Identifying & Protecting Your Intellectual Property (IP)

What is IP and how best to protect it?

Put simply, IP is an intangible asset. Like any other business asset, it can be commercialised and exploited whether through the sale of the products that it protects or licensing third parties to sell those products for a fee. In some cases, where the IP is sufficiently valuable, it can be used as security for lending, helping businesses reach their potential through investment.

Some forms of IP are created automatically on the happening of a particular event, whereas other IP rights will only come into existence following a successful application for registration.

In either case, IP can warrant investment as more and more businesses recognise. In 2016, the UK Intellectual Property Office conducted a study into the growth of intangible investments in the UK between 1990 and 2014. It highlighted that since the early 2000s, there has been a greater investment into intangible assets than intangible assets. Further, it estimated that in 2014, £70.4 billion was invested into assets protected by IP, making up over half of all intangible investments in the UK that year.

What is IP and how can I identify it?

Whilst all businesses are different, the example below provides an example of how a business might create and utilise IP on a day to day basis.

Fakin’ It’ Ltd

Fakin’ It Ltd designs and manufactures innovative furniture. It has recently developed a new cushion technology, which prevents sofa cushions from wearing out. A very limited number of people within Fakin’ It need to know about this technology.

In addition, Fakin It’s design team has also been working hard on a new line of sofa designs.

Due to the experimental nature of the designs and the cushion technology, Fakin’ It intends to take the new product line to a trade show to gauge interest before manufacturing them.

There are a number of potential IP rights that are relevant to this scenario.

Trade marks

Firstly, the company’s name, trading name and/or name for this furniture range could be registered as a trade mark. A registered trade mark is a monopoly right and so enables the proprietor to prevent unauthorised use of that mark (or something similar to it), in relation to goods and/or services that are identical or similar to those for which the trade mark is registered. Whilst it is sometimes possible to prevent an unauthorised third party from using a trade mark if it is not registered, this is generally much more difficult.

You can apply to register a trade mark at any time and, if renewed every ten years, it is a right that will last indefinitely – it will never expire.

Design right and copyright

Turning then to the sofa designs, there are a number of different IP rights that may exist here.

The pattern on the upholstery – if original – will likely be protected by copyright, as an artistic work. There is no need to apply to register a copyright for that IP right to be created.

In terms of the design of the sofa and its component parts, these designs (or parts of them) could be protected by design right.

Design right can be registered or unregistered. Both rights require that the design be original and novel, although the exact tests for qualification are slightly different and the extent of the rights also differ.

For example, an unregistered design right does not protect surface decoration and it is infringed only if the design is copied.

In contrast, registered design protects ornamentation, as well as the appearance of the product resulting from its lines, contours, shape and texture. A registered design can be infringed even if the design has not been copied.

Registered design right protects the appearance of the whole or part of a product that results from the lines/contours, colours, shape and texture of a design. It can also protect ornamentation or surface decoration.

Unlike a trade mark, there are strict time limits that apply to design right registration. Put simply, any application to register must be made within 12 months of the design first being disclosed. So if the designs were disclosed at a trade show, then the application to register that design must be filed within 12 months of that disclosure.

Patents

Patents protect inventions that are new, involve an inventive step and are capable of industrial application.

Given the scenario above, the most obvious candidate for patent protection would be the cushion technology, although it is also possible that the method of construction of the sofas could be protected through a patent as well, assuming that method meets the criteria set out above.

Like trade marks and registered designs, patents are monopoly rights and so confer on their owners the exclusive right to exploit the invention, though the right only lasts for 20 years.

A key difference between patents and designs is that there is no such thing as an unregistered patent right. In addition, any disclosure of the invention (subject to a couple of narrow exceptions) made prior to the filing of the patent application will automatically mean that any patent granted is invalid. There is no 12 month ‘grace period’ as there is with registered designs.

In some circumstances, it is more appropriate to treat an invention as a trade secret and rely on the law of confidence to protect it.

For example, where the invention cannot be reverse-engineered and it is likely to be commercially valuable for more than 20 years, keeping the invention secret could be the better way of protecting it. If that is the case, then a business should take steps to protect that confidential information through, for example, the use of non-disclosure agreements.

IP audit

The above example demonstrates the potential number of IP rights that could be created or could automatically come into existence through the launch of a new product. In practice, many such rights (or the opportunity to create such rights) can often be overlooked.

At Nelsons, we offer IP audit, so as to help businesses identify and take steps to protect their IP. The service is provided for a fixed fee, and further details can be found here.