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Lawyer Mathilde Heaton explains how to exploit your intellectual property rights

If you are developing software products in-house, the intellectual property inherent in them could be a key asset. But do you know if your business owns any rights or how to protect and exploit them?

Here are some tips on how to make the most of your company's intellectual property rights.

Keep records of all intellectual property rights and when and by whom they were created. This establishes ownership and is useful for infringement actions

Before independent contractors start work, check you have a signed contract from them which includes an assignment of intellectual property rights to you

Check that your standard employment contracts and directors' service contracts include assignment of intellectual property rights to the company. In the UK employers automatically own copyright in work created by their employees, but this is not the case everywhere

Secure intellectual property rights in your key markets and take local legal advice as requirements may differ

Obtain signed confidentiality undertakings before disclosing details of an invention, for example in the context of commercial discussions or test marketing

Register your main brand names as trade marks and domain names in the territories you are targeting

Be vigilant about enforcement: put potential infringers on notice as soon as possible

Decide whether licences should be non-exclusive, exclusive or sole and what type of controls you want, for example territory or quality control

Consider appointing agents or distributors with local knowledge: agents act as intermediaries and the supplier controls the terms, whereas distributors buy the goods and sell them on

Take care when asked to give indemnities against infringement of third-party intellectual property rights. Assess the likelihood of claims arising and whether your insurance cover will be invalidated as a result. 

Mathilde Heaton is an assistant with law firm DLA's technology, media and communications group



Overview of intellectual property rights

 

What is protected? When do rights exist? How long do rights last? Is registration required? Other factors
Text, music, artistic works, computer programs, databases, recordings, films, broadcasts  Automatically when work is created or recorded UK: 70 years or life of author plus 70 years Not in the UK. Necessary in US and optional in Italy, Japan, Spain and Brazil Work must be 'original'

Database rights
Databases

Automatically when database is created 15 years from creation or publication or substantial update No Must be created in the European Economic Area

Trade marks
Signs (eg brand names/logos)

If registered or unregistered UK: Can be reviewed indefinitely in 10-year blocks Yes To be registered , they must be distinctive and not descriptive
Domain names
Electronic addresses for websites
Allocated on a first come, first served basis Can be renewed indefinitely Yes Some domain names are reserved for particular types of registrant
Patents
Inventions
Registration required UK: 20 years from date application filed Yes Must be new, involve an inventive step and be capable of industrial application
Design rights
Appearance of product
Registered and unregistered UK: five years (can be renewed up to 25 years) Yes Must be new and have individual character
Trade secrets
Unauthorised use or disclosure of technical or business know-how
As soon as data is created For as long as data remains outside public domain No Must not be in the public domain



 

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This was first published in October 2003

 

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