- Managing IP portfolio
The value of IP rights varies over time. Therefore it is very important to conduct on a regular basis for each IP right an estimation of its importance for a business in order to:
- Make a clear picture of the portfolio in order to identify gaps in the protection and the patents to buy / ask for a license to ensure freedom to operate
- Verify if the IP rights are still important for the business strategy and decide which rights will be dropped or sold.
- Review the dates for the maintenance of the rights which have to be kept
- Managing collaborations and open innovation
Sometimes a technology is so advanced that it needs to access sources outside of national boundaries. Then, the innovation process is based on collaboration and networking. Use of open-innovation can affect IP rights of a business and it is thereby essential to take care of IP management to manage IP in collaborations to anticipate IP issues.
Therefore it is important to elaborate explicit agreements with partners to decide throughout the innovation process how to share ownership and exploitation rights of resulting IP.
The first document to sign is a confidentiality agreement (non-disclosure agreement). This document must be sign before the start of any work in the collaboration and will ensure exchanged information is kept secret.
Memorandum of understanding
When general outlines of the collaboration starts to be drawn, it is time to establish a memorandum of understanding. It is a document used as a pre-contract to describe the convergence of will between the parties.
Then, when all terms are agreed and just before starting collaboration, the cooperation or consortium agreement can be signed. In this document are set all issues related to work organization, liability, and intellectual property. The questions related to IP that must be discussed and anticipated are:
- What about existing IP rights (background IP) owned before but required for collaboration?
- What about new IP rights (foreground IP) deriving from the common work? (Who owns? Who can exploit?)
- What about IP produced outside the collaboration but during contractual period (sideground IP)?
Afterward, once IP rights are protected, it is possible to sign technology transfer agreement (sale or licenses).
To anticipate IP issues and get maximum benefits in a collaboration plan, it is necessary to contact a professional who is qualified to elaborate the best contracts according to the collaboration and the role you play in it.
- Managing confidentiality
Know-how, goodwill, customer and supplier relationships, product pricing, marketing strategies, company finances, manufacturing processes etc are all precious trade secrets that have to be kept by the business. Therefore, it is essential for companies to take measures to guaranty an overall confidentiality.
Indeed, stolen business assets can cause serious economic damages, such as:
- costs and time of litigation
- lost secrets may be embarrassing (negative publicity)
- loss of faith of investors
So precaution is the best protection!
Simple and common sense methods are efficient: locking doors, using passwords, placing appropriate confidentiality blocks on documents, adopting clean desk policies and employee badge policies.
But the best method to keep secrets is to implement contractual protections with every internal (employees) and external (partners, investors) collaborators involved in projects.
Thus, if third parties (partners, investors, etc.) can have access to confidential information (especially concerning intellectual property), a non-disclosure agreement (NDA) must be signed before any discussion, to protect it from unwanted divulgation, transmission or use.
If tangible research material has to be transferred between a company and an external partner, a material transfer agreement must be used. It defines the rights of the provider and the recipient on the transferred material, especially concerning the fate of the material at the end of the contract (destruction, return to the provider, etc.). This can avoid an unwanted use and divulgation of the research material information.
But the first level of protection concerns the employees. It is essential to implement a contractual protection at the beginning, during and after employment. Indeed, in addition to raising awareness among employees to protect confidential data from inadvertent or conscious disclosure, contractual protection enables the legal prevention of harmful behavior. This protection can include non-competition, non-solicitation and non-raiding agreements (which must be limited in time and space), or non-disclosure agreements.
Restrictive covenants (contractual agreements) must protect the company sufficiently while affecting the employee as little as possible. In order to do this, restrictive covenants have to be adapted based on the employee’s access to relevant information and the potential consequences of a confidential breach on the business.
In case of such obligation breach, a contractual protection will legally allow to take measures accordingly (injunction, damages, termination of employment, etc.). But restrictive covenants are subject to legal restrictions that may differ from country to country, and that can make the contract void. It is essential to inquire about the local law.