In this post we’re going to take a look at how employers can seek to protect their commercial interests in the intellectual property that is produced in the course of employment. If a business fails to protect or exploit intellectual property then this can lead to potential losses (including loss of potential profits) in the future and may also lead to protracted and costly litigation (depending on the circumstances). We’ll examine the following in this post:
- Contracts – get valid and enforceable contracts drawn up for employees and consultants
- Evidence – keep records and evidence of the intellectual property that is produced in the course of employment
- Protect – make sure that you take the right steps to assert and maintain ownership of intellectual property
- Advice – take specialist advice from solicitors
- Enforcement – be prepared to aggressively enforce your ownership rights over your intellectual property
1. Contracts – get valid and enforceable contracts drawn up for employees and consultants
You should get – if possible – experienced employment law solicitors to draw up the contracts for your employees and consultants. Work produced in the course of employment is generally deemed to be owned by the employer but it is a good idea for the contract to expressly state this. Further, the employer may wish to attempt to gain ownership of intellectual property that is produced by employees or consultants outside of the course of employment. If so, the contract needs to expressly state this.
2. Evidence – keep records and evidence of the intellectual property that is produced in the course of employment
Good record-keeping and administration is one of the keys to success with any business. Regardless of the type of intellectual property in question (whether it is a work subject to copyright, a trademark, a design right or a patent) the production process for the intellectual property should be properly recorded at each stage to ensure that there is no doubt as to who produced and owned the intellectual property.This will substantially reduce potential problems in the future if there is a question as to the ownership of the property.
3. Protect – make sure that you take the right steps to assert and maintain ownership of intellectual property
Although this applies to all types of intellectual property, it is important to make sure that (in particular) the right applications and filing processes are undertaken with trademarks, patents and design rights. A failure to get this right could mean that you either partially or wholly fail to assert your right in the intellectual property.
4. Advice – take specialist advice from solicitors
Although it is not strictly essential to take advice from intellectual property solicitors, it is advisable to obtain an expert opinion if you’re unsure as to whether or how to assert your rights in intellectual property.
5. Enforcement – be prepared to aggressively enforce your ownership rights over your intellectual property
If you believe that a third party is unjustly exploiting your rights in a piece of intellectual property (or that information pertaining to intellectual property has been disclosed to a third party in breach of the duty to maintain confidentiality) then you may wish to threaten or pursue litigation against the offending parties. Enforcing your right in intellectual property is important not just from a commercial perspective – if you fail to assert your rights then you may encourage other parties to also attempt to take advantage of you.
Direct 2 Lawyers offer employment law advice from employment solicitors