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
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|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'|
|Automatically when database is created||15 years from creation or publication or substantial update||No||Must be created in the European Economic Area|
|If registered or unregistered||UK: Can be reviewed indefinitely in 10-year blocks||Yes||To be registered , they must be distinctive and not descriptive|
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|
|Registration required||UK: 20 years from date application filed||Yes||Must be new, involve an inventive step and be capable of industrial application|
Appearance of product
|Registered and unregistered||UK: five years (can be renewed up to 25 years)||Yes||Must be new and have individual character|
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|