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  1. Introduction
    • Traditionally, a company’s most valuable assets were its buildings, equipment and stock but now intellectual property can comprise more than half of a company’s value. For example, one of a business’ greatest assets is their brand as that is how customers differentiate them from their competitors.
    • Intellectual Property is a broad term which can describe many intangible assets including invention, formula, computer code, brand, design or artistic creation. Intellectual property rights fall into a number of categories, including:
      • Copyright:
      • Patent:
      • Trade mark;
      • Design; and
      • Domains
  1. Protecting Your New Intellectual Property
    • The first consideration business people must consider is how to protect their intellectual property, whether that be their brand, invention, ideas, etc. The protection strategy depends predominantly on the type of intellectual property which is to be created.
    • Copyright protects expressions of ideas, including business plans, circuits, manuals and drawings. Copyright material is governed by the Copyright Act 1968 (Cth) providing sole economic rights to the creator at the time of creation, including the right to publish and copy. The rights are created at the time of creation and, as such, there is no formal registration process required.
    • A patent is a right granted for any device, substance, process or method which is new, beneficial and creative. A patent provides the patent holder with the exclusive rights to commercialise and use the patented invention.
    • A trademark is often called a brand, it is a business’ identity. It can include a word, phrase, letter, number, logo or picture. The registration of trademarks in Australia is governed by the Trademarks Act A common misconception is that the registration of a business name or domain prevents people from using that name but this is merely a regulatory requirement to run a business, it does not prevent people from using similar names, which is why businesses register trademarks.
    • The Designs Act 2003 provides for the registration of industrial designs to use, make and sell products under the registered design for up to ten years. Registrable designs must have features of shape, colour, pattern, configuration or ornamentation, which are present in the product and which must be apparent to the eye.
    • Registering a domain name is imperative to protecting copyrights and trade marks, as it secures unique product names.
  2. Commercialising Your Intellectual Property
    • Once you have created your intellectual property and done what is required to protect it from unauthorised third party use, you now need to take it to market to bear the fruits of your investment. At this stage, it is vital that you have the right documentation in place. Receiving advice at the right time can often be the difference between a successful or regrettable transaction.
    • The first thing to consider is confidentiality agreements when negotiating with third parties. There are many basic 1-2page agreements which you can download for free but these give very little extra protection.
    • The most common strategy to commercialise intellectual property is to licence the asset to a third party. This allows you to retain ownership and control of the intellectual property but grants the third party a right to use the intellectual property for a defined purpose and defined time period in exchange for payment of a fee.
    • The nature of the intellectual property will determine the best method to commercialise the asset. For example, we recently prepared a platform licence agreement for a medical business allowing practices access to a novel “symptom checker”
    • Finally, some businesses will look to use another business’ intellectual property in order to grow their business, such as law firms using a document management software. In these circumstances, our lawyers frequently assist in the reviewing and negotiating of agreements, advising on particular clauses, performing due diligence and the potential risk in foreseeable events and compliance advice.
  3. Enforcement and Protection of Intellectual Property
    • Laird Lawyers act in all aspects of intellectual property protection, enforcement and recovery. The method of enforcement, unsurprisingly, depends on the nature of the intellectual property, who is looking to commence proceedings and against whom proceedings are being commenced.
    • Generally, proceedings are commenced in the Federal Court where a judge is assigned to manage the case. As intellectual property disputes are usually quite technical and complex, they take a little bit longer than general commercial litigation (up to 2 years to get to judgment). For this reason and the potential financial implications, it is imperative that you engage lawyers who are experienced in complex litigation.
    • If successful, the applicant may obtain a declaration, an injunction to restrain further infringement, damages, an account of profits and other ancillary orders like delivery-up of infringing products.
    • For example, our lawyers acted in a matter where a major shareholder left a company and, as part of the sale price, signed over all rights in the company’s intellectual property. One day the shareholder copied all materials and set up a new business using all the pervious company’s intellectual property, relying on the defence that it did not breach copyright as the materials were a compilation.