Marks & Clerk LLP are a group of patent and trademark attorney firms with offices in Europe, Canada and Asia and a trusted partner of the Business Growth Hub. Here are four things every business should know about Intellectual Property (IP) by Mike Shaw (partner for Marks & Clerk LLP).
Four things every business should know about Intellectual Property (IP)
We were recently approached by an entrepreneur seeking assistance in protecting a new and innovative idea for a piece of furniture. However, he had a published patent application that claimed only his prototype in exhaustive detail. This allowed competitors to steal his idea by slightly modifying his prototype, which rendered his patent practically worthless.
The problem was that, while he understood the need for intellectual property protection, he misjudged timings and the scope of protection he needed. Many misunderstandings about IP can be avoided with a little information. Here are my four tips to help businesses navigate the world of IP.
What IP protection is available?
Before seeking protection, you need to understand the different kinds of IP available and how much they cost. IP protection is territorial and different types are available in different countries. These are the types most UK businesses need to be aware of:
- Patents are very powerful if used correctly because they can block others from copying an invention for up to 20 years, provided that application of the invention provides a unique product or service with advantages over its competition. Patents are particularly useful if your idea is easy and cheap to copy. For example, you might have a brilliant idea for a new gadget that requires time and money to develop, but once on the shelves can be easily copied or modified by a competitor. Used correctly, a patent will stop others from stealing your idea by simple modification.
- Registered Designs protect the appearance of a product for up to 25 years, but not the idea itself. However, as many products are unpatentable, designs provide a quick and cheap alternative. For example, a dragon-shaped suitcase is not patentable because it works like a normal suitcase, but its looks are worthy of design protection. That said, a different-looking dragon suitcase may not infringe the design.
- Registered Trade Marks can protect almost anything that indicates the commercial origin of goods or services, such as words, logos, symbols, slogans, smells, sounds etc. Trade mark registration is often sought to obtain legal certainty and provides a strong basis for franchising and licensing a brand.
- Unregistered rights are rights that you don’t have to apply for in the UK, which include unregistered designs and copyright. Unregistered rights are much more expensive to enforce than registered rights.
Where to file for IP protection
Key point to remember: All IP rights are territorial. Few seek worldwide protection for their products due to prohibitive costs. What most people do is protect their products in the countries they hope to market in, as well as the countries that they will manufacture/practice in. Depending on the protection desired, different options exist. For example, protecting a product with a trade mark is simple in Europe because you can apply for a pan-European trade mark. However, patent protection is more complicated because you will eventually need to maintain patents in each European country of interest.
You need to budget for the costs associated with applying for the protection in the first instance (application fees, search fees, drafting fees, etc) as well as ongoing prosecution costs and annuity fees. Many businesses plan for the former, but not the latter. If money is an issue, be ruthless with the IP you keep.
How to best use IP protection
Finally, don’t limit how you use your IP. Nowadays, it’s common to use patents, trade marks and other forms of IP protection as tradable assets and to secure investment. If you are not able to produce your invention on the scale necessary to take it to market, consider licensing your rights to someone who can. You can still profit from your invention, but others commercialise it.
You will need to be prepared to defend your rights if they are infringed. Although it might seem from the headlines that there is a lot of litigation at the moment, most parties come to an agreement well before it reaches court.
However, do your homework if it does come to launching proceedings. If you threaten a competitor with infringement, but the competitor can show that it does not in fact infringe your rights, the competitor may be able to bring a claim against you for the making of a groundless threat of infringement.
In summary, IP rights can be a very valuable tool to protect and develop your business, but care is required to ensure that the correct protection is secured at the right times.