Intellectual property comprises patents, copyrights, trademark, design rights and registered designs. Some intellectual property rights (such as Patents, Trade Marks and Registered Designs) need a formal process of registration by the owner to the Intellectual Property Office, in order to afford protection and monopoly rights to the owner. Others, such as copyright and design rights, arise automatically upon creation, but do not protect from a third party’s independent creation – only from copying.
Of course, IP rights, only protect the expression of ideas, not the ideas themselves, as a very first stage it is important that, appropriate confidentiality provisions are put in place, to ensure that discussions during different parties at the very beginning, are protected and not disclosed.
The IP rights differ in terms of duration and procedures, but the effect is to ensure that the owner has the exclusive right to use and decide how those rights are used and exploited and to prevent any other party from using the same rights.
Patents protect an invention that is new, novel and has industrial application. This, in turn, allows the owner of the patent to use the invention to streamline its business processes, gain competitive advantage or increase its revenue, by granting licences or selling the patent to a third party.
Copyright protects original literary works (e.g. instruction manuals, computer programs) dramatic, musical works or artistic works (such as logos, maps, technical drawings, diagrams, photographs, works of architecture). The owner of copyright is the first author of the copyrighted work. So, if you engage consultants or subcontractors to write a report or carry out a survey or produce your website or a piece of software that party’s owns the copyright, even if you have paid for it. However, copyright does not protect ideas.
Trademark is a sign which can distinguish the goods or services of one trader from those of another. A sign includes words, logos, pictures or a combination of these. A sign to be registered must be distinctive, not deceptive and not identical or similar to any earlier marks for the same or similar goods or services. Please remember that, simple registration of your company with the Companies House, does not guarantee you trade mark protection. Also, if you have a website, you may want to consider registering the trade mark as a domain name and vice versa.
A Registered Design is a monopoly right for the appearance of the whole or a part of a product, resulting from the features of lines, contours, colours, shape, texture, materials of the product or its ornamentation. The design must be new and have individual character.
On the other hand, Design Right applies to originals, non-commonplace designs of shape or configuration of products. There is no need for registration and prevents third parties from copyright, without permission of the owner.
A business must be always aware of when and how intellectual property is created, in order to take all the necessary steps for its protection and exploitation. This means that contracts of employment need to have adequate provisions, dealing with creation of intellectual property and commissioned works need to be protected by appropriate contracts, which vest the intellectual property in the business commissioning the work.
But once a business has identified its intellectual property, what does it need to do next?
1. A business must manage its intellectual property portfolio
• Intellectual property is, as we have seen, made up of various rights and can be costly to maintain and protect. In an economic downturn it is crucial to review the strategy underpinning an intellectual property portfolio, to maximise its value and save costs.
• A business must conduct a review and decide whether it is necessary to maintain all patent, trade mark, domain name registrations and registered designs and consider the potential to abandon any registrations, which are ancillary to the needs of the business, or which are not cost-effective to maintain.
• Even when some intellectual property assets may not be of direct value to the business, they could still be licensed or assigned to third parties, for a substantial fee.
2. Capture and maximise value
• A business’ know-how, ideas and confidential information are valuable assets, often created at a significant cost to the business. Instituting and enforcing effective policies for the capture and retention of innovative ideas, trade secrets and inventions can often lead to enhanced business value and direct commercial benefits, which are particularly important within a more financially challenging environment.
• Patent filings may also be possible, adding further tangible value.
• It is also important to maintain a contractual and policy framework, to guard against the misuse of intellectual property rights by members of staff, particularly departing employees, who may have access to software code, customer lists or research and development material.
3. Monitor infringement and enforce your rights
• Infringement of intellectual property or other unauthorised use can have a severe impact on their and the business value. It is important to review the systems in place, to monitor infringement (for example, trademark watch services) and to review the strategy for taking action against infringers.
• Taking pro-active steps to enforce your intellectual property rights, may also create an opportunity to recover lost licensing revenue through settlement or damages awards. By contrast, a failure to take action to prevent and address intellectual property infringement, may result in lost license fees and royalties.
• Similarly, being aware of the intellectual property assets of your competitors and implementing clearance policies for new products or services, helps to avoid unwanted and costly infringement claims.
This article is for general purposes and guidance only and does not constitute legal or professional advice.