White SW Computer Law
Intellectual Property, Information Technology & Telecommunications Lawyers
Melbourne Office - PO Box 452, COLLINS STREET WEST Victoria 8007 Australia
Sydney Office - GPO Box 2506, SYDNEY New South Wales 2001 Australia
Telephone: Melbourne Office - +61 3 9629 3709 Sydney Office - +61 2 9233 2600
Facsimile: Melbourne Office - +61 3 9629 3217 Sydney Office - +61 2 9233 3044
Email: wcl@computerlaw.com.au Internet: http://www.computerlaw.com.au

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 +====== Intellectual Property Leverage and Licensing ======
 +Software development businesses usually have few tangible assets. ​
 +Their real assets are intangible and need to be protected and maintained. ​ Below we examine some of the types of intellectual property which may arise and some steps that need to be taken to prefect and maintain that ownership.
 +===== Copyright ​ =====
 +  * An assignment of copyright must be in writing to be valid
 +    * The copyright in software developed as a contractor will be owned by the contractor unless assigned in writing.
 +  * Retain the copyright wherever possible to increase the value of your business and possible future royalty streams.
 +  * When licensing the use of your intellectual property, you should consider your own long term possible uses.
 +    * Exclude library code from any assignment
 +    * Limit the number of users authorised per licensing fee
 +    * Limit the transferability of the licence
 +    * Record and enforce your licensing restrictions and develop a name for enforcing your rights (Litigation to recover damages may not always be costs effective)
 +===== Software Licensing Agreements =====
 +  * Should be in writing and signed by all parties
 +  * Ideally should be non-exclusive and non-transferable
 +  * Intellectual property Indemnities
 +    * You should consider the possibility of concurrent development of a very similar product or the pre-existence of a product unknown to you.
 +    * You should document your development process, for example by putting into escrow copies of your various development versions of the software
 +    * Do not agree to an international indemnity as he risk is usually too great unless extensive (expensive) searches are undertaken
 +===== Trade Marks =====
 +  * Registered trade marks should be obtained wherever possible for business and company names and product logos and names.
 +    * Without registration,​ another party may register a name which you use and force you to discontinue your use.
 +    * Registration increases the protection and legal remedies available to you.
 +    * In Australia, registration may be continued indefinitely,​ subject to renewal fees being paid each ten (10) years to IP Australia.
 +===== Patents =====
 +  * Software patents are difficult to obtain, as a patent will only be registered if your innovation is commercially useful and novel.
 +    * Patents give the owner the exclusive right to manufacture,​ license, sell, import and use the invention.
 +    * Searches must be conducted for "prior art", which can be expensive.
 +===== Circuit Layouts =====
 +  * Eligible Layouts
 +===== Assessing the value of Intellectual Property =====
 +  * Examine the licence:
 +    * Is it non-exclusive?​
 +    * Is it limited in geographical area?
 +    * Is it transferable?​
 +    * Is an Intellectual Property indemnity provided?
 +    * What is the duration of the licence when compared with the time required to establish a market for the product?
 +  * Employees and Contractors
 +    * Obtain an intellectual property assignment
 +    * Sign a confidential information deed
 +  * [[www.escrowagent.com.au|Escrow]]
 +    * Increases the value of the intellectual property, as the source code is available for continued use and development if the licensor goes into liquidation or dissolves its business.
 +===== Royalties =====
 +  * Calculation
 +  * Audit
 +  * Performance
 +===== Conclusion =====
 +  * The more control you maintain over your intellectual property, the higher the potential value of your asset.
 +  * The increased security of continued use by licensees, the higher the potential value of your asset.
 +  * Consider that the more comprehensive your documentation to support your ownership and rights the more valuable your intellectual property.
 +This article is a guide only and should not be used as a substitute for proper legal advice, readers should make their own enquiries and seek appropriate legal advice.

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  This website is a guide only and should not be used as a substitute for proper legal advice.
  Readers should make their own enquiries and seek appropriate legal advice.
  For legal advice please email wcl@computerlaw.com.au