IP-Compliance
In addition to IP rights (patents, utility models, trademarks, designs), intellectual property also includes copyrights and software as well as, for example, trade secrets and know-how.
"Compliance" means "fair treatment" of the achievements of other market participants. This therefore requires systematic monitoring of the IP situation in the respective market segment by means of research and analysis of the IP rights and, if necessary, official or judicial clarification.
In particular, "coordinated" procedures of several market participants, with respect to IP rights that are known to have been wrongly granted, must be avoided.
Avoiding infringements of IP rights by third parties
In order to protect the research results, companies are bound to verify whether the IP rights of third parties are infringed before starting the product development (keyword: patent and trademark analyses). The company’s management must establish appropriate monitoring processes, because violations lead not only to civil liability risks, but also to compliance violations and criminal consequences.
The consequences of a liability risk can include claims for injunctive relief, for providing information, for compensation and for recall / destruction. A valid assessment of damages that arise is complex and time-consuming and requires legal advice from patent attorneys.
IP Compliance Management
The establishment of an effective protection and control system can significantly help to protect one's own IP assets and to reduce the risk of infringements of third-party IP rights.
The introduction of control mechanism, which on the one hand monitor whether patents, trademarks and designs of one's own company are infringed and on the other hand ensure that one's own company does not infringe the IP rights of third parties, are an essential component of IP monitoring. Corresponding guidelines and rules of procedure must be drawn up and regularly adapted. This is of particular importance in the case of company audits (IP Due Diligence) in the context of company purchase or sale situations.
In addition, in the area of license agreements, a regular review of cooperation agreements (e.g. license agreements, rights of use of a joint development, etc.) and a definition of instructions for the licensing of third-party IP rights are recommended.
Against the background of the daily handling of sensitive and confidential documents, a consistent data and document management - considering different access rights - is of significant importance.
Conclusion
The well-timed and careful examination of IP rights of third parties can prevent, or at least shorten, the infringement of rights and the associated long legal processes. For this reason, these processes are now also relevant to compliance for many companies. Patent attorneys can assist companies in developing tailored solution for its industry requirements and setting up corresponding IP guidelines.
Regarding Matthias Rößler:
Matthias Rößler, German and European Patent Attorney since 2003, studied mechanical engineering at the RWTH Aachen. He is co-founding partner of karo IP. A main focus of his practice is the management of large patent portfolios and the enforcement of bilateral litigation proceedings before patent offices and patent courts. His additional qualification as Master of Laws (LL.M.) qualifies him especially for multinational infringement matters in Europe.