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Protecting IP rights when staff leave

If your organisation employs staff, it’s a sure bet that at some point in the future they will choose to leave. When they do, how can you ensure that the company’s Intellectual Property Rights (IPR) and other sensitive information are protected?
 
As with many things in life, prevention is preferable to cure, so plan for leavers early – in fact, plan for it at the appointment stage. Broadly speaking (under UK law) where an employee creates IP in the workplace in the course of their normal employment duties, the rights automatically vest in the employer.  To maximise protection, IPR ownership should also be explicitly addressed in employment contracts, along with contractual obligations to not disclose confidential information and trade secrets both during and after employment. The employment contract can also be used to obtain the author’s waiver of any moral rights which may exist in Copyright works they create as part of their employment. Employment contracts should also include explicit requirements for employees to return and/or delete all confidential information on termination of their employment or at any time if requested by the company. This should include both the return of physical documents and anything stored electronically. 
 
During the period of employment and as a matter of good practice to ensure there is no doubt over what information is confidential or a trade secret, employers should highlight such information by labelling it clearly.
 
Many companies use a leaver “check list” – ensure this specifically addresses IP, confidential information and trade secrets, and that all information identified is catalogued, and stored in an accessible form and manner. Categories include:
  • Processes & production information, know-how & previously attempted, but flawed techniques or 'blind alleys' that did not achieve their intended results (“negative know-how”)
  • Machines & manufacturing information
  • Customer lists & confidential customer information, reports & analyses
  • Operation & design manuals
  • Designs, drawings, diagrams & artwork
  • Ideas & plans
  • Technology information
  • Formulas & calculations
  • Compounds
  • Prototypes
  • Laboratory notebooks & experiments
  • Experimental, analytical & design data
  • Vendor & supplier information
  • R&D information, reports, know-how & negative know-how
  • Cost, price, profit, loss & margins data, reports & analyses
  • Quality control information, procedures, manuals & records
  • Maintenance know-how & negative know-how
  • Sales & marketing information, reports, forecasts & plans, advertising materials
  • Financial information, documents, budgets & forecasts
  • Computer printouts, operating reports
  • Administrative & managerial information, key decision makers, internal organisation
  • Computer software & source code
  • Creative individual works & collaborative works

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