As the owner of intellectual property (IP) rights, it’s your responsibility to ensure you enforce them. We will not police your rights or launch legal proceedings on your behalf. Effective enforcement of your IP rights is necessary to maintain their value in legal terms, to deter potential infringers and to retain the ability to attract commercial value.
The nature of the infringement
What constitutes infringing conduct will vary depending on the type of IP right involved. Each IP right is covered by its own legislation.
This legislation will determine the action that can be taken against a person who infringes as well as the legal remedies and compensation which may be ordered by a court.
Complaints can also be made about IP matters not defined in legislation. For example, if a person intends to breach a confidentiality agreement you may have grounds to take action to restrain that person from disclosing or improperly using the information.
Knowing what is protected
For rights subject to registration, it is easy to establish the extent of protection granted by the IP right. For example, patents exhaustively describe the exact scope of the invention.
For rights not subject to registration, such as copyright, the property being protected must be objectively identified. For example, in the case of a sound recording, this is often done by providing the court with a copy of the relevant master recording.
In some cases only part of a product may be protected.
Patent specifications, for instance, often cover only a small part of a product. The patentable invention may be an enhancement to an existing product and the patent granted only for that enhancement. This means that if someone copies the product without including the patented enhancement it will not constitute an infringement.
However, you may have other causes of action. For example, if consumers are misled into thinking the copy of the product contains the enhancement and is therefore equivalent to your product, you may be able to prosecute due to misleading and deceptive conduct under the Trade Practices Act 1974.
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.
For example, 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 outweighing the value of succeeding in the infringement action.
Your infringement strategy should be tailored to your business needs and resources.
Strategies should include the following elements:
- Identification: Records should be kept of the IP you own as well as permission or licences to use IP belonging to someone else.
- Proactive action: Where appropriate, take measures to limit the incidence of infringement. Examples include physical security, watermarks or password protection.
- Detection methods: You should be periodically reviewing the products and advertising of competitors to look for any signs of infringement. If you are working in an online environment, data ‘seeding’ can help identifying any misuse of your IP.
- Selective enforcement: Define a process to identify who you would bring action against and a level of action appropriate to the infringement. For example, it may be uneconomical to pursue legal action against people taping a sound recording for personal use. However, if a recording is used by a corporation for a public event you may consider taking action.
- Budget: Legal proceedings can be expensive. Consider the value of your IP and compare this with the benefits you would gain in taking legal action. You should also decide on what level of action you can afford to take. One way of preparing for the costs of legal proceedings is to take out IP insurance.
- Set clear goals: The type of action you take should depend on the nature of the infringement. Examples include obtaining injunctions, recovering damages or deterring infringement through publicity. You should assess how far you can go to protect your IP and likely outcomes for taking action.
Please note this advice is general and not intended as an alternative to obtaining specific legal advice in relation to a particular situation of infringement. If you are seeking specific legal advice the Institute of Patent and Trade Mark Attorneys Australia (IPTA) offers free 30 minute consultations.