Tip # 1 – Conduct an IP audit

What is it?

An Intellectual Property ("IP") audit is a systematic review of the IP assets owned, used, or acquired by the not-for-profit ("NFP").

Purpose

The purpose of conducting an IP audit is to:

·        Uncover underutilised IP assets,

·        Identify any gaps in the NFP’s IP protections, and

·        Enable the board or management committee to devise informed strategies that will maintain and improve the NFP’s position and reputation.

Steps:

1. Identify

Identify your NFP’s IP assets. Examples of assets include:

• Registered trade marks,
• Copyright owned by the NFP,
• Licenses (in, out, and cross-licences),
• In-house manuals, publications, training, databases, and recipes/formulations,
• Trade secrets, know-how, and other confidential information,
• Goodwill and client loyalty,
• Product certification and regulatory approvals,
• Distribution contracts and client lists, and
• Marketing and advertising strategies.

2. Assess

Assess what the NFP’s legal rights are in relation to each item of IP identified. Consider the following questions:

·        Does the NFP own the IP?

·        If the NFP does not own the IP, is there anagreement in place granting the NFP a right to use the IP?

·        Are there any restrictions affecting the NFP’sability to freely use the IP?

·        Should the IP be registered to increaseprotection?

3. Value

Understand the value of the NFP’s IP rights.

Some good questions to reflect on include:

·        What is the commercial benefit of protectingyour NFP’s rights?

·        What would the economic damage to your NFP ifits IP rights were infringed by a third-party?

·        How closely is your NFP’s IP tied to its fundingand reputation?

Tip # 2 Keep records of your IP

Keeping an IP register can help NFP’s keep track of their IPrights. Details that may be entered onto the register include:

·        Type and specifications of the relevant IP

·        Owner of the relevant IP

·        Licences (and limitation) for use of therelevant IP

·        Official registration numbers for the relevantIP

·        Allowable uses of the relevant IP

Tip # 3 Develop an IP management strategy

The development of an IP management strategy can help NFPs

Internal management

Consistency is key to the management and protection of anNFP’s IP. For greater protection, an NFP should consider implementing thefollowing:

• Document     management system
• Training     programs to educate employees about the risks and ramifications associated     with unauthorised or improper use of IP
• Use     of IP policy
• IT security     policy

External strategy

As the stakeholder reach expands, an NFP’s IP can becomemore valuable. It is important that NFPs take steps to prevent the infringementof their IP by third parties and ensure that they themselves are not infringingthe IP rights of someone else.  Thefollowing measures can be implemented to discourage misuse:

• Include     terms and conditions on the NFP’s website relating to use of the NFP’s IP

• Acknowledge     IP that the NFP uses by does not own
• Include     attributions where required
• Use     tools such as ‘watermark’ on images and documents
• Identify     an image, identify copyright owners, its country of original and permitted     uses
• Use     disclaimers as commencement of each section, or link to disclaimers

Infringement strategy

In the event that a third party does infringe your NFP’s IPrights, an IP infringement strategy can provide pre-liminary guidance on thesteps to take to resolve the issue. When developing an IP infringementstrategy, NFPs should consider:

·        Proactive detection – eg. conducting scheduledinternet searches to ensure other business are not infringing your NFP’s IPrights

·        Reporting obligations of staff and volunteers onbecoming aware of IP infringement

·        Budget for dealing with IP infringement

·        Consulting a legal profession for bespoke adviceand strategies

Tip # 4 – Have the appropriate agreements in place

Many NFPs work collaboratively with other organisations andcontractors to achieve their purpose. These kinds of collaborations can includethe development, exchange and use of IP – so it is important that the properagreements are in place to protect your NFP’s IP rights. When engaging incollaborative or contractual arrangements, NFPs should consider the followingquestions:

·        Are the proper confidentiality/ non-disclosureagreements in place?

·        Do contractor agreements provide for theassignment of IP developed for the NFP?

·        Does the NFP have the appropriate licence to useits collaborator’s IP?

·        Do employment agreements clearly define thescope of employment to ensure any IP developed by an employee is assigned tothe NFP?

Tip # 5 – Register your IP

Some types of IP, such as trade marks, designs and patents,can be protected by registration.

Consider if any of your NFP’s IP should be registered.

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