As a time-poor entrepreneur wearing multiple hats and getting on with running your business, you may not have considered one of your most valuable assets – your intellectual property. For many, these intangible ‘properties’ are actually worth more than their tangible assets, including cash, buildings, equipment and land.
Although much of the time invisible, IP protection is absolutely key to the future and value of your business. Our quick guide gives a brief overview of the most common types of IP, but for more assistance in practical protection, call our IP team.
What are the different types of Intellectual Property (IP)?
Patents protect against unauthorised use and/or exploitation of an invention. To qualify for patent protection, the invention must be:
- New (never having been disclosed or publicly used before);
- Must not be an obvious development of existing or known technology; and
- Must be capable of industrial application.
Discoveries, scientific theories, mathematical methods, computer programs and schemes, rules or methods of performing a mental act, playing a game or doing business are not patentable per se (although the law is developing flexibly in the case of computer programs that produce a novel technical effect).
As with most IP rights, patents are territorial in nature. Applications are made to either the UK or the European Patent Office and undergo an examination and possible opposition process before grant or rejection. It is also possible to file an international patent application, under the Patent Cooperation Treaty. The UK and other European patents last 20 years from the filing date, provided that renewal fees are paid and it is not invalidated. A patent provides a monopoly defined by the “claims”. Independent creation is no defence to any infringement: the monopoly is total.
Copyright protects against unauthorised copying of the whole or substantial part of original artistic, dramatic, literary and musical works (computer software being a type of literary work) or sound recordings, films, broadcasts and cable programmes.
- No registration is required as the right arises automatically.
- It lasts for the life of the author plus 70 years or, in the case of sound recordings, broadcasts and cable programmes, 50 years from the end of the calendar year in which they are made.
Copyright does not however provide a monopoly right: if a similar or identical work to the copyright is produced independently and without copying, it will not infringe the copyright work.
Database right exists independently of the copyright (if any) in a database and protects the compilation of information comprising the database and its unauthorised extraction or re-utilisation.
The right arises automatically, provided that there has been “…..a substantial investment in obtaining, verifying or presenting the contents of the database”. There have been some changes to the nature and extent of database rights in the UK following Brexit, so speak to a specialist to get the latest advice.
UK registered designs
This is a national monopoly right over designs of the whole or part of a product (including its packaging) relating to its shape, colour or texture, amongst other features. To be registerable, the design must be new and have an “individual character” (leaving a different overall impression on an informed user).
- It can last for up to 25 years from application.
- Independent creation is not a defence against infringement.
UK design right
This is a right to prevent the reproduction of designs. It covers the design of any aspect of the shape or configuration of the whole or any part of an article.
- It does not cover surface decoration.
- No registration is necessary.
- It lasts for up to 15 years from creation.
- There are strict qualification criteria for foreign nationals who wish to claim ownership of UK design rights.
These are related to copyright and there are three principal moral rights:
- The right to be identified as author or director of the whole or substantial part of a work (“paternity right”). This right needs to be asserted within the work in order to be enforceable.
- The right to object to derogatory treatment of the whole or any part of a work (“integrity right”).
- The right not to have the whole or any part of a work falsely attributed to you (“false attribution”).
With the exception of the false attribution right, which lasts for 20 years after a person’s death, moral rights last for 70 years after the author or director’s death.
Trade marks include signs or “brands”, used by traders to differentiate their goods or services from those of others, serving as a badge of origin. The right can be registered or unregistered (protected in the UK under the common law action for passing off). The former gives a monopoly right to use the sign in relation to the goods or services for which it is registered. Depending on the likelihood of confusion or the repute of the mark, it also protects against the use of similar signs in respect of similar, or even dissimilar, goods or services. Registrability is subject to the sign’s inherent distinctiveness, non-descriptiveness and any pre-existing rights of third parties. Registered trade marks can last indefinitely if properly maintained.
Although not a true IP right, it can arise from a contractual arrangement with an internet service provider. Domain names are generally registered in respect of names or brands or denote an internet “address”. This is merely a contractual arrangement with the relevant generic top-level domain (gTLD) of the Country-code top-level domain (ccTLD) registrar. It is not a right capable of ownership but can last indefinitely if renewed.
Again, this is not an intellectual property right as such. Know-how can be protected on the basis that it is confidential information or a trade secret (and such confidentiality needs to be preserved if such know-how is to become the subject of a successful patent application – see the first of the qualification requirements for patents above). Protection is usually established by contractually imposed obligations to prevent unauthorised misuse or disclosure by others. Rights can also be implied inequity in certain circumstances, but contracts make the position more apparent.
Our team of IP experts can guide you through the whole protection process having in-depth knowledge of a wide range of sectors including fintech, MedTech, scientific and healthcare, working with companies and entrepreneurs across the UK and globally.
Things to consider before entering an IP Collaboration
Collaborations to develop new intellectual property (IP) are becoming more widespread across many sectors but how can you be sure you are protecting your best interests?
As businesses become increasingly specialized, new opportunities for growth may require working with another entity to test ideas and create new solutions. However, before entering into a collaboration agreement, there are a number of things to consider.
The benefits of collaborating
Not only is collaboration useful for creating new products and processes, it also has a range of other benefits, including:
- Driving forward company growth and brand awareness
- Entering into new markets
- Creating new IP
- Research and development (R&D)
- Keeping up with competitors
When drawing up a collaboration agreement, it is vital that key elements of the agreement, such as IP and confidential information, are defined clearly. There are a number of aspects to consider, to protect both the collaboration and each party.
These can include:
This refers to the existing IP each party already has and should be kept separate so that there is no ambiguity between existing IP and IP created as part of the collaboration. Background IP must be defined clearly, particularly unregistered IP and know-how. This is a technical skill and is best done with the advice of a lawyer.
This refers to the new IP that is born out of the collaboration. Again, this should be carefully considered and defined. Clauses relating to Foreground IP should cover, for example, the disclosure of IP to the other party, ownership and licensing, as well as the responsibility of protection and registration. When negotiating how Foreground IP may be commercialised, the parties should consider whether there are any legal restrictions, such as competition law.
Both the agreement itself and know-how/trade secrets should be considered. While the agreement itself is usually confidential, it should be agreed on how each party’s confidential and technical information can be used. This should also cover the consequences of the agreement being terminated for any reason and the duration of obligations.
Practicalities & responsibilities
This should encompass all the basics, from how the parties will communicate, to the project schedule and change control. While this part of the agreement does not refer to the IP, it is still very important to define each element carefully.
Sharing IP can be tricky, so the parties in collaboration should decide the corporate structure in the early stages. For example, if both parties have their own limited companies, they may wish to create a separate holding company to protect the IP and another trading company that will upfront the commercialisation of the project.
In summary, collaboration agreements are extensive documents that must cover all aspects of an arrangement in order to protect both parties.
While the benefits of collaboration can be great, it can also be a difficult balancing act between achieving a lucrative partnership and ending up with an investment flop.
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Nick helps UK and international clients enforce and protect their Intellectual Property rights, and defends those accused of infringing IPRs. He heads up our Commercial and Intellectual Property teams, they are committed to offering their UK and international clients innovative and practical advice.
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