In Breakthrough’s companion article Protecting Intellectual Property Worldwide, I explained how to protect your IP when entering overseas markets, but protection at home requires just as much attention.“IP rights don’t just cover products and inventions, they also extend to intangibles – the content on our websites, our brands, our designs and databases,” says Frank Jennings, Partner at law firm DMH Stallard.
“IP protection is a means by which businesses can lock value in and potentially keep competitors away from activities where they have invested time and resources. Also they can lock in value, as investors and lenders often look at the IP portfolio in determining the risk and worth of a business.”
The first task is to look at what assets exist within your business and what protection they should have: copyright, trade marks, design rights, patents and database rights. Have they been registered already? Are they being used by someone else under license? Are any IP assets being infringed? “It’s vital businesses take into account legal and registration costs,” says Frank. “That’s difficult when you are also trying to look after cashflow, but still crucial when you are developing an intellectual property portfolio.”
Trade marks and design rights
Trade marks are the most universal form of IP protection and essential for businesses. Registering your trademark gives exclusive rights to use it for the goods and services you offer in the UK and can be a highly effective means of heading off potential infringers. It’s possible to take legal action against an infringer of an unregistered trademark, although this tends to be costly and difficult.
“If a freelancer designs your website, or writes content for marketing, make sure you have a robust set of terms that transfer ownership to your business” Frank Jennings, Partner at DMH Stallard
In the UK, companies can benefit from both registered and unregistered design rights. Both forms afford protection, but keeping records as to development and content of a design is advisable. Registering design rights brings monopoly protection for 25 years from the date of filing, provided the design is renewed every five years.
For inventors and their companies, the patent application process is an essential investment. The technology covered by patents needs to be new and something that can be made or used in industry. However, the registration process can be long, costly and take several years, as Lorna Brazell, Partner with international law firm Osborne Clark, explains. “Registration is admittedly expensive at the later stages, but the Intellectual Property Office has waived the fee for the initial application,” she says.
Bear in mind too, that inventions must be fully tested and provable before you begin the registration process. Timing is also important. “You need to be first past the post,” says Lorna. “But if you file too early you may end up trying to defend something that is untested and may not work; that is not a sound basis for an action.”
Database rights and copyright
If you’ve collated a database to which you want to give people access as a commercial product, then providing there is originality in the selection or arrangement of the material, you will have an automatic database right. The content may well also be protected by copyright.
“IP rights don’t just cover products and inventions, they also extend to intangibles – the content on our websites, our brands, our designs and databases” Frank Jennings
As with database rights, copyright does not need to be registered. However, it should not be overlooked as including a copyright mark to content and literary or artistic works sends an important signal. Copyright protects works such as website content, sound recordings and instruction manuals.
Points to bear in mind
Some products are more complex than others and may require more than one form of protection. For example, a database of artistic works, such as music, will itself acquire database rights. “There may be copyright in content and design rights in the website. It sounds complicated, but generally the principles are pretty simple,” says Lorna.
In all cases, businesses should keep accurate records of the invention and development process, so when the product or service comes to market they can demonstrate ownership. “If a disgruntled employee leaves and then gets your product to market first, you can show they only knew certain things by association with you,” says Frank Jennings. And don’t give away the crown jewels by default. “If a freelancer designs your website, or writes content for marketing, make sure you have a robust set of terms that transfer ownership to your business.”
Finally, be prepared to police your IP. “It is a feature of our internet age that people think that if something is online it is free to copy,” says Lorna Brazell. “Being prepared to defend against infringers is paramount – not because everyone wants a legal fight, but because the best way to prevent future infringement is to show that you are prepared to protect your IPR. Just because you have got the mark on the register, for instance, doesn’t mean everyone will respect that.”
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