Harvest your Companies Intellectual Property (IP)

Introduction

IP is just as much your property as your buildings, equipment and stock, and like those it can be bought sold and “rented”. Like all property, though, it needs to be well built and regularly maintained. Virtually every business has some form of IP, though it is not always valued and looked after as it should be. Common misconceptions are that only businesses which develop new products and patent them have valuable IP, and that it is an expensive drain on company resources. Some forms of IP are virtually free if you know how to go about it, and claim your rights – Intellectual Property Rights or IPR.

IP falls into two general groups – registered and unregistered. There are three types of registered rights – Patents, Registered Designs and Trademarks. “Registered” means registered with the UK Intellectual Property Office, or IPO, which is what we used to call the Patent Office. Put very roughly, the difference between a Patent and a Registered Design is that the Patent protects the way something works, whereas a Registered Design covers how it looks. A Registered Trademark can protect both company names and the name of a product or service. A formal application to the IPO is needed, and the downside is that fees are payable, which can get very substantial for an international patent application, but would be a few hundred pounds for a UK Registered Design or Trademark. The advantage is that you have the IPO to stand witness as to your claim of an invention, design or new idea, and the date when you applied for it.

Unregistered Rights

The unregistered rights are free and automatic, but the disadvantage is that you must be your own very careful record keeper to prove what new thing you came up with and, importantly, when. Unregistered rights are Copyright and Design Right.

Copyright is automatically yours when you create, for example, novels, instruction manuals, computer programs, song lyrics and music, newspaper articles, sound and film recordings, dramatic and artistic works, technical drawings, diagrams, maps and logos and some types of database. There is no fee to pay, but it is usual to mark your work with the symbol © followed by the date and your name. For full details on Copyright, see the IPO’s website www.ipo.gov.uk.

Design Right gives you automatic protection for the shape or appearance of an original design. It allows you to stop copying of the shape of the article, but does not give you protection for any of the 2-dimensional aspects, for example surface patterns. Protection is limited to the United Kingdom (UK), and lasts either 10 years after the first marketing of articles that use the design, or 15 years after creation of the design – whichever is earlier. Again, it is free, but you must be your own witness to prove when you created the design, and to defend it you must be able to prove it was copied.

Registered Rights

The Registered Rights consist of Patents, Registered Designs and Registered Trademarks. All these have to be applied for from the IPO, with attendant fees to be paid, and if the application is successful, they are then registered with the IPO which then is your witness as to when you came up with the invention or design.

Patents protect new product and process inventions and cover how things work, including what they do, how they do it and are made. You have the right to prevent others from making, using, importing or selling the invention without permission. For a Patent to be granted your invention must: be new, have an inventive step that is not obvious to someone with knowledge and experience in the subject and be capable of industrial application. If you have a patent granted, you must renew it every year after the 5th year for up to a maximum 20 years protection. It is normal to begin with an application in theUK alone, and then extend protection internationally at a later date if required. It is absolutely vital that you do not show your idea or invention in public before applying for a patent, since this can invalidate your right to a patent completely. If you must show the idea, make sure the disclosure is covered by a Confidentiality  or Non-Disclosure Agreement. Regenerate Pennine Lancashire will be pleased to advise further on this. Since a strong patent depends heavily on a very carefully worded, legally sound description of the idea, it is not a good idea to attempt this without the assistance of a qualified Patent Attorney. Regenerate Pennine Lancashire can put you in touch with reliable practitioners

Registered Designs give you exclusive rights in the look and appearance of your product. You can stop people making, marketing, importing, exporting, using or stocking a product to which your design is applied. You can claim protection for the shape of a product, a two-dimensional surface pattern or graphic design, or a combination of the two. Registered Designs can be renewed every 5 years up to a total of 25 years. Your registration may be enough to stop anyone infringing your design irrespective of whether they copied or came up with the design independently, and it allows you to sell your design and the IP rights to it, or license someone else to use your design whilst you retain the IP rights.

Registered Trademarks are signs which distinguish your goods and services from your competitors. They can be, for example, words, logos or a combination of both, or even a colour or sound (Intel jingle) or gesture (Asda pat on the back pocket). You can use your trade mark as a marketing tool so that customers can clearly recognise your products or services. A Trademark application is made to the IPO, and is likely to be accepted if it is distinctive for the goods and services you provide.

There are fees involved, but it is relatively simple to apply on line to www.ipo.gov.uk. Read the IPO’s information carefully as there are 45 different classes of product and service, with many exceptions which may prevent your mark being accepted – see the IPO website for further information. A registered trade mark must be renewed every 10 years to keep it in force, but if this is done it can last forever. When a mark is accepted and registered you may put the symbol ® alongside it, but only if it has been properly registered, otherwise this is an offence. You may use the the letters “TM” since this has no legal standing in the UK.

The Value to your Business

As the business grows, the value of the Registered Trademark grows with it as a recognisable guarantee of quality. Would you like to estimate the value of marks such asHooveror BMW. Even a long defunct mark such as Norton motorcycles was bought recently for a substantial sum by a company recommencing their manufacture.

There is one other way to protect your IP which we have not mentioned. That is the Trade Secret. If it is possible for you to keep your idea totally secret within a small chosen body of people, this protection can last indefinitely. Obviously, if the invention is a mechanical device, it can be taken to pieces and replicated, and in this case a Patent would be the way to go. If, however, it is a particular way of achieving something, say by careful control of ingredients, timing and temperature which can be kept behind closed doors, then keeping it secret may be best. If Coca Cola had patented their formula when they invented it in 1886, their protection would have ended by 1907. Instead the formula is still secret within the company 125 years later.

An example of a product which incorporates all the formal Rights mentioned would be the Apple i-Pad – there will be many patents protecting what goes on inside and since the appearance is very important, it will certainly be covered by a Registered Design, there are two Trademarks, Apple for the company and i-Pad for the product, and the instruction leaflet will be Copyright as will any original software in the product. Design Right would also apply, but it is superseded by the more powerful Registered Design.

So what’s in it for you? Obviously if you have come up with an earth-shattering new product, you need to take every step possible to prevent your competitors stealing your ideas. Unfortunately IP theft, unlike counterfeiting of products, is not a criminal offence and therefore the offender must sued in the civil courts by the IPR holder, which is not cheap. To help to a certain extent, the IPO has set up the Patents County Court for easier access to justice to protect patent and design rights. A damages cap of £500,000 for claims made in the Patents County Court means small companies claiming damages up to that amount are less likely to face a potentially more expensive trip to the High Court.

In some circumstances, such as the development of a fashion product, which will be fast moving and short lived, formal IP protection may be a waste of money and effort since by the time it is granted, the product has run its course.

It is often said that your IP is only as strong as your financial capability to protect it, but this need not be a disincentive to establishing some of your own IPR. Making products to your new patented or registered design is only one way of exploiting it. You could license it to a bigger company, taking a percentage royalty fee, and letting the big boy look after the protection of it, or sell the IPR outright. There are successful companies which do nothing else but research and development and license the results.

In the reverse direction, you might find that licensing in some technology may save you time and expense in development, and even if you do produce the product or process which is protected in the UK and sell only in the UK, you may then license (effectively “rent”) the IPR to other companies further afield – taking care that you have extended the IP cover to those countries first of course. Companies are regularly bought out for their IPR rather than for their buildings and equipment, and a careful assessment of your own IP could well reveal a potential money earner.

For guidance on how you may be able to make the IP system work to your advantage, please get in touch with us at Regenerate Pennine Lancashire for a free consultation and recommendation. We can also in some circumstances part fund legal work such as applications for patents, trademarks and registered designs, and advise how your IP management can be better integrated with your whole business and product development strategy.

Paul White
Innovation & Technology Advisor

Further Information

For guidance towards building up your own valuable IP portfolio, please contact Paul or one of the team from Regenerate’s Lancashire Innovation Network for free on 0800 612 2029 or Contact Us to make an enquiry.

For further information consult the Intellectual Property Office’s website www.ipo.gov.uk.