Protecting your intellectual property offshore
Copyright
Copyright ownership, in general, is automatic around the world after the creation of creative works. It can pay to formally register certain types of creative works in the United States, but this is not essential. See your copyright lawyer for details.
A common trap with copyright however, is failing to recognise that the copyright is normally owned by the creator or their employer and not by the funder of the work. In other words, your contractors, suppliers or even directors (directors are not employees) may actually own the copyright. Copyright can be assigned to your company, but assignments must be in writing.
Registered designs
Overseas registered designs need to be filed within 12 months of the initial application. Europe offers a single design registration for the whole of the European Union. Unfortunately US design registration can be surprisingly expensive.
Domain names
‘Cyber-squatting,’ where a third party registers your brand as a domain name, is an issue around the world. Processes are available to have the domain name transferred to the brand owner, but proactively registering the most likely domain names yourself is much cheaper. Work out what domain names you are likely to want and register these.
Confidential information
The laws of confidential information apply in general around the world. Keep your secrets secret. If you do disclose, ensure that a Non Disclosure Agreement (NDA) is signed which acknowledges this disclosure and that information disclosed was confidential.
A common issue with NDAs is which legal jurisdiction will apply. The best answer for your company is often your own jurisdiction, but the other party may not agree. Litigating an agreement in the courts of say the State of New York is not for the faint hearted or underfunded. One option to nominate a neutral jurisdiction. Seek advice if in doubt.
–Mark Lloyd is an IP management consultant for Griffith Hack (www.griffithhack.com.au)
DID YOU KNOW?
Convention Applications
Australia belongs to the International Convention for the Protection of Industrial Property, the Paris Convention. There are around 100 member countries, including all the major industrial countries.
The treaty has the following effect. If you file an application for a design in Australia (called the basic application), and within a period of six months you file an application in a country that is a party to the treaty, the foreign application is entitled to have the date you filed your Australian application as its priority date. Such an application is a Convention Application, and it claims ‘Convention priority’ from the basic application.
A Convention Application has several advantages. The main one is that you have a period of up to six months to decide whether or not you want to apply in a foreign country. During this time, you keep the date of filing of your Australian application as the priority date. As a result, any public disclosure during those six months of what you have disclosed in your Australian application will not affect the newness of your foreign application.
For further information visit the IP Australia website at www.ipaustralia.gov.au
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