Intellectual Property

Why is this item important?

You need to understand the various intellectual property ( IP) rights relevant to your business, to ensure that your brand and products are properly protected. These could include patents in relation to a novel product, trade marks for your brand and various products, copyright in relation to a whole range of items like computer programs, artistic works, musical works and various literary works. There are also IP related items such as domain names to consider. Those rights should then be registered with IP Australia, and if necessary, overseas. Some IP rights such as copyright are not registered, but you should assert your copyright by using the © logo with appropriate wording.

How can I tell if I meet this item in my business?

You have already identified the IP rights in your business, and also have a dedicated IP register for your business, as well as a dedicated staff member whose task it is to identify, register and monitor any infringements of your IP rights.

What do I need to do to meet this item?

·        Draw up a comprehensive IP register, which identifies, and if appropriate, registers your IP rights with IP Australia and possibly overseas and which records full details of the rights, including registration and renewal dates. It’s also prudent to record dates six months before renewal dates to ensure that they are re-registered on time. The register should be regularly updated.

·        A specific person should be appointed to identify, register and monitor any infringements of your IP rights

Why is this item important?

It’s crucial to protect your brand and any significant or unique products developed by your business in the marketplace and to ensure that other businesses do not trade in competition to your brand and create confusion in the marketplace and damage your brand. There is a popular misconception that a business name or company name provide adequate IP protection for your brand or product. It is not correct-a registered trade mark is required.

How can I tell if I meet this item in my business?

You will be aware if you have registered trade marks, as this is done through IP Australia or other regulatory entities overseas and you will have documentary proof of registration. You may have so-called unregistered trade marks in your business, which need to be formally registered.

What do I need to do to meet this item?

You should consult a suitable trade mark lawyer or other professional to advise and assist you with the trade mark process. It’s important to obtain proper advice, to ensure that the proper marks are registered in an appropriate business entity, not only for your brand but for any significant products. IP rights are often registered in separate legal entities to the trading entity for asset protection purposes.

Why is this item important?

It’s vitally important to recognise the difference between normal employees and independent contractors. This is a fairly confused area of law and there are a number of criteria which need to be considered to properly understand the distinction between the two, as normal employees are entitled to various entitlements which do not apply to independent contractors. Our courts and tribunals also consider the substance, rather than the form of an agreement, so it’s simply not acceptable for example to record the relationship in an independent contractors agreement, when in fact the person is a normal employee. The courts and tribunals will see through that and this could have significant financial implications in relation to unpaid entitlements.

How can I tell if I meet this item in my business?

·        Your management and staff understand the difference between the two types of employment and the relevance entitlements in each case.

·        You have a dedicated staff member or external professional human resources advisor, whose task it is to properly identify the nature of employment and ensure that appropriate written agreements are signed when employees/independent contractors are engaged.

What do I need to do to meet this item?

·        Educate your management and staff regarding the different types of employment.

·        Appoint a dedicated staff member or external professional HR advisor to ensure that your business has comprehensive employment contracts and/or independent contractor agreements.

·        Ensure that employees or independent contractors are properly engaged during the onboarding process and that written agreements are signed.

Why is this item important?

IP rights can be very valuable and must be retained by the business. In general, IP rights developed by a normal employee would belong to the business, provided the employee is acting within the scope of their employment. However, there can be grey areas regarding whether the IP was developed during the scope of that employment. Ownership of IP is less clear-cut with independent contractors, so both normal employment and independent contractor agreements need to include clauses protecting both ownership and confidentiality in relation to IP rights.  Disgruntled ex-employees can cause significant financial damage to a business if this aspect is not properly handled.

How can I tell if I meet this item in my business?

You have comprehensive clauses in both sets of agreements, reserving ownership of IP in favour of the business and preventing employees from using those IP rights in any way. You also have comprehensive provisions relating to confidentiality of such IP, particularly after termination of employment.

What do I need to do to meet this item? 

Ensure that you have comprehensive clauses in your agreements relating to ownership, usage and confidentiality of IP rights, particularly after termination of an employment or independent contractor relationship.

Why is this item important?

In general, distributorship and supply agreements need to clearly define the terms of any agreement with your business. As regards your IP rights, distributors and suppliers need to understand that if they have access to any of your IP rights, then you retain ownership of those rights, even though in certain circumstances you may license distributors to use certain of your IP. It must also be made clear to distributors and suppliers that certain information supplied to your business may be confidential and this must be made clear in any agreements. If your IP and confidential information are not properly protected, this could result in significant financial loss to your business.

How can I tell if I meet this item in my business?

·        Check to see if you have properly drafted written contracts with suppliers and distributors.

·        If so, also check to see whether there are adequate terms dealing with ownership and protection of your IP and confidential information.

What do I need to do to meet this item?

·        Have properly drafted written contracts put in place with all suppliers and distributors. Depending on the size of your supplier, they may provide you with their standard supply agreement, which should be reviewed to make sure you properly understand the terms. If possible, you should negotiate any terms which are unfavourable to your business.

·        Ensure that any contracts include comprehensive terms dealing with ownership and protection of your IP and confidential information.

Refer checklist item 1