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#3252 - Protecting Ip Products - Commercial and IP

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Intellectual Property Rights

Protecting new IP products

Developing a new product:

  1. Pre-development phase

  • Record keeping system – showing the development of a product [trials / prototypes]. Use as evidential safeguard for future disputes

  • Copyright / Design notices on materials

  • Review competitor’s patents / RDRs – search registry

  • Negotiate licenses with third parties if necessary

  • Trade Mark Agent - instruct for application

  • Review contracts with employees – confidentiality / ownership of IP rights

  1. Development phase

  • Maintain confidentiality

  • Consider filing Patent / RDR application

  1. Product launch phase

  • Keep all development records

  • Third party infringement?

  • Confidentiality agreements signed prior to negotiations for licenses

  • Negotiate distribution / agency / franchise agreements

  • Negotiate with PR and Marketing companies – include the assignment of IPRs in the promotional material

Checklist for MAINTAINING Copyright / UDR & RDR

  1. Ownership

  • Assignment of all IPRs by employees / third parties

  • Waiver moral rights

  1. Records

  • Authors to sign and date work

  • Record date of first marketing

  1. Marking Products

  • Copyright notice

  • Name of owner and year

  • RDR: Registration number with words “Registered Design”

  • UDR: include worlds “Design Right”; name of owner and year of first marketing

  1. Infringement

  • See notes

  1. Registered Designs

  • Records of when renewal fees are due

  • Ensure monopoly is exploited; otherwise compulsory license may be sought

IP agreements and IP clauses in commercial agreements

Law of confidentiality

  • Make Confidentiality Agreement

  • See separate notes

Trade mark license agreements

  • Trade Mark License:

    • Used to exploit ownership of IP and related rights

    • What amendments will the client want [liability; rights to terminate for breach of warranty]

    • TM Act 1994:

S.30

Rights for licensees in the case of infringement of TM

  • S.30(2) Licensee can require the proprietor of the registered TM to take on infringement proceedings [and pay for it] in his own name.

  • S.30(2) If proprietor refuses to do this – licensee can bring infringement proceedings in his own name. Proprietor must then be added as a plaintiff / defendant.
S.31

Rights under a exclusive license

  • Licensee to have the same rights and remedies as if the IP right had been assigned to him.

  • Licensee can bring infringement proceedings in his own name.

Confidentiality Agreements

  • Law on confidentiality = keeping important information secret / protection against unauthorised disclosure.

  • Can occur within or outside a employment situation

  • The right arises automatically and lasts indefinitely

  • Express or implied into a contract [Confidentiality Agreement]; or

  • Equitable doctrine: [Coco v A.N Clark]

  1. Did the information have the necessary quality of confidence about it? [i.e. go beyond identifying desirable goals. A certain degree of definite product needs to be shown] –

  • element of originality

  • identifiable as an idea of the confider

  • potential commercial attractiveness

  • sufficiently well developed – to be capable of actual realization.

  1. Was the information imparted in circumstances importing an obligation of confidence

  • Express in contract

  • Accepted trade practice

  • Make confidentiality clear

  • Person knows he should not have information

  • Public interest to enforce confidentiality

  1. Was there any unauthorised use of the information?

  • Injunction

  • Compensatory damages

  • Account of profits

ADVICE: caselaw has shows it is better to expressly state something is confidential rather than rely on implied confidentiality [see De Maudsley] p.268

Remedies

  1. Injunction: Courts will grant where:

  • 2 commercial competitors. To not grant to injunction would give the wrong-doer a advantage; or

  • One business would gain an unfair advantage after hearing the information.

  1. Compensatory damages

  2. Account of profits

  3. Delivery up / destruction under oath

The position of the former employee:

Employer can secure protection for his secrets by requiring employee to enter into a covenant in restraint of trade and confidentiality agreement.

Faccenda Chicken v Fowler = categorizes the types of information and consequent confidentiality status falling into 3 groups:

1 Mundane, easily obtained info that is already in public domain – such info cannot be protected as it is not confidential
2

Confidential info that employee knows / ought to know is confidential but which enters the employee’s mind as part of his own “stock and trade” of skill and experience – to be used in his future employment.

This will be confidential during employment but will not be protected after termination of employment UNLESS there is an express agreement otherwise.
3 Highly confidential information – protected under implied term of good faith between the parties – [during and after employment – regardless of whether there was a express agreement or not]

Infringement

  • Breach of confidential agreement

Advise to client:

  1. Restrict access to information – treat it as confidential

  2. Get employees to enter into confidential agreement

  3. Dealing with manufacturer: keep records of everything M has received [list of documents and information] so you can get them back more easily.

  4. Mark documents “confidential”

  5. Provision in contract with M: return all information / documents on termination of the agreement; must not make any unauthorised copies; information is to only pass by a restricted number / group of people
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