New Year’s IP Resolutions

January is resolution time. A universal thought takes over: “I need to quit smoking, lose weight and call my mother more!” The IP Whiteboard team are not immune to this infectious optimism, and have put together some “IP resolutions” to kick off Twenty Ten. It’s not exactly Letterman’s Top 10, and we know resolutions aren’t always kept, but here goes!

1. If you’re about to launch that new line of products, whether just in Australia or overseas, DO undertake a trade mark search before going to market. Yes, this sounds old hat, but the issue comes up all the time!
2. Some recent court decisions have highlighted that courts are unforgiving if a trade mark owner selectively sues to protect its brand. So don’t reserve litigation dollars only for your arch competitor. Demonstrating the requisite reputation means one needs – it seems – to show consistent efforts to protect your brand. To help do this, why not introduce an IP Policy if you don’t yet have one?
3. Be very careful if you sell any products in the US marked with the words “US PATENT NO …” or similar. It has long been an offence in the US to mark goods as patented when they are not in fact covered by a claim of a US patent. However, in December 2009, a US Appellate Court surprised many when it held that the penalty for a contravention is payable per item, vastly inflating the amount offenders can expect to pay. Find out more in our alert.
4. How are you protecting your product portfolio against knock-offs overseas? No manufacturer wants to receive THAT email from overseas revealing a cheap knock-off of their best-seller. Without pre-existing IP protection, there can be limited options (often expensive) open to a manufacturer to stop this conduct from occurring. In many cases, industrial designs are best protected before launch, with many cost-effective options available, such as registered designs and utility models.
5. The stocktake sales are over, so how about ‘taking stock’ of your own IP portfolio? Invest some time updating internal company IP (and IT) registers, and ensure that the key IP required to run your business is properly documented, including any recent changes to licensing or ownership arrangements. Identify any gaps (eg, is all essential IP registered and protected in your key markets, have all renewal fees been paid?) and put in place adequate protection before this becomes an issue down the track. Not only is this crucial in an M&A and licensing context, but it’s just good practice.
6. Put your agreement down on paper! There is no substitute for a written contract, especially when copyright works are being created or modified. Relying on a handshake now can store up big problems for the future, as the parties in this case found out.