The ownership and protection of intellectual property is a strategic issue – particularly for high growth potential ventures in science and technology. It can also have significant implications in terms of financing as investors like to see protected potential sources of advantage.
Rights – Introduction
There are a variety of Intellectual Property Rights, more commonly known as IP Rights, available for protecting different forms of innovation and creativity. These rights include patents, registered designs, unregistered design rights, trade marks, copyright, trade secrets and confidential information.
Registered and Unregistered Rights
IP Rights fall into two general categories – registered and unregistered rights.
Registered Rights: Registered rights provide a monopoly allowing the owner to stop others making use of IP rights without permission – even if this use is unintentional. To obtain a registered right, it is necessary to follow a specific application procedure as required by Official Bodies such as the UK Patent Office and if certain criteria are met, the right will be registered.
In the UK, the principal registered rights are:
• PATENTS: for protecting new and inventive technical aspects of a product or process
• REGISTERED DESIGNS: for protecting the appearance of a product
• TRADE MARKS: for protecting trade names, signs, symbols and logos associated with products or services
Unregistered Rights: Require no formal application procedure, but come into existence automatically when certain types of intellectual property are created. The owner of unregistered rights is entitled to prevent another from copying or making use of the rights, but cannot stop someone using an idea if they have developed it independently.
Unregistered rights include:
• COPYRIGHT: for protecting documents and drawings, including aspects of computer software
• UNREGISTERED DESIGN RIGHT (UDR): for protection of the visible shape of a product designs
• DATABASE RIGHT: for protecting against unfair use of database content
• COMMON LAW TRADE MARKS: for protecting the trading style associated with goods or services, e.g. trade names, signs, symbols, logos and goodwill
• KNOW HOW, CONFIDENTIAL INFORMATION AND TRADE SECRETS: for protecting sensitive information.
All Intellectual Property Rights are territory-specific and registered rights are obviously a stronger form of protection than unregistered rights.
A patent is a monopoly granted for the protection of an invention. It gives the patent owner the right to stop others exploiting the invention for a limited period, which in most countries is 20 years. A patent must cover novel and inventive matter. If there is any disclosure of the invention on a non-confidential basis, even by the inventor before filing a patent application, this may prevent obtaining protection for the invention.
A patentable invention can be a new product, a new process, a new apparatus for performing a process or, in certain circumstances, a new use of a known product. Patents cannot be obtained for something that is known or an obvious modification of what is known.
Patent applications are complex legal documents and the ‘claims’ within a patent specification require skilled drafting. The objective of the claim is not simply to protect an inventor’s ideas, but also to cover what a competitor might try to do having seen the invention, possibly by applying it in a different way. Unless properly drafted, a patent may be very difficult to enforce.
For this reason alone, Innovateur will always recommend the use of a professional patent agent (with experience of filings in your field of application). The only way you should attempt to file a patent yourself is if you have a particularl competent in this area – or can devote a great deal of time to thoroughly learning about it.
A registered design provides a legal monopoly protecting the appearance of the whole or part of a product. UK Registered Designs and Community Registered Designs last for an initial period of 5 years, this being renewable up to 25 years from the design application filing date.
Design registration is particularly appropriate for protecting products where it is the design which sells a product, for example goods in the fashion industry.
A trade mark is a symbol or sign used by a trader to distinguish a product, service or organization from those of other traders. A trade mark can be a brand name, a house mark, a company logo, a trading style or ‘getup’. A UK registration lasts initially for 10 years, this being renewable for further 10 year periods.
To be registrable, a trade mark must consist of or include a distinctive word or words, letters, numerals, a device, a logo or a combination of these. It may also be a sound, a smell, or a slogan. Certain shapes of packaging, for example the Coca Cola bottle, and colours associated with a trading style, for example the BP green petrol stations, now qualify for registration.
Copyright is a property right which can be used to prevent unauthorized copying and it comes into existence automatically on the creation of original literary, dramatic, musical or artistic works; sound recordings, films, broadcasts or cable programs; and the typographical arrangement of published editions. The term ‘artistic work’ is defined to include works of artistic craftsmanship, architectural works and photographs, sculptures, collages and graphic works. The term ‘literary work’ is defined to include a computer program. Copyright lasts 70 years from the end of the calendar year of the death of the author of the copyright work.
Unregistered Design Rights
Unregistered design rights can be used to prevent unauthorized copying of an original design. There is a UK Unregistered Design Right and a Community Unregistered Design Right which covers the whole of the European Community. The two forms of unregistered rights can co-exist, but differ from each another.
As these rights are not registered, verifiable records should be kept detailing when, and who created the designed article and when it was put on the market because proof of when the right came into being is needed by the Court if there is a design dispute.
UK Unregistered Design Right does not exist until the design has been recorded in a ‘design document’ such as a paper or a CAD drawing, a photograph, or even the designed article itself. UK unregistered design right lasts for the shorter of 15 years from the end of the calendar year when the design was first recorded, or an article was made to the design; or 10 years from the end of the calendar year of first exploitation of the designed article.
Community Unregistered Design Right comes into existence automatically when a new design is first made available to the public within the European Community. This right lasts for 3 years from the date on which the design is first made available to the public within the EU.
The protection of IP involves complex procedures and familiarity with the various procedures required to protect rights. The UK Patent Office recommends seeking specialist advice from Patent Attorneys or Trade Mark Attorneys, who are qualified to advise on such matters.