If your employees or independent contractors create intellectual property, it often becomes your property.
For example, s 25 of the Copyright Act 1968 broadly provides that the copyright in a literary, dramatic, artistic or musical work made by an employee or independent contractor pursuant to an employment contract or contract for service will be owned by the employer.
Similarly, s 13 of the Designs Act 2003 provides that a design created by an employee during the course of his or her employment, or an independent contractor pursuant to a contract of service, will be owned by the employer.
There are, however, no such provisions under the Trade Marks Act 1995, the Patents Act 1990 or the Copyright Amendment (Moral Rights) Act 2000. Equally, the provisions of the Copyright Act 1968 and the Designs Act 2003 can be excluded by a contrary provision in a contract.
Because of this murkiness, it is important to have strong intellectual property clauses in employment contracts and contracts for service.
Doing so can be the difference in making sure you own any intellectual property that employees and contractors create.
Perhaps the most important thing that you can do to protect its intellectual property is to include an assignment clause in all contracts with employees and independent contractors. This assigns any intellectual property created to you.
It is also a good idea to include a clause that obliges employees and contractors to cooperate with you to effect the perfection of intellectual property rights through registration wherever it is necessary for you to do so.
It is also important for all contracts to include clauses which restrain employees and independent contractors from:
- Disclosing your confidential information without the employer’s written consent either during or after the term of the contract, except as required by law.
- Using your confidential information either during or after the term of the contract, except as is required in the performance of the employee or contractor’s duties or as required by law.
Ultimately, it is important to be as specific as possible when defining the concept of confidential information. It should extend to trade secrets, technical knowledge, any know-how that is specific to the employer, plans, processes, procedures, methodologies, financial data, client lists, employee lists and marketing and business plans.
Contact JFM Law on (02) 9199 8597 if you need some advice on protecting your intellectual property. If you would rather get in contact through email, send your question through or by email at wehelp@jfmlaw.com.au
The information contained in this post is current at the date of editing – 27 November 2023.
