Ownership of Intellectual Property (IP) carries a huge responsibility. It requires great deal of understanding and knowledge of the assets that you or company owns. Also, ownership of IP is of no consequence if the IP is not protected and exploited, which also depends on the type of IP, it may be either, a patent, trademark, copyright or design. It may require formal registration or other methods of protection.
The owner must be prepared to extract the maximum value from the IP, and to do so require judicious management. In managing your IP you must embark on a coherent strategy for protection and have in place the requisite polices, for example:
- If you don’t already own the IP then you must acquire it, so you should have in place an Acquisition Policy, on how each IP is acquired by way of a licence, sub-licence, assignment, franchise or a straight forward buy-out.
- Exploitation Policy – once you have the IP you must exploit it, whether by licensing, franchising, joint venture or other commercialisation of the IP, giving due consideration to the geographic boundaries, nationally or internationally.
- Always have in place a Monitoring Policy. This should provide for conduct of regular IP audits, to determine, time limits on expiration on registrations, has any new rights been created or lost. Monitor any new technical developments. New opportunities, possible new partners, are your current partners and licensees working hard enough and exploiting the IP fully as required under the contract.
- You should have a clear Enforcement Policy, to protect and enforce your IP rights. However, always proceed with caution, before claiming infringement and issuing proceedings. A clear policy should protect you against possible financial losses, counterfeit goods and piracy.
Managing one’s IP should also include the consideration of obtaining IP insurance, to cover legal expenses and any other expenses that may be incurred.
When managing your IP it’s possible that you may become involved in a dispute. Intellectual property disputes usually concern ownership, what the IP rights cover and should it be protected. The greater the value of the IP the more likely it is another will try to make use of your IP without wanting to pay for the exploitation.
Resolving a dispute will depend on whether, you have infringed the IP of another or someone has infringed your rights. As it has been mentioned previously, the rights holder of the IP has a responsibility to protect and enforce the rights of the IP.
There should always be some attempt by the parties to amicably resolve a dispute before resorting to take legal action. Therefore, the parties should consider:
Always seek legal advice immediately on taking the next step. You may need to obtain an injunction to stop any further misuse of your IP.
Attempt to resolve the dispute by the agreeing to take a licence. If the infringing party accepts they are in the wrong, the next step would be to consider granting a licence of the goods or services. If a settlement cannot be reached the other option would be consider alternative dispute resolution.
Alternative Dispute Resolution – (mediation or arbitration) which are good alternatives to litigation, which may be less costly and less time-consuming. Arbitration generally has the advantage of being a less formal procedure than court proceedings, and an arbitral award is more easily enforceable internationally. An advantage of mediation is that the parties retain control of the dispute resolution process. Thus it can help to preserve good business relations with which you may like to collaborate in the future.
The Intellectual Property Office, has a procedure for referring disputes to the ‘Appointed Person’, this is a fairly open process where the parties can choose how they proceed, papers only hearing or giving oral evidence.
If all else fails, the next step would be to issue proceedings, in the county court or high or the specialised Intellectual Property Enterprise Court or the Patent Court.