FAL Lawyers
Menu
Home Our People Legal Services Intellectual Property Industry Expertise News & Resources Contact Us
Back to Resources

SMEs: Top 5 Tips for capturing IP

Businesses should check to ensure that they have the right tools in place to capture valuable intellectual property (IP) benefits created by their employees and in collaborations with third parties.

Following are the key guiding principles and some tips to consider:

Dealing with Employees

Guiding Principle: You automatically own any IP your employees create “in the course of their employment”.

1.      If an employee/s creates a valuable piece of IP, consider whether it has been created in the course of their employment.  That is, is the creation of such IP part of their position description and normal duties?

2.      If in doubt, ensure that the employee has formally transferred (assigned) the IP to you in writing.

3.      Ensure employees know their duties with respect to disclosing IP to you and treating your confidential information as confidential.

Dealing with Third Parties

Guiding Principle: You do not automatically own any IP created by a third party, even if you have engaged the third party.

Third parties include anyone who is not employed by you - consultants, volunteers, collaborators, universities, research institutes, directors, family members, even friends!

4.     If engaging a third party, ensure you have a written contract in place which specifically states what they will do and that you will own any IP they create in the course of the engagement.

5.     As a fall-back position, if a third party has created a valuable piece of IP, seek a written assignment (transfer) of such IP from them.

This article is customised from a presentation given by Jason Watson at the Mondelez International Food Innovation Centre, SME Innovation & Collaboration Workshop.

Jason Watson

21 October 2014