Take Advice from Specialist IP Lawyers Before Signing Know-how Contracts

When considering involvement in an international business using copyrighted, patented or otherwise trademarked ideas or products, it is wise to employ suitably experienced intellectual property or IP Lawyers.

Indeed, this is recommended by the World International Property Organisation, which says in its advisory document: "The help of an individual consultant ... that will give advice and render other services concerning the planning for, and the actual acquisition of, a given technology can be useful, if not indispensable". So how can your IP lawyers help you?

One way to protect the transfer of information is to use a know-how contract. This agreement promises to share all the relevant information between the parties so that they can exploit the invention. There are a variety of ways in which the information can be transmitted. Physical forms include the use of documents and photographs, or computer files. This might include engineering or architectural drawings, equipment details etc.

Alternatively it may be practical to pass on know-how in an intangible form; this could include some kind of one-to-one support, training or product demonstrations to pass knowledge from one person to another.

Whatever kind of contract, it should be drafted so that it is sufficiently watertight should it be challenged in the future. Intellectual property lawyers who are specialists in this area will be able to advise on areas of an agreement that require to be included in documents. In situations where it is know-how that is being transferred, there is a need to be on guard against those newly appraised of information deciding to take what they have just learnt, and starting to develop their own similar or parallel technologies. For this reason, it is important to document dates on which particular individuals are exposed to any new information. Only then, at some point in the future, will you be able to confidently create a suitable defence.

While the passing on of know-how may be considered potentially dangerous, a watertight agreement will minimise the problems of losing control of specialist knowledge. And if you are an inventor, the flip side is that people given access to the information might be better able to exploit it commercially; perhaps by integrating it in an existing product range, which already has a brand awareness in its marketplace. So long as the inventor has made a satisfactory arrangement to collect suitable payment for the good sold, often via a licence or royalty on sales, then he stands to benefit much more quickly and more substantially, than if he were to go it alone.

But the key message from those in charge of policing the management of international patents, is that sound intellectual property advice at the outset will prove invaluable once commercial contracts are entered into. So make that call to your IP Lawyers now!

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