This Article has been written by Miss Shubhani Mishra , a 1st year BALLB student of LLOYD SCHOOL OF LAW , Greater Noida.
In an age where knowledge is a valuable currency , understanding the intricacies of managing IP in not just a concern but a crucial strategy for success .
Intellectual property is the lifeblood of many businesses , a wellspring of interconnected world , companies often turn to contract manufacturing to leverage specialized expertise , reduce costs , and expand their market reach . yet , this strategic collaboration also presents inherent risks to intellectual property .
INTELLECTUAL PROPERTY PROTECTION IN CONTRACT MANUFACTURING
Intellectual property protection in a critical concern when engaging in contract manufacturing arrangement , particularly in industries where proprietary technology , designs , or processes are involved . contract manufacturing involves outsourcing the production of goods to a third – party manufacturer , which can introduce IP risks .
To safeguard your IP while engaging in contract manufacturing , consider the following strategies and best practices :
NON – DISCLOSURE AGREEMENTS
This is also known as confidentiality agreement , are legal contract used to protect sensitive and confidential information shared between parties , such as individuals , businesses , or organizations . NDAs serve as a critical tool for safeguarding proprietary information and trade secrets . Below we’ll delve into the key aspects and consideration related to NDAs .
PARTIES INVOLVED :
. Disclosing Party : This is the party sharing confidential information and seeking protection . It could be an individual , company , or organization .
. Receiving Party : This is the party receiving the confidential information and agreeing not to disclose or misuse it . it can also be an individual , company , or organization .
PURPOSE OF NDAs :
NDAs are used to safeguard various types of confidential information , including trade secrets , business strategies , technical specification , customer lists , financial data , and more .
Common scenarios for using NDAs include discussions related potential business partnership , collaboration , employment relationship , mergers and acquisition , and outsourcing arrangement .
CLEAR IP OWNERSHIP CLAUSES
Clearly define the ownership of intellectual property rights in your contract manufacturing agreements .
Specify whether your organization or the manufacturer retains ownership of IP developed during the manufacturing process.
Address ownership of any improvement or modification made to exiting IP .
RESTRICTS ACCESS AND SHARING
Limit access to sensitive IP to only those individuals within the contract manufacturing organization who need it for production purposes .
Implement strict access controls and data encryption to prevent unauthorized access .
DUTIES OF AN IN – HOUSE COUNSEL SPECIALISING IN IPR
On a regular basis , in – house counsel in small legal department with less than ten lawyers may be exposed to a practice that covers a wide variety of concerns . Whereas , lawyers at major in – house department , on the other hand , are typically assigned to a single practice area within a certain practice group as in our case , Intellectual Property Rights related issues .
While much of the function of in – counsel is to avoid litigation , it is not always possible . In House counsel must be prepared to oversee all legal matters , whether it is to safeguard the corporation’s rights or to defend it against lawsuits . In- house counsel , on the other hand , is typically involved in all stages of litigation , from discovery to settlement negotiation and trial .
Some of the legal duties of an in – house counsel specializing in IPR are as follows :
. patent , trademark , trade secret , unfair competition , and copyright issues are handled by in – house counsel on both an offensive and defence basis .
. IP in house counsel are responsible for formulating and driving strategy , including actively managing outside counsel , working with expert and internal witnesses , facilitating discovery , and establishing and managing budgets .
. They are in charge of enforcing the client’s intellectual property rights against infringers around the world , reviewing the merits of possible claims and relevant business issues , and advising business units on whether and how to pursue potential claims .
. They are responsible to provide guidance on possible trademark and / or IP licensing difficulties , as well as issues involving third – party engagements .
. Additionally , they are responsible to educate key business group and senior leadership on intellectual property issues , such as acquisition , claim avoidance , and risk mitigation in general .
. They are a major partner with various levels of management within the company they are involved with and its affiliates as an IP in – house counsel . This position necessitates the ability to interact effectively with technology and business people at all levels , both verbally and in writing . This job works as a business advisor and counsellor on IP concerns .
. They are required to keep a close eye on industry trends , legal and regulatory development , and the competitive landscape to ensure that copyright and trade secret legal challenges are resolved . its expected that the mix and balance of these tasks would change as one gets specialized with the work they are doing .
AUDIT AND VALUATION – RELATED DUTY
Patents and other intellectual property assets are at the heart of many technology – related businesses and transaction . licenses and assignment of intellectual property rights , as well as the use of these assets as loan collateral , are prevalent in the technology markets . Because knowing the economic value of patents is a vital aspects in defining their trading conditions , the financial valuation of intellectual property is becoming increasingly important .
It is important in many aspects of finance , including buying / selling. Solvency , mergers and acquisitions , transaction , pricing and strategic reasons , financing securitization and collateralization , tax planning and compliance , and litigation support , to name a few . furthermore , the valuation of intellectual property ( IP ) is regarded as one of the most critical management strategic challenges . Market share , entry obstacles , legal protection , IP profitability , industrial and economic consideration , growth estimates , remaining economic life , and new technologies are all aspects considered in this assessment .
The IP counsel’s role entails keeping track of a patent portfolio . a patent portfolio’s monetary benefits include a monopoly position in the market for the portfolio holder and revenue from licensing the intellectual property . Strategic advantages such as first – mover advantages and protection against competing portfolio holders are non – monetary benefits .the creation of a patent portfolio can also be utilized to entice investors . this position entails patents appraisal and analysis . this is done to determine which patent are most essential in terms of revenue or strategy .
BASIC REQUIREMENTS FOR THE JOB
Other than the qualification of an advocate along with a specialization in IPR ( the specialization is not mandatory but it is an additional advantages ) , some other basic requirements to become an IPR in – house counsel are as follows :
. Ability to examine both designs and utility patents invalidity and non – infringement concerns in response to infringement claims brought against the company , make recommendation , and carry out plans .
. Ability to examine trademark protectability and non – infringement issues in response to infringement allegations made against the company , make recommendation , and carry out the strategy .
. Ability to work closely and constructively with global colleagues in establishing case strategy and conducting technical analysis .
. Ability and expertise in all parts of intellectual property due diligence , including analysing IP portfolio , negotiating licensing and / or settlement agreements , and different forms of technology partnership agreement ,
. Must accure knowledge of invention process , state – of – the – art technologies in technologies in technologies relevant to the company and its affiliate’s business .
HOW TO MANAGE INTELLECTUAL PROPERTY ?
Intellectual property management activities within a company are carried out by intellectual property “mangers” , who may be lawyers , as well as people from various professions who are knowledgeable about the operation of the company , the industry , the market behaviour , and legal means for the protection of intellectual property . This knowledge will enable them to properly manage the rights arising from intellectual property .
In this sense , hereunder we detail the fundamental elements that every entrepreneur must consider when exercising proper management of their intellectual property rights .
. ESTABLISH ANEFFECTIVE INTELLECTUAL PROPERTY POLICY
Having an intellectual property policy is another very important aspect of managing intellectual property . From a general perspective , we can define this concept as “ las reglas basicas que sigue la organization enel tratamiento de la P.I.”. the basic rules that the organization follow in dealing with IP . In other words , a businessman or entrepreneur must ensure that each of the company’s collaborators knows the importance of intellectual property and how to protect it .
An intellectual property policy allows , in a clear and orderly way , to identify new innovations , know how to protect them and how to use them . For example , an intellectual property policy will establish the steps that must be followed internally to protect an innovative product developed by a company collaborator , as well as the due legal treatment to ensure the transfer of ownership and the equitable remuneration that collaborator must receive for his invention .
. PLAN AND IMPLEMENT STRATEGIES
To manage their intellectual property , an entrepreneur must also have strategies for the protection , preservation , and enforcement of intellectual property rights . regarding protection and conservation , this implies defining the main intellectual property assets , the costs of their protection and the advantages they can obtain from protection ,as well as carrying out internal control of the internal control of the conservation of their intellectual property that allows them to monitor the validity of its assets and their use to design contingency plans .
For example , part of the strategy of an entrepreneur who has created a novel product would be to protect it through a patent and through trademark registration ; in this way , he can use the protection of the assets as an element of negotiation in investment rounds and can protect their rights in case of improper use by third parties . In the same way , if there is no production capacity for that product , it is possible to negotiate licenses with third parties that do have that do have that capacity and in this way the invention would be generating profits without investing considerable sums in production .
Following the same example , who has invested the product must also be diligent in renewing the trademark in a timely manner and paying the annual patent maintenance fees to guarantee his market position .
CONCLUSION
Based on the above , it might seem that intellectual property management is an activity reserved for large companies , however , it can be carried out by everyone : from an entrepreneur to small , medium , and large companies , starting with small steps . intellectual property management for young entrepreneur is of vital importance as it will allow not only to know and define what intellectual property assents they possess , but also to identify how these have been used and how they can be used to generate market value , making the best of them .
REFRENCES :-
For books / PPT / PDFs : Intellectual Property Law, P. Narayanan , Third edition . , WIPO ( world intellectual property organization) . and “ intellectual property and the organization of the global value chain”.
For websites : https://www.researchgate.net/publication/352256937_intellectual_property_rights_IPR_and_higher_eduation_in_21_st_century_india . and national law review . & deskera