IP Spotlight - December 2025

what they’re working on. If technical staff are too busy for more meetings, perhaps periodically join any existing team meetings to learn about their work. Other strategies include educating staff and providing regular reminders about the importance of sharing (potential) innovations or, simply having a welcoming, open door policy to everyone who thinks they may have something valuable. EVEN SMALL, NON-OBVIOUS IMPROVEMENTS MAY QUALIFY FOR PATENT PROTECTION. In that vein, the bar for patent protection is lower than some General Counsel may realise. The standard for patentability is “new and inventive”, not “new and groundbreaking”. An inventive step can be found in seemingly small improvements and changes, with even a small spark of ingenuity often being enough. All that is required is that the invention was not obvious to a skilled technician. As a rule of thumb, ask yourself whether the innovation addressed a problem in a new way: if it did, it may be worth talking to a patent attorney to find out if it can be protected with a patent. FILE FOR PATENTS OR REGISTERED DESIGNS BEFORE PUBLISHING OR COMMERCIALLY USING Remember that you can lose your ability to obtain a patent (or a registered design) if you publish the work, or commercially use the invention, before filing an application. While some countries have grace periods (for instance, you can file a patent application in Australia up to 12 months after making the invention public), they are not available in all countries. It is far better to apply for a patent or registered design early on, otherwise you may effectively extinguish those IP rights forever. You therefore need to be proactive and regularly check in with employees to ensure that all valuable IP rights are being identified and protected in a timely fashion. Your protected IP assets need to grow and move with your operations. A patent that was filed 10 years ago may no longer cover what the business is doing today as product features or processes change. The same applies to registered designs. Logos and branding are often modernised. These incremental changes add up, and it’s not uncommon, and very frustrating, to find that copycats don’t actually infringe existing IP rights. NOT KEEPING PACE WITH DEVELOPMENTS 2

It is important to regularly compare the commercial offerings of the business with its IP portfolio to ensure that they do not drift apart.

ASSIGNMENTS 3

OVERLOOKING IP OWNERSHIP AND

Establishing entitlement to IP assets is more complex than many realise. Generally, IP assets are created by people; the rights to those assets need to be assigned to the business. There are a few mechanisms for effecting these assignments. IP may be assigned prospectively through a general assignment clause in an employment agreement or a consultancy agreement. It may also be assigned through a retrospective assignment that specifically refers to the IP asset. If you do not own an IP asset, you cannot register it as a patent, design or trade mark. Worse still, you may find consultants using what you had assumed was the business’ IP or authorising your competitors to use that IP. INCLUDE BROAD IP ASSIGNMENT CLAUSES IN EMPLOYMENT AND CONSULTANCY AGREEMENTS You should ensure that all employment agreements include a broad IP assignment clause in favour of your business. The rights to all inventions, designs, trade marks and copyright created by your employees should be automatically assigned to the business. This is important, though it is not enough on its own to protect you. In practice, things are often more complicated. DEFINE EMPLOYEES’ DUTIES CLEARLY TO CAPTURE ALL RELEVANT INNOVATIONS Many employees create works both in the course of their employment and on their own time. Distinguishing between the two can be difficult but it is critical, as generally only works created for the business are owned by the business. You can significantly reduce this risk by clearly defining employees’ duties in their employment agreements to capture works they create that are relevant to your business. Similarly, if you have employees whom it is anticipated may contribute to developing inventions, ensure their employment agreements explicitly state that creating inventions is an expected part of their duties, to maximise the likelihood that the business will be the owner of such possible innovations.

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