IP rights to your company which they have developed while they are working for you?

Do you know under what name your social media accounts and domains are held in?

Where employment ends, do you conduct exit interviews with employees with respect to any IP issues (such as the return of company property, trade secrets etc)?

Has all IP which has been created externally (i.e. by contractors) been formally assigned to your company?

Corporate structure

If there is a group of companies, is your IP owned by the correct entity?

If you have a holding company and trading entity, is the IP held in the former, whilst the latter has a license to use it?

If you have moved to a new business structure, has the IP been moved to the new structure?

Is the IP co-owned (either between parties or entities)? If so, have you considered the implications of this?

Enforcement of rights

Where you are made aware that an infringement of your IP has occurred, do you send cease and desist / letters of demand to the infringing party putting them on notice of your rights?

Do you obtain legal advice regarding suspected infringements of your IP?

Use of confidential information

Do you have any processes or procedures in place to prevent the unauthorised disclosure of your business’s ideas or concepts?

Do you have Confidentiality Agreements/Deeds, or Non-Disclosure Agreements with your employees, contractors and other third parties?

Licenses

If another party is found to infringe an IP right that you have licensed, have you considered whether you or the licensee will pay any legal costs associated with dealing with the matter?

Documents

Have you identified all agreements you or your company may have with a third party? This includes and is not limited to:

1. license agreements;
2. assignment agreements;
3. distribution agreements;
4. non-disclosure agreements; and
5. non-competition agreements.

Have you identified other documents relating to Intellectual Property rights? This includes and is not limited to:

1. contracts with suppliers; and
2. contracts with customers (including terms and conditions etc).

 After reviewing the documentation, does each agreement identify:

1. The parties to the agreement?
2. The true owner of any IP developed under the agreement?; and
3. The rights being transferred?

Step 3: Avoiding the infringement of others’ IP rights 

Just as it’s important to protect your own Intellectual Property rights, it is also essential that you take active steps to prevent the potential infringement of third parties Intellectual Property rights, so as to limit your legal liability.

Identification of competitors

Do you have any processes by which you identify potential competitors in the market and the likelihood of infringing their IP rights?

Before you create your Intellectual Property, do you conduct a thorough review of any registered IP which you may potentially be infringing upon (such as trade mark searches on IP Australia)?

If you plan on selling your product/ services internationally, have you conducted the same review for the countries you intend to export your products or services to?

Due diligence

If you are purchasing a business, have you conducted your due diligence to ensure that the IP being used is not infringing a third parties rights?

Licences with third parties when using third party Intellectual Property in Australia

Do you have any licenses which allow you to use another parties IP? If so, are you across the terms of that license and how the IP can be used?

Do your licenses which allow another party to use your IP include indemnities against any tort or liability claims?

Use of hyperlinks

Are you sure that your online content (such as social media pages or website) does not link to or embed material which infringes copyright?

Seeking advice from legal professionals

Do you seek advice from any lawyers or Intellectual Property professionals as to your Intellectual Property matters?

If you require legal advice in relation to your Intellectual Property or your business more broadly, the team at Progressive Legal are experts in the field.

Feel free to call our office at 1800 820 083 or request our advice below to fill out our online enquiry form.