The ins & outs of intellectual property: Business Breakfast Club June Summary

WRITTEN BY Lauren Babic

This month at Business Breakfast Club, Lauren Babic of BAL Lawyers discussed all things intellectual property—how to define your organisation’s intellectual property, how to protect it, how to share it with partners for the purpose of co-development and the rights of joint owners.

Intellectual Property

Intellectual Property, or “IP”, is a broad umbrella term that encompasses a range of proprietary and related rights over intangible things. It exists in various forms, such as inventions, brands, designs or artistic creations.

How do I define my company’s IP?

“Ideas” are not capable of legal protection, unless you can fit the communication of the idea into one of the categories that allow protection. The communication or expression of the idea usually has to have a certain amount of originality to it.

The key forms of IP (though not exhaustive) are:

  1. Copyright, protecting the original expression of ideas in works of art, literature, music, and drama, as well as films, broadcasts, recordings, compilations, computer programs, and so on.
  2. Designs, protecting the overall appearance of a product resulting from one or more visual features of the product (although not the product itself).
  3. Trade Marks, protecting ‘signs’ used to distinguish goods or services from your competitors in the course of trade. ‘Signs’ can include letters, numbers, words, phrases, sounds, smells, logos, shapes, pictures, movements, aspects of packaging or any combination of these.
  4. Patents, protecting inventions that are new, inventive and useful, including devices, substances, methods or processes.
  5. Confidential information, protecting ‘trade secrets’ and other information imparted in confidential circumstances from further disclosure (although this is a bit of a special breed and is not a proprietary right, per se).

How do I protect my company’s IP?

Copyright protection is automatic, and springs to life upon the creation of the work (presuming it meets the relevant legal criteria). However, there are several practical things you can do to protect your work, including copyright notices, attributions, keeping work confidential unless you need to publish it, and carefully documenting any rights you assign or licence to third parties.

Trademarks and designs are different from copyright. These rights are not automatic, and depend on successful registration with IP Australia. There are extensive requirements that must be met when submitting such applications, including proof of things such as originality, distinctiveness, novelty, and other requirements. Similar practical considerations also apply – keep the work confidential unless you need to publish it, and document any third party rights.

Joint ownership rights

Joint ownership may arise on the basis of a verbal or written agreement between parties to that effect (apportioning ownership) or where multiple parties simply contribute to the creation of the IP.

Where documented, it is critical that the agreement covers areas such as who has ownership, when ownership will be transferred, whether consents are required, who will cover the costs, the granting of licences, and confidentiality.

Without a written agreement, the law will step in to provide a default position on critical factors concerning interests in the IP, exploitation and licencing. Usually, joint owners will be restrained from exercising their rights without the consent of the other and neither joint owner can realise any economic benefits without doing so together.

For more information, please contact our Business & Commercial Team.

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