IP Spotlight - December 2025

SECURE EXPRESS IP ASSIGNMENTS IN CONTRACTS WITH EXTERNAL COLLABORATORS It is also common for many people to collaborate to produce an invention, design or creative work. However, not all contributors will be inventors, designers or authors. It is important to understand how the IP asset was created, and each person’s contribution, to ensure that the business has assignments from all relevant contributors. This is more straightforward where all collaborators are employees with assignment clauses in their employment agreements. However, if employees were assisted by a third party – such as an external consultant who has not assigned their rights to the business – that consultant may retain an ownership stake in the asset. Avoiding this issue requires planning. Employees should also be warned about the danger of informally discussing projects with external consultants. If a consultant is brought in, their role should be clearly defined in advance, they should stay within the confines of their engagement, and their consultancy agreement should contain confidentiality/non-disclosure provisions and clearly capture and assign (to the business) any IP assets that they generate while working for the business. When retaining creative agencies like brand consultants, graphic designers, artists and photographers, you should ensure that the retainer agreement includes an assignment of any IP assets that they generate for the business. This applies to brand names, logos, slogans and other marketing materials. In some situations, IP assets may automatically vest in the company, but this does not apply to all works in all circumstances. For simplicity and peace of mind, it is better to have the assignment expressly set out in an agreement. If IP and/or innovation is the lifeblood of your business, you need to be strategic about how you manage your portfolio. Once IP assets like patents and registered designs expire, revenues can drastically decline as competitors are free to enter the market with cheaper prices. To safeguard against this possibility, whenever developing improvements to your existing offerings, your technical staff should be NEGLECTING LIFECYCLE MANAGEMENT 4

specifically looking for innovations that may be protectable with either a patent or design registration. For sophisticated organisations, deciding which innovations to explore and develop, patentability and design registrability are as important as functionality. If an innovation cannot be protected, it may well have little practical value to the business, and you should think seriously before pursuing it any further. Commercially, try to transition your customers to improved products or services that are covered by new IP rights well before the rights to your existing offerings expire. While competitors may be able to exploit your old inventions as patents and registered designs expire but, by being strategic, you can develop your customer’s appreciation for your “new and improved” protected technology and keep them from purchasing your competitors’ outdated technology. All too often, businesses find out very late into a product’s development that their new product or service infringes another party’s IP rights. At this stage, it can be extremely difficult, expensive and time consuming, or even impossible, to work around those rights. However, it is often the case that, with knowledge of those rights and/or limitations from the outset, a simple tweak early in the process can easily resolve the issue or, on occasions, show that the product/service is unlikely to be worth pursuing. Either way, spending a little bit of time and money conducting a freedom to operate (FTO) search at the beginning can result in significant savings in the long term. A proper FTO search looks beyond the bare patent, design and trade mark rights as they exist on the register. By keeping a few things in mind, you can bring a higher degree of sophistication to the analysis. SKIPPING SOPHISTICATED FREEDOM TO OPERATE SEARCHES 5 First, there is often a difference between what a judge finds is an infringement at the end of litigation and what a rights holder believes is worth litigating. Ideally, your products and services should be configured so that they are as far away from others’ IP rights as possible to minimise the risk of you

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