1. Dr Francina Cantatore, Bond University, Australia
A review of IP rights management in small and medium social enterprises in Australia
Dr Francina Cantatore,
Bond University, Australia

2. Focus of this presentation
Practice-based approach
What is IP?
IP protection in SMEs
Challenges for SMEs research and discussion
Based on –
‘Yours, Mine, and Ours: The Development, Management and Protection of Intellectual Property in Third-Sector Enterprise’, F Cantatore & E Crawford-Spencer, (2014) Intellectual Property Quarterly (3), 210.
‘Intellectual Property Rights Management in Small and Medium Size Social Enterprise in Australia’, F Cantatore & E Crawford-Spencer, (2015) Intellectual Property Quarterly (4)

3. What is IP? Creations of the mind – e.g. inventions
literary and artistic works
symbols, logos and images
names and brand names
designs and industrial designs
software
sound or visual recordings

4. Why are IP rights important?
Copyright © - not registrable
manuals
contracts
training materials
software
sound or visual recordings
Trade marks – last 10 years once registered
symbols, logos and images
Business names and brand names
Patents – last 8 years (innovation patent) or 25 years (standard patent)
Designs (including industrial designs) – last 5 years
Website:

5. IP Australia website

6. Why are IP rights important?
Freecycle Sunnyvale v Freecycle Network (2010) - US case
- “naked licencing”
Shelterbox misconduct case
(2012) UK
- neglecting IP rights

7. Protecting IP rights Statutory protection Copyright Trademarks Patents
At common law
Trade Secrets/Confidential information – tort of passing off
Another way??

8. Brand and IP Name, slogan, design, symbol For example:
WWP Inc v Wounded Warriors Family Support Inc
Deborah Heart & Lung Centre v Children of the World Foundation

9. IP Management
Effective IP management is an important aspect of good governance in SMEs

10. IP Management in SMEs
Face unique challenges

11. Motivation & Capacity Social welfare orientation Nonprofit status
Complex mix of aims & objectives
Partnering & collaboration
Lack of
infrastructure
management skills
resources

12. Research: Our pilot study (with Dr Elizabeth Spencer)
Research conducted with Australian SMEs: IP management in small and medium size social enterprises
Based on survey regarding IP management: Focus on trademarks, patents, copyright
10 In-depth semi-structured interviews with SMEs (Brisbane, Sydney & Melbourne) – variety of enterprises
Methodology - ‘qualitative purposeful sampling’ utilized (Patton, Stake)

13. Research findings: Perceived problems
1. Lack of funding
2. Lack of knowledge
3. Lack of time
4. Lack of management
Indicate 2 barriers to effective IP management:
Attitudes
Capacity

14. Research findings: Other issues
Branding – lack of connection
Pro bono legal advice – under utilised
Suggested:
Implement an IP strategy
Better use of agreements to regulate relationships
Better use of resources, e.g. pro bono advice
Need for education and assistance

15. Reconciling SME objectives and IP protection in practice
Need to
balance diverse interests
create effective legal infrastructures
To maximize benefits of
intellectual assets,
human capital resources and
strategic relationships

16. IP Management Model

17. …to take away
SMEs need a balanced approach to reconcile the tension between collaboration and protection of IP rights
IP rights are worth protecting -
whether commercial or social enterprise
“Anyone can have an idea. Make sure they don't have yours.”
IP Office of New Zealand

18. Thank you!