Establishing awareness of intellectual property amongst staff of your company is essential for early maximizing the value of your intellectual property and the wealth of your business and reducing the possibilities of accidental non-confidential disclosures, that could prejudice successful patent applications and negatively affect the value of your intellectual property and ultimately the wealth of your business.
Regular training sessions of staff on intellectual property are key and should include the following:
how to identify and protect intellectual property;
how to use patents to improvements of technology;
understanding Patent Process;
how to deal with confidential information (see some examples in the scenarios below);
record keeping of intellectual property, including laboratory notebooks and policy on intellectual property; and
who to contact in case of need.
The record keeping procedures and manuals will address the following questions:
has the inventor kept the idea confidential?
is there a written description of the idea and has been kept safe and confidential?
how the idea has been generated? If during a collaborative programme, then was it agreed beforehand who owns what?
is the idea a new product, a new material, a new process for making something? If so, is it patentable or protectable in any other way?
is the idea a variation in a product or material or process? If so, it is still likely to be patentable or protectable in any other way?
who generated the idea? The answer to this question is very important in the event self-employed or other third party consultants are involved in any research and development or collaborative project.
The main object of this record keeping is to track, protect and maintain all relevant intellectual property rights of the business so that intellectual property can be licensed, assigned or exploited to the fullest extent and benefit of the company.
The record keeping procedures should also include a form upon which, potential inventions should be recorded identifying the following:
Who: department and research area;
Named individuals: inventors and authors;
What: technical description;
Why: perceived novelty;
How to use the information: potential applications/markets;
What else is needed: background or third party intellectual property and information.
The correct use of laboratory notebooks by staff is also essential. In the event of a dispute laboratory notebooks may be required to be presented as legal evidence.
It is therefore recommended that:
permanent bindings are used on notebooks (loose leaf books should be avoided to prevent possible removal or substitution of pages);
pages should be numbered and any additional drawings cards or computer printouts should be permanently attached to the notebook clearly identified and have reference made to them in the notebook;
all projects related and other activities, such as breaks in research due to secondment or holiday should be recorded factually; and
the notebook should be reviewed regularly by someone who understands the technology involved, each page should ideally be signed by a witness and again the choice of the witness is important and should not be someone who may be nominated as core inventor. The witness should also sign and date and graphs, chart, printouts, which are inserted into the laboratory notebook.
In addition, to the use of appropriate record keeping procedures and notebooks, an evaluation of IPR policy should be adopted. Such an evaluation should include factors, such as potential market, market, impact, competitive products, timing, intellectual property protection available and experience in the field concerned.
Finally, once relevant intellectual property rights have been identified, protected, exploited and enforced, it is advisable that, regular audit of such rights is undertaken to ensure that, the intellectual property rights reflect the current needs of the business and that expenditure is limited accordingly.
How to take care of confidential information:
Scenario 1 –
Have you been asked to sign a confidentiality undertaking? If so, please check that it is only confidentiality restriction and not a transfer of intellectual rights.
Obtain express confirmation from the discloser, that the information is not confidential, where possible, before disclosure.
Make a written record of what was disclosed, by whom and when.
Please remember that, an obligation, to keep information confidential, includes the obligation of not disclosure or not use of the information, without the permission of the person to whom the obligation is owned.
Scenario 2 –
Put in writing or some other permanent form.
Mark any documents with appropriate confidentiality and IPR disclaimers.
Keep a copy of what is disclosed and a record of when and to whom.
If an oral disclosure is made in confidence, confirm in writing what was disclosed and what was given in confidence.
Have the recipient sign a confidentiality undertaking of the disclosure.
Scenario 3 –
Consider whether anything in the paper describes a new device, chemical compound or manufacturing process or a significant improvement or modification to any such matters.
Do not disclose anything, without first considering the possibility of the content of the papers being patentable in whole or in part.
Consider whether there are any restrains, under any relevant agreements (including research and development or collaboration agreements).
Keep an eye on any relevant timetable for confirming publication.
Request that, the publisher confirms confidentiality on receipt of paper pending decision on publication.
Please, always remember that, any document exchanged, should be clearly marked as being confidential.
Scenario 4 –
Consider what background IPR, if any, are free from obligations of confidentiality and may be introduced to the project.
Prior to disclosing any information to third parties, have a confidentiality agreement signed. Such agreements, may take many forms and the terms should be adjusted in accordance with the particular circumstances.
You should always include the following:
- identification of parties;
- what information is to be kept secret; and
- for how long.
If in any doubt, consult your legal adviser.
The World Intellectual Property Rights Organization, WIPO has organized a three day workshop to educate the public on intellectual property rights. The initiative started today at the Coco palm hotel. The drive which is aimed at sensitizing St. Lucians to intellectual property rights issues will also include a public forum for persons interested in learning more about the issue.
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