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Q&A with Jenni Rutter - What about my IP?

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Jenni Rutter is an IP expert with over 20 years’ experience in NZ and the UK. She is a partner at Kensington Swan law firm and has for many years enjoyed working with architects, designers and IP creators of all types. After featuring on PrefabNZ Innovation Bites webinar, Jenni has generously answered the audience questions posed below.

1. Where can we learn more about protecting IP and sharing IP?

The Intellectual Property Office of NZ (IPONZ) website is a great resource for learning more about protecting IP and the various processes involved – see https://www.iponz.govt.nz/. However, you can always reach out to specialist IP teams, such as Kensington Swan, if you have more specific questions.

2. If commissioned, does the designer or any other person involved in the process lose their right to use that design or process elsewhere?

This depends on the commissioning contract. Ownership of IP created under a contract is an important term to be negotiated between the parties alongside other terms (such as price, delivery time etc). The contract should say whether IP created will be owned by the designer, or by the party commissioning the work and paying for it. Even if a designer doesn’t have the bargaining power to retain ownership of the IP, getting a very broad right to use that IP can be almost as good.

3. How do I make sure I own IP that I pay for when contractors work for me?

As discussed above, this comes down to what you negotiate and put in a contract. Always use a contract, however simple it may be, and make sure it says that all IP created by the contractors (and their sub-contractors) for the project is owned by you upon creation. It is worth getting an expert involved in drafting IP clauses to make sure all your rights are protected from the start, reducing the risk of a conflict arising later. Every situation is different, but once you have a couple of template IP clauses, you’ll know what to look for (and what’s missing) in future contracts.

4. What are the risks of not pursuing copyright for designs? A bit like James Murray-Parkes’s solution, just go 100km/h instead.

If you see your work being copied and you don’t mind, there are no risks in not pursuing your rights to stop that happening. Copyright can’t be registered in New Zealand, so you don’t have to do anything to get the benefit of it. If you choose not to apply for a registered design to protect the appearance of a new and non-functional design for a product, then the main risk is that your work design gets copied and you can only rely on your copyright to prevent it. That’s’ not the end of the world, but it is harder to prove copyright infringement than design infringement.

5. Are there template solutions?

Some law firms and websites offer template contracts and documents – simple internet searching can turn up some good examples.

6. What happens to copyright if your design is taken to Australia...do you need one for each country?

In New Zealand and Australia, copyright exists automatically in original works, is free, and is not registrable. Each country has its own copyright laws, but thanks to international treaties (like the Berne Convention), most developed countries recognise the copyright of citizens of other countries. If you own copyright in a design you created in New Zealand, and someone rips it off in Australia, you can take legal action under Australian copyright law to prevent that continuing. For a full list of countries who have signed the Berne Convention see here. It’s important to remember the Berne Convention applies to copyright only—other IP rights such as trade marks are protected nationally and do not give rise to automatic enforcement rights overseas.

7. So if it’s expensive and tough to legally follow up breach of IP, what is the most cost effective solution?

It’s not always expensive and tough. It can be possible to stop someone copying your designs with one single well-worded cease and desist letter. In a perfect world, it’s best practice to be thinking about protecting your IP from the outset and getting whatever registered rights you can. However, if you do encounter infringement issues, making a business–to–business approach in the first instance (such as sending a cease and desist letter) can often prove effective. People are generally more aware of IP rights these days and no one wants to get sued. If self-help doesn’t work, getting an IP lawyer involved sooner rather than later can end up resolving an issue much more quickly and efficiently than you might think.

8. Even if you are commissioned, does ownership of the design extend to your library or algorithms, processes, calculations, etc?

It shouldn’t. Your ‘tool box’ should always be yours. But check any contract carefully before you sign it to make sure your tool box is not caught. Ask for a clause saying all IP you own before entering into the contract will remain owned by you (often called ‘background IP’). To the extent any of your background IP becomes inseparable from or embedded in the work you deliver under the contract, you can grant a licence to the commissioner so they can use your background IP to get the intended benefit of the work or the project, but not beyond that.

9. What happens after 20 years with a patent, can you re-patent?

Unlike trademarks, patents can’t be renewed indefinitely. A patent lasts for up to 20 years (provided renewal fees are paid), but cannot be renewed or extended beyond the term. In order to extend protection for an invention, you would have to find a new and inventive aspect of your invention that is not already covered by your patent or anyone else’s.

10. Innovation is a form of chaotic energy – unpredictable movement. Once you put the brakes on it, it’s no longer innovation, it’s just static mass. Like they say, if you’re going to be a target, be an unpredictable moving one. So is the solution to protecting yourself, get a contract for the short run, but just keep on innovating for the long run?

I like your thinking. Choosing whether to adopt a cut and run approach to IP largely depends on your business model and your adversity to risk. If you’re creating goods or services with a view to long–term brand and product consistency, it’s a good idea to get your ducks in a row and protect your IP from the outset. But you’re right that in a constantly evolving market, speed and agility is worth a lot. Be careful about copying - if you're going to be a target, try and have a backup plan in case you cross swords with much deeper pockets than yours.

© Copyright Jenni Rutter, Kensington Swan 2019

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