Preventing infringement
As the owner of IP rights, you have a range of options and actions you can take to prevent infringement.
Determining whether there has been an infringement of IP rights and what legal action is appropriate can be a complex exercise.
It is recommended that you talk to an IP professional before taking any infringement action or establishing an infringement strategy.
In some cases, simply threatening someone with infringement proceedings can incur a serious legal liability.
Develop an infringement strategy
IP rights are most effective when they are enforced as part of an infringement strategy.
An infringement strategy is not simply an intention to commence legal proceedings when you believe your IP rights are infringed. It involves a strategic assessment of your IP rights and setting parameters for beginning (and ending) infringement action.
There may be cases where your IP rights have been infringed, but you may be advised by your lawyer not to bring legal proceedings against the infringer. This may be due to:
- difficulties in proving the existence or ownership of the IP rights
- difficulties in proving infringement
- the costs of the proceedings outweigh the value of succeeding in the infringement action
You should develop an infringement strategy that suits your business needs and resources. Such a strategy should include:
Identification and awareness
Identify and record details of each piece of IP you own, educate your staff on IP rights and record details of permissions or licences to use IP.
Proactive measures
You can take proactive measures to limit the incidence of infringements. These can include the use of software access codes or passwords, or physical protection measures, or data 'seeding' to enable easy detection of infringements.
Detection methods
Set out the methods that will be used to detect infringements. Detection methods can range from periodic review of competitors' products and advertising to campaigns specifically targeted at identifying infringements and infringers.
Target selection
Define the process that will be used to select targets for infringement action and the type of action against each target. For example, if there are potentially too many infringements to prosecute, such as home taping of sound recordings, the strategy may specify the size and type of targets that will be pursued. In other cases the threshold may be set according to the financial resources of the infringer.
Budgets for infringement action
All legal proceedings are potentially expensive and infringement actions can be among the most expensive. If you are unsuccessful, not only will you have incurred your own legal costs, but you will usually be liable for some or all of the legal costs of the person you alleged was an infringer.
You can budget for this by considering the value of the IP to the company, what it is worth in approximate dollar terms, when to start and end an action, and setting goals for infringement action, such as obtaining injunctions or recovering damages.
Clear goals
Set goals for infringement action. These goals can include obtaining injunctions, recovering damages or deterrence through the use of publicity. Your infringement strategy should also assess how far you can go to protect your IP. An effective infringement strategy also considers likely outcomes, costs, benefits, and whether you need IP insurance.
The infringement strategy guide offered here is necessarily general and is not intended as an alternative to obtaining specific legal advice in relation to a particular situation of infringement.
Last Updated: 13/12/2012
