Home Resources Forms
& Publications
Fact Sheets IP Protection Strategy
 Printable PDF
IP Protection Strategy
Strategies to protect your intellectual property (IP)
Developing effective IP protection strategies will depend
on your particular business. An effective protection strategy
may involve a range of IP protection options including the
more obvious protection options of copyright, registered
trade marks, patents and designs. However there are other
options that you may find beneficial such as trade secrets
and confidentiality agreements. By using a range of
protective measures you gain layers of protection and a
stronger market position.
For instance, you may apply for patent protection for the
way your product works, register its design and develop a
branding strategy based on a registered trade mark. A trade
mark can position your product so it retains market strength
when your patent expires or you decide the patent is no
longer worth maintaining.
Alternatively, you may decide a patent is not worthwhile
and that maintaining secrecy and using confidentiality
agreements will provide enough time in which to develop
brand recognition and loyalty, or develop new products
and services. You may also focus on a trade mark to develop
your position in the market.
Depending on your business goals, target markets and
resources, you can combine IP strategies to optimise the
potential of your business. You can protect your IP by using
formally registered rights, (such as patents, trade marks, designs, business, company and domain names) or automatic
rights (such as copyright and circuit layout rights). See the Intellectual Property Rights at a Glance fact sheet for more information on these formally registered and automatic
rights. You can also use protective measures such as trade secrets and rapid production and development to great advantage.
Trade secrets
A trade secret can provide effective protection for some
technologies, know-how and other forms of IP. Ideally,
however, you should back it up by signing confidentiality
agreements with every person who has knowledge of your
secret.
A confidentiality agreement is often used to stop employees from revealing your secret or proprietary knowledge during and after their employment or association with your business. This will give you evidence of your agreement and a legal recourse if it is breached.
Relying on trade secrets is useful when the IP is unlikely to result in registrable rights or you wish to retain exclusive use beyond the term of a patent (20 years). The recipe for
Coca Cola and the Colonel’s secret herbs and spices are good examples of long-kept trade secrets. A trade secret strategy is most appropriate when it’s difficult to copy the construction, manufacturing process or formulation from the product itself - that is, when reverse engineering is
difficult.
Secrecy, however, does not stop anyone else from inventing
the same product or process independently and exploiting
it commercially. It does not give you exclusive rights and
you are vulnerable when employees with this knowledge
leave your firm. Trade secrets are also difficult to maintain
over longer periods or when a larger number of people are
made privy to the secret. Secrecy is harder to enforce and
protecting it is potentially more costly than registered rights
because it relies on the complexity of proving a breach of
confidence under common law.
For this reason, contractors and employees are often asked
to also provide written undertakings not to compete with
your business after they leave. It is often much easier to prove this than to prove breach of confidentiality. These
undertakings are difficult to enforce and need to be prepared
by your legal adviser.
Recent court cases have highlighted the need to ensure
that confidentiality agreements do not restrict trade in any
way. It is a good idea to seek legal advice to ensure any
confidentiality agreement you are party to cannot be later
construed as restricting trade.
Rapid production and development
Reliance on trade secrets can be very useful when combined
with rapid product change and development of products
with a short life span, eg some software products. They
may relate to new products or refinements of existing ones.
Innovative companies and those operating in a fast moving
industry often adopt this strategy.
These companies keep ahead of their competitors with
rolling plans for future innovation, enthusiastic and loyal
workers, strong commercial skills and a bit of luck. For them, secrecy is critical during the production stage but
not later. It’s a very effective strategy for products with a
quick turnover and limited research and development
requirements.
Building brand loyalty, usually with a trade mark, is a useful
adjunct to a rapid production and development strategy
because once your product is in the market you can do
nothing to prevent others copying it.
For products with a longer development and production
cycle and higher research and development costs such as
pharmaceuticals, a patent may be more suitable.
Who can help?
In the first instance, IP Australia’s website
provides further details about IP
rights, along with web-links to relevant agencies. IP Australia
recommends that you seek professional advice from a
patent attorney, trade mark attorney, IP lawyer and/or
business planner before making any final decisions.
|
