BPTO publishes guide on managing intellectual property assets

BPTO publishes guide on managing intellectual property assets

The Brazilian Patent and Trademark Office (BPTO) recently published a guide entitled “Managing Your Most Valuable Assets“. This is the fourth edition in a series of publications offering information on the usefulness and application of intellectual property (IP) for business growth. Produced by the Intellectual Property Office of Singapore (IPOS) and adapted by the BPTO, the guide is the result of a partnership between the two institutions and aims to provide IP solutions for companies, based on best practices in the sector. The material addresses IP management in the legal context, explaining essential documents such as employment contracts and non-disclosure agreements. It also guides companies on how to manage and protect their portfolio of intangible assets, suggesting tools and strategies for implementing an IP policy aimed at mitigating risks.

The first topic of the guide deals with the four most common legal tools for IP management: employment contracts, contracts with customers and suppliers, assignments and licenses of rights; and non-disclosure agreements. In a company, it is natural for employees to create IP-protectable assets which will benefit the organization and whose ownership it will hold. This is why employment contracts are key to ensuring that employees understand the ownership of these assets and other confidential information, as well as their rights and responsibilities towards their employer. To protect the interests of all parties involved, the guide recommends that these contracts include clear clauses on non-disclosure, non-grooming and non-competition, as well as provisions setting out the conditions under which the IP may be owned by the employee.

Next, the guide addresses negotiation between companies and highlights that contracts with customers, suppliers or distributors should include comprehensive terms and conditions on IP rights, including specific clauses on ownership, legitimate use and licensing of rights. In contracts with suppliers, it is recommended to establish clear conditions on infringements of IP rights, as well as defining the rights of use, including contributions to development and the guarantee of continued protection of the protected asset. In contracts with distributors, it is essential to stipulate the conditions of use of the trademark to prevent its identity from being compromised.

The guide also emphasizes the importance of IP rights assignment and licensing documents. The assignment document is used to guarantee the effective transfer of ownership of the IP rights you wish to acquire. On the other hand, the licensing term is necessary to obtain authorization to use assets of interest, in cases where there is no intention of acquiring ownership.

The last legal tool covered by the guide is the Non-Disclosure Agreements (NDAs), which limit the use of sensitive information provided by the company. It is often necessary to share confidential information with third parties, and these agreements ensure that such information is not disclosed or misused. In the case of a future patent application or industrial design registration, for example, the disclosure of this information could be interpreted as public, which would prevent the patent or design registration from being granted.

As for managing digital portfolios, the guide suggests, as a first step, using an intangible asset register and systems to identify the company’s IP assets. Hiring specialized lawyers, service providers and IP management software can also be effective strategies for, for example, monitoring IP rights, issuing reminders, arranging payment of official fees, securing licenses and enabling renewal agreements.

The document also points out that IP valuation is an advantageous strategy for asset portfolio management, as knowing its value allows the company to financially justify its ongoing investments. In addition, it highlights the importance of developing a system to store and monitor signed legal records, making it easier to prove commitments made by the parties in any disputes and guaranteeing the enforceability and binding nature of these commitments.

Finally, as explained in the guide, an IP policy helps to manage and protect the company’s commercial assets, promoting a culture of awareness and responsibility among employees. By implementing a clear policy, employees understand their responsibilities regarding the confidentiality and proper use of IP assets, reducing the risks of improper disclosure or infringement of intellectual property rights. In addition, this policy stimulates innovation by encouraging employees to develop new assets in the course of their daily duties.

The document can be accessed via the link: Intellectual Property guide

Note: For quick release, this English version is provided by automated translation without human review.