How to Manage Intellectual Property to Produce Wealth
Establishing awareness of intellectual property amongst staff of your business is important for early maximizing the value of your intellectual property and the wealth of your enterprise and decreasing the possibilities of accidental non-confidential disclosures, that could prejudice successful patent applications and negatively impact the value of your intellectual property and ultimately the wealth of your company.
Typical training sessions of staff on intellectual property are key and need to consist of the following:
how to identify and safeguard intellectual property
how to use patents to improvements of technology
understanding Patent Process
how to deal with confidential info (see some examples in the scenarios below)
record keeping of intellectual property, which includes laboratory notebooks and policy on intellectual property and
who to contact in case of want.
The record keeping procedures and manuals will address the following questions:
has the inventor kept the notion confidential?
is there a written description of the thought and has been kept safe and confidential?
how the notion has been generated? If during a collaborative programme, then was it agreed beforehand who owns what?
is the notion a new product, a new material, a new procedure for generating some thing? If so, is it patentable or protectable in any other way?
is the notion a variation in a item or material or process? If so, it is still likely to be patentable or protectable in any other way?
who generated the concept? The answer to this question is really critical in the event self-employed or other third party consultants are involved in any research and development or collaborative project.
The principal object of this record keeping is to track, protect and maintain all relevant intellectual property rights of the business so that intellectual property can be licensed, assigned or exploited to the fullest extent and benefit of the organization.
The record keeping procedures really should also contain a form upon which, potential inventions should be recorded identifying the following:
Who: department and analysis region
Named individuals: inventors and authors
What: technical description
Why: perceived novelty
How to use the information: prospective applications/markets
What else is needed: background or third party intellectual property and information.
The right use of laboratory notebooks by staff is also crucial. In the event of a dispute laboratory notebooks might be necessary to be presented as legal evidence.
It is as a result recommended that:
permanent bindings are used on notebooks (loose leaf books ought to be avoided to avoid feasible removal or substitution of pages)
pages need to be numbered and any extra drawings cards or computer printouts should be permanently attached to the notebook clearly identified and have reference produced to them in the notebook
all projects related and other activities, such as breaks in research due to secondment or holiday need to be recorded factually and
the notebook really should be reviewed regularly by an individual who understands the technology involved, each and every page should ideally be signed by a witness and again the option of the witness is essential and ought to not be someone who might be nominated as core inventor. The witness ought to also sign and date and graphs, chart, printouts, which are inserted into the laboratory notebook.
In addition, to the use of appropriate record keeping procedures and notebooks, an evaluation of IPR policy should be adopted. Such an evaluation need to incorporate aspects, such as potential market, marketplace, impact, competitive products, timing, intellectual property protection available and experience in the field concerned.
Finally, as soon as relevant intellectual property rights have been identified, protected, exploited and enforced, it is advisable that, standard audit of such rights is undertaken to guarantee that, the intellectual property rights reflect the current needs of the enterprise and that expenditure is limited accordingly.
How to take care of confidential data:
Scenario 1 – What to do, if receiving confidential data (under a mutual confidentiality agreement).
Have you been asked to sign a confidentiality undertaking? If so, please check that it is only confidentiality restriction and not a transfer of intellectual rights.
Obtain express confirmation from the discloser, that the information is not confidential, where achievable, just before disclosure.
Make a written record of what was disclosed, by whom and when.
Please bear in mind that, an obligation, to keep information confidential, consists of the obligation of not disclosure or not use of the info, without having the permission of the individual to whom the obligation is owned.
Scenario 2 – What to do, if giving out confidential details.
Put in writing or some other permanent form.
Mark any documents with proper confidentiality and IPR disclaimers.
Maintain a copy of what is disclosed and a record of when and to whom.
If an oral disclosure is produced in confidence, confirm in writing what was disclosed and what was given in confidence.
Have the recipient sign a confidentiality undertaking in advance of the disclosure.
Scenario 3 – If publishing or presenting technical papers:
Take into account whether anything in the paper describes a new device, chemical compound or manufacturing method or a substantial improvement or modification to any such matters.
Do not disclose anything, with out very first considering the possibility of the content of the papers becoming patentable in whole or in component.
Consider whether there are any restrains, under any relevant agreements (including research and development or collaboration agreements).
Keep an eye on any relevant timetable for confirming publication.
Request that, the publisher confirms confidentiality on receipt of paper pending decision on publication.
Please, often bear in mind that, any document exchanged, should be clearly marked as becoming confidential.
Scenario four – If starting discussions on a collaborative project:
Contemplate what background IPR, if any, are totally free from obligations of confidentiality and could be introduced to the project.
Prior to disclosing any data to third parties, have a confidentiality agreement signed. Such agreements, may possibly take a lot of forms and the terms need to be adjusted in accordance with the particular circumstances.
You need to constantly consist of the following:
- identification of parties
- what information is to be kept secret and
- for how long.
If in any doubt, consult your legal adviser.