SMEs: Top 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 generally own any IP your employees create “in the course of their employment”.

1. Ideally, an employment agreement should expressly deal with the creation of IP. Absent express terms, employers will generally own IP created in the ‘course of an employee’s employment’,
2. If an employee/s creates a valuable piece of IP, consider whether it has been created in the course of their employment.  That is, was the IP created as part of their position description and normal duties?
3. If in doubt, ensure that the employee has formally transferred (assigned) the IP to you in writing (by way of a suitable assignment document).
4. 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 to create the IP.

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

1. If you engage a third party to create something for you, then (absent express contractual terms) the third party will typically grant you a non-exclusive licence to use that thing.
2. 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.
3. 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.

Need Help to Protect Your IP?

Intellectual Property Lawyers can assist with putting the necessary protections in place to ensure that valuable IP does not leave your organisation. Contact us to book a free consultation.