These days, companies constantly confront IP issues in their daily business activities on a range of topics, including understanding who owns copyrights and trademarks on ideas and creations made in the workplace, ways to protect their brand, infringement and copyright issues.
Sally Shorthose, partner in the UK firm of Bird & Bird, sat down with Inside Counsel recently to discuss the most frequent intellectual property issues companies struggle with in their daily business activities. She shared everyday issues that come about and how to protect the valuable IP assets of your business.
On the transactional side, Shorthose is often asked to carry out due diligence prior to a transaction (whether M&A, licensing or collaboration) to identify the quality of the IP that is the subject of the transaction, and whether there are any steps to take to strengthen or protect the portfolio, by establishing freedom to operate or rectifying the terms of a license for example.
“Our litigation colleagues may well be approached by clients with strong brands to send a ‘letter before action,’ which has to be carefully crafted to avoid assertions of threats to assert their IP rights against an infringer or potential infringers of those rights,” she explained. “A well drafted letter can bring the matter to an end, but if the other side wishes to defend its actions the matter can become a full blown litigation matter.”
These queries cross a whole range of sectors but brand rich or technology rich companies will tend to be particularly attuned to potential infringements and may have set up a watch service to look out for these.
Today, due diligence exercises cannot or should not be avoided – it is a normal way of doing business and building trust, according to Shorthose. However, careful management of IP and carrying out an IP audit from time to time, can make the due diligence exercise extremely straightforward and is therefore recommended.
“To avoid being the recipient of the cease and desist type letters of action which we tend to prepare, care and research should be undertaken before launching a brand or a new technology to ensure that it is not going to infringe the rights of a third party,” she said. “Proper care at this stage can save a great deal of time and money, and wasted opportunities.”
So, what are ways that people can protect the valuable IP assets of their businesses?
“So many ways!” Shorthose told us, but she shared some basic guideline including: Ensure inventions or creations made by employees are automatically owned by the employer; check contracts with service providers to ensure they have assigned IP; ensure NDAs are entered into as necessary and that they are detailed to enable them to be enforceable; only disclose confidential information under an NDA and then only as is absolutely necessary and if in doubt, don’t; check with collaborators that you will gain the IP rights that are needed to give commercial effect to that agreement; check early on that IP is registrable (as a trade mark, patent or a design) and; never copy the work of third parties without their permission as it can be very expensive to put infringement right.
She explained, “We see a lot of software infringement enquiries as copyright in software can be so very many layered and involve so many different stakeholder and creators. Brand owners spend a lot of time actively policing their brands to avoid dilution, ands similarly we see a lot of design right been actively protected; especially in the fashion industry time is of the essence.”