Welcome to my three part briefing on Intellectual Property for Startups and Creatives.

Part 1 of my Intellectual Property briefing for Startups and creatives covers What is IP, IP types and Registrable vs Non-registrable IP. Part 2 covers protection, people and IP and making money from IP. Part 3 covers IP enforcement and contentious matters.

IP ENFORCEMENT

There is no “central authority” which enforces IP. There are copyright bodies of people enforcing rights as a collective, but no body set up as part of IP legislation that enforces on our behalf. IP is a private right, so you have to set up mechanisms to protect it.

Below are some contentious matters you could face in regard to your or another party’s IP and how these matters could be managed.

A. You have IP and someone else is using it

There are 3 tiers/ways you can go about enforcing your IP rights

1) Work out your differences privately, negotiation/arbitration with those infringing on your frights. 99.9% of the time this happens.

2) If you cant work it out privately you can challenge at the IP Office Level, the patent office, trademark office, design office lets you challenge IP through their admin mechanisms (oppositions). Meant to be quicker, cheaper, nip it in the bud early.

3) You can challenge at a court level. In Australia generally file an action in the federal court. Some countries (UK) have a patent court, other countries have specialization within the court system.

Before you begin enforcing your IP you need to ask:

1) Who is infringing your rights? (not always obvious)
2) A monetary or business question, why do you want them to stop? (Money, Brand e.g Louis Vuitton, keeping up perceptions of quality in the marketplace, about losing sales and losing quality standards)
3) Why the enforcement worthwhile in terms of business strategy? Are you going to launch a $500k case against a guy selling $200 of product at the markets?

As an organisation you should be actively monitoring for infringement. If someone is eating your market solely you need to find out early not before it is too late. Keep an eye on potential infringers, conduct searches or watches on competitors or subject areas.

Get feedback from people on the ground (sales, service people, clients), this is a cheaper way to this, a client might be the first one to know something has been infringed. Salespeople will find out, “this guy is selling this for 20% less” – a lot of this isn’t fed back up to IP manager or management. One of the things you can do is get feedback at all times from those on the ground so you know what your competitors are doing.

B. Another party has IP and you want to contest it

Generally only done to registrable IP (Patents, trademarks, designs). There are three general ways, not involving court action:

1) Filing information during examination
2) Opposing a patent/trademark (special procedure which is similar to a court case heard by the IP Office)
3) Publicly disclosing information

Generally done in negotiation behind the scenes, cost varies depending on the path taken and effectiveness depends on circumstances.

C. Infringement on another party’s IP

Have a ‘plan’ for use if an infringement/problem is spotted. Some have an IP strategy (trademarks etc) but not a plan for this. As part of IP strategy you need to think about what could happen and who would make decisions on behalf of the company.

Who has the authority to make decisions (e.g sign off $8m case). Choose someone, nominate a committee on this particular issue.  Who performs preliminary study to verify infringement/cope of problem? Yes there may be an infringement, but someone who knows the market has to provide analysis on what damage it is doing to the company.

How do we approach an infringer? This is important in Australia in terms of how you come across to the court. Perception can be more important than reality, don’t want to be seen as bad guy by the court from day one. Interesting because a lot of cases are won or lost at the very start based on how you approach people, what you say to them etc, may be willing at the start to pay a reasonable royalty, could provide them this option when you find them infringing your patent.  As an IP strategy don’t want anyone in the market, innocent or otherwise using your IP, but not best approach to have no negotiations but just sue them with court action. Courts in Australia like to see that you attempted to negotiate before taking someone to court. Courts are seen as a last resort for a matter that can not be solved amicably between two parties.

How do we make sure it is progressed as quickly as possible? What sort of budget do we have (e.g how much is this worth to us?) Have to think about what your return is likely to be.

AUDITING YOUR IP

This involves going through assets from time to time, what are you going to keep, what are you throwing away. Things “fall through the cracks” in large organisations. Employees/third parties may take action without your knowledge, use your tech, start his own business for example.  IP may be forgotten as the company changes focus. IP rights may lapse, which may affect licensing agreements.