Who owns your Intellectual Property?

15 March 2012

Intellectual property is the cornerstone of every business. It helps develop and maintain your brand, identity, reputation and most importantly protects your designs, computer programs, trade secrets and other information that set you apart from your market competition.

But how protected are you? Do you own all of the rights to your intellectual property? Are you assigned all of the rights in the intellectual property that have been created by your employees?

The automatic protection

There are of course statutory provisions, common law and equitable principles which ensure that the majority of the intellectual property created by your employees is assigned to you, but that protection can often be limited. For example, the Copyright Act 1968 (Cth) provides that if a literary, dramatic, musical or artistic work is created in the course of a person’s employment or contract of service to an employer, then the owner of the copyright will be that employer. As to what exactly is in the course of a person’s employment is often a difficult to question answer.  As a result, an employee is often able to retain their rights in a design or work in situations where the creation of that design or work was indirectly linked to the employment or if their employment merely assisted them in the creation.

What must you do?

It may be risky to rely solely on the statutory provisions, equitable provisions and the common law to claim and retain ownership in the intellectual property created by your employees, consultants, and other commercial partners. The clearest and most effective way to protect your confidential information, works and designs is to include express terms in your commercial, consultant and employment agreements which widen the scope of your protection.  For example, in an employment contract the terms should specify that all intellectual property which has been created either directly or indirectly in the course of the employee’s employment, or if the employment has assisted in the creation of the work, then the intellectual property is assigned to the employer.

Please contact Darren Sommers or Amy Millar for further information.