Top 5 Tips on Protecting Your Intellectual Property

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 an agreement in place granting the NFP a right to use the IP?
• Are there any restrictions affecting the NFP’s ability to freely use the IP?
• Should the IP be registered to increase protection?

3. Value

Understand the value of the NFP’s IP rights. Some good questions to reflect on include:

• What is the commercial benefit of protecting your NFP’s rights?
• What would the economic damage to your NFP if its IP rights were infringed by a third-party?
• How closely is your NFP’s IP tied to its funding and reputation?

Tip #2 – Keep records of your IP

Keeping an IP register can help NFPs keep track of their IP rights. 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 the relevant IP.
• Official registration numbers for the relevant IP.
• Allowable uses of the relevant IP.

Tip #3 – Develop an IP management strategy

Internal management

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

• 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, and
• Information technology ("IT") security policy.

External strategy

As the stakeholder reach expands, an NFP’s IP can become more valuable. It is important that NFPs take steps to prevent the infringement of their IP by third parties and ensure that they themselves are not infringing the IP rights of someone else. The following 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 but 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 IP rights, an IP infringement strategy can provide pre-liminary guidance on the steps to take to resolve the issue. When developing an IP infringement strategy, NFPs should consider:

• Proactive detection – eg. conducting scheduled internet searches to ensure other business are not infringing your NFP’s IP rights.
• Reporting obligations of staff and volunteers on becoming aware of IP infringement.
• Budget for dealing with IP infringement.
• Consulting a legal profession for bespoke advice and strategies.

Tip #4 – Have the appropriate agreements in place

Many NFPs work collaboratively with other organisations and contractors to achieve their purpose. These kinds of collaborations can include the development, exchange and use of IP – so it is important that the proper agreements are in place to protect your NFP’s IP rights. When engaging in collaborative or contractual arrangements, NFPs should consider the following questions:

• Are the proper confidentiality/ non-disclosure agreements in place?
• Do contractor agreements provide for the assignment of IP developed for the NFP?
• Does the NFP have the appropriate licence to use its collaborator’s IP?
• Do employment agreements clearly define the scope 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.