Protecting your assets and your company: IP related
How do I know if I risk infringing a third party’s IP rights?
It is not always easy to identify an infringement of a third party's rights. Much will depend on the IP right concerned since, for some types of rights, information is publicly available, while for others (such as copyright), there are no public databases.
For patents, patent attorneys can provide assistance by conducting prior art searches and preparing an FTO (freedom to operate) report.
In order to avoid or dispute infringement claims, it is very important to keep track of the dates and times at which IP is created, so as to be able to establish prior rights, if necessary.Written by Christel Brion
Which IP/know-how do I need for my company's business? Do I have the right agreements in place in order to ensure that the IP rights/know-how used to conduct my company's business are (co)owned or duly licensed by the company?
It is important to first determine the IP needed to conduct the company's business.
The first relevant question is whether the required IP is proprietary or not.
With proprietary or self-developed IP, the main concern is to ensure that all IP rights and know-how developed within the company are duly owned by it. Certain types of rights are automatically transferred from the employee to the employer upon creation, while others (eg, copyright) must be specifically assigned in the employment contract. A similar approach should be adopted for subcontractors and consultants.
IP which is necessary but not proprietary must be licensed in. This can be either a very simple process (eg, a shrink-wrap licence for Microsoft Office) or a highly complex scenario (eg, a licence granted by a university for a specific technology, patent, etc). Spin-offs, for instance, are usually dependent on a licence granted by a university or research centre which is often exclusive to a specific field and determines the spin-off's possible activities and partnerships with third parties. The main concern with licensed-in IP is therefore the scope of the licence. It must be at arm's length, in view of the company's business needs. Consideration is another important issue, especially for a company in the start-up phase.
Please note that even if certain tools are publicly available (such as open-source software), there may be specific obligations connected to their use or incorporation in subsequently commercialised goods or services.
Am I the (co)-owner of these assets?
- Are the correct agreements in place to ensure that all IP rights/know-how in works created by employees/subcontractors vest in the company?
A clause providing for the transfer of IP rights should be included in each employment contract in order to ensure that rights which do not automatically vest in the employer are transferred to the company. A similar clause must be included in any agreement entered into with an external subcontractor.
When cooperating with a university professor, the company should ensure that the professor is indeed entitled to transfer any IP rights arising from the parties' cooperation. It should be noted that university professors are often bound by an agreement with their university, preventing them from transferring IP rights to anyone other than the university.
The developer of a website should transfer all rights in the website, artwork and possible databases developed for the company. If no provision is made to this effect, problems may arise at a later stage when it is necessary to adapt or change the website.
- Where can I find high-quality models for a management agreement, employment contract, consultancy agreement, service agreement, distribution agreement, etc?
A standard agreement will never perfectly meet the parties' needs. Therefore, whilst templates can of course be used, parties should always try to ensure that the agreement in place reflects as closely as possible their actual business needs. Although agreements will always, to a certain extent, be customised, certain clauses are key to the R&D environment, namely:
- confidentiality and non-disclosure provisions (see also Question "Do I have the right agreements in place in order to ensure that my confidential information/know-how is duly protected and kept secret?"), to protect business and trade secrets,
- a noncompete clause, if the employee, manager or contractor acquires confidential information, the use of which on behalf of a competitor would prove detrimental to the company;
- a non-solicitation clause, which forms an important part of a retention policy and prevents employees, managers, consultants and distributors from poaching the company's talent;
- an IP transfer clause, aimed at ensuring that the company owns IP rights in creations of employees, managers and consultants.
For self-employed contractors (such as independent managers, consultants and distributors), particular attention should be paid, when drafting agreements, to the risk of recharacterisation of the agreement as an employment contract (see also Question "Are any contracts at risk of recharacterisation?"). The agreement should in particular emphasise the self-employed nature of the relationship, the absence of subordination of the contractor (manager, consultant or distributor) to the company, and the contractor's freedom to organise his or her work and working time.
If I do not own the necessary IP/know-how, how can it be licensed in? What important points should I bear in mind when negotiating a licensing agreement?
IP/know-how can be licensed in by entering into a licensing agreement.
Every licensing deal is unique. You should however always carefully consider the following:
- the scope of your rights under the licence (eg, exclusive or nonexclusive, field of use, territory, duration, right to sub-license); and
- the financial terms for use of the assets.
The use of open-source software gives rise to certain legal risks, especially so-called "copyleft software". For instance, pursuant to the General Public License (GPL) terms, if a company includes such software in its own it must allow its software to be made available to any third party under the same GPL terms.Written by Florence Verhoestraete
Where can I obtain advice on choosing the most appropriate IP protection and the cost thereof?
Advice regarding appropriate IP protection can be obtained from lawyers, trademark agents and patent attorneys. For technical aspects, it will be necessary to consult a patent attorney.
How do I know if an invention is patentable?
An invention is patentable if the subject matter is not excluded from the scope of patent protection (eg, software as such), it is new and inventive compared to prior art, and capable of industrial application. The advice of a patent attorney will be necessary as this stage. A patent attorney will be able to conduct a search of prior art to determine, for instance, whether an invention is both novel and inventive.
If not, can it be otherwise protected?
At present, there is no specific form of protection for know-how under Belgian law. However, know-how can be protected under general rules of tort. Changes are expected in this field, as the European Commission issued on 28 November
2013 a Proposal for a Directive on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure.
If an invention is patentable, is a patent the best option? In other words, which is best for my company: IP or trade secrets?
Patent protection, if available, may not always be the best option. If a company is in need of funding, a patent may be required to attract investors. However, in other cases, it may be advisable not to apply for a patent and keep the information confidential, especially if the patent could easily be circumvented. Much will depend on the specific facts of the case.Written by Florence Verhoestraete
Do I have the right agreements in place in order to ensure that my confidential information/know-how is duly protected and kept secret? In other words, how can I protect trade secrets?
Know-how is only valuable if kept strictly secret. In order to do so, measures must be put in place to ensure that information remains confidential:
- Employees must be reminded of their duty not to disclose trade secrets or any confidential information.
- Similar precautions must be taken with regard to subcontractors, freelancers and (potential) commercial contacts. An NDA should be entered into prior to any meeting with the latter.
- If possible, access to confidential information should be restricted to persons who absolutely need to access it. Specific security measures may need to be put in place (password protection for documents or files, safe lockers, restricted access to labs, etc). Extremely important information can even be kept in a safe deposit box at a bank.
It is extremely important that the company be able to establish that it has taken all possible measures to keep its confidential information and know-how secret.Written by Christel Brion