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This month we focus on key IP & IT considerations for medium-sized companies.
This practice note was created by LexisPSL IP&IT; and supplements a separate practice note: Key IP & IT considerations for start-ups.
Suggestions in that note are also important for medium-sized companies, but this note focuses on additional intellectual property (IP) and information technology (IT) issues which are likely to be of more relevance to larger companies than start-ups.
This practice note is a brief summary of IP & IT law considerations when operating a medium-sized company that owns some IP assets and uses IT as a support function. This note is intended as a very high level introduction to typical considerations but the emphasis placed on these will vary depending on the nature of the business.
1. Appoint an Intellectual Property Officer and Management Board
Appoint an 'Intellectual Property Officer' to take primary responsibility for the management of your business's IP & IT assets. In some companies this role might be filled by the IT or Finance Director, but in a larger company it would be by an in house lawyer. The Intellectual Property Officer will need to co-ordinate the work of an 'Intellectual Property Management Board', comprising representatives from different business functions (eg marketing, sales, IT and human resources (HR)) to ensure IP & IT strategies are properly agreed, communicated and implemented across the business. This is also likely to require support from specialist external lawyers, trade mark agents and patent agents who will, for example, be responsible for monitoring renewal dates for registered rights, conducting clearance searches and providing specialist advice as required.
2. Implement good record-keeping systems
Ensuring dealings in IP & IT are mutually consistent
It is important that IP & IT transfer and licensing arrangements entered into by a business are mutually consistent. For example, IP licensed from a third party can only be used subject to relevant licence terms (eg licensed software to be used only by specific permitted users). Licensing of rights to
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