Every business owns intellectual property (IP) and for some organisations, it accounts for a large part of the value of the business. We take a look at what IP is, what your rights are and how to protect it.
What is intellectual property?
Intellectual property covers a wide range of creations including designs, inventions, brand names and software. Beyond the business world, it includes literary works and music.
It is an intangible asset, not a physical one, but it is often of great value to a business. For this reason, rights are granted to those who own IP, allowing it to be protected from misuse by others.
There are two categories of IP rights:
Registered rights
Some rights can be registered on official registers held by the government’s Intellectual property Office so that others have notice of them and so that the IP cannot legally be used by anyone else. These include:
- Patents;
- Trademarks; and
- Registered designs.
Unregistered rights
Some IP rights arise automatically and do not need to be registered anywhere. These include:
- Copyright;
- Unregistered trademarks, such as a business name;
- Unregistered design rights, similar to copyright but for three-dimensional designs;
- Database rights;
- Confidential information.
Patents
A patent is a right of monopoly over an invention. It is important not to disclose any information about your invention before you apply for a patent unless you have a non-disclosure agreement in place, or you may lose your right to have a patent.
Trademarks
A trademark is a sign or symbol that distinguishes a business’s product from those of its competitors. It could include a logo, brand name, slogan, packaging, colours or a unique shape.
To be capable of registration, the trademark must be distinctive, distinguish the product or service and be capable of being represented graphically.
Registered designs
A registered design protects the visual appearance of a product and prevents others from producing something that looks identical or similar. Your design will be protected, even if someone has never seen it before and produces something similar, as it is not necessary to prove that it has been copied. To qualify for registration, a design must be novel and of individual character.
Copyright
Copyright is often associated with literary works, song lyrics or original art, however it also extends to website content, software, written marketing materials, logos and instruction manuals.
It arises automatically when the work is created and generally lasts for 70 years after the death of the creator. The right prevents others from copying the work or issuing copies of the work to the public.
Unregistered designs
An unregistered design right arises automatically on the creation of the product, however, it is harder to enforce than a registered design right as you need to prove that your design has been copied.
Confidential information
While sensitive information is not generally considered to be intellectual property, it can have great importance to a business and is protected by law from disclosure where it is confidential or a trade secret. It must be confidential and have been provided on a confidential basis for a right to be enforced. It is also necessary to show that the disclosure has caused or will cause detriment.
Identifying your intellectual property
IP is frequently created by businesses as they develop, so it is important to not only identify your IP, but to carry out a regular audit to ensure you know exactly what you own. This will allow you to maintain control over it and protect it from infringement.
As well as ensuring your IP is registered where necessary, keeping your IP under careful scrutiny may also allow you to identify and exploit any commercial value it may have, for example, if you have developed software that you could licence for use by others.
Who owns intellectual property?
The creator of IP is the owner of any right in it unless the work is created during the course of employment, in which case it will generally belong to the employer.
It is advisable to include a clause in any employment contract stating that any IP created by an employee will be the property of the employer, for the sake of clarity and avoidance of doubt. This can also cover what will happen if IP is created by the employee using the employer’s resources but outside of working time.
If a contractor is used and they create IP, they may own some or all of the IP, unless the contract is carefully worded to give the IP rights to the person or organisation paying the contractor. A bespoke agreement should be used to ensure that there is no risk the contractor could claim the IP as their own, in which case they could sell it to a competitor.
9 tips for protecting your IP
1. Register it
Where possible, look into registering your IP. While it is not always worthwhile, for example, the patent process can be lengthy and expensive, it is worth taking professional advice. There may be alternatives available, such as registration of the design instead of a patent, which is generally easier to obtain and will also provide protection.
A patent must be registered before it is disclosed, but some other IP such as a trademark can be registered long after it was first used.
2. Keep records
As your IP is created, keep records of its development such as dated files and copies of the work that was done along the way. These could be useful in the future if there is ever any question over when and by whom it was created.
3. Know what you have
Carry out an audit of all of your IP assets. If you are not sure exactly what you have, you can engage a professional IP solicitor to help both list your IP and conduct a risk analysis to point out any areas of weakness in your IP protection.
4. Bespoke agreements
The best way of protecting your IP and avoiding disputes is often to ensure that you have robust legal agreements in place from the start. This includes non-disclosure agreements for employees working on the creation of IP, employment contracts setting out ownership of IP created during the course of employment, agreements with consultants who will be creating IP for you and agreements in respect of any collaboration with other organisations. Legally protecting your rights from the start will help ensure everyone knows the rules and reduce the risk of misunderstanding. Where clear contracts exist, it will also discourage other parties from engaging in litigation with you.
5. Make sure your team understand the importance of your IP
Keep teams who are working on new IP separate where possible so that information is contained. Make sure they understand how vital confidentiality is, the value of IP to the business and how they should deal with it.
6. Check for infringements
Getting into the habit of regularly checking for infringements, for example by setting up patent, design and trademark searches, conducting online searches and monitoring the marketplace that you are in.
7. Take enforcement action
If you do discover your rights are being infringed, take immediate action. It is often the case that early intervention can resolve a matter quickly before it escalates. It may be as simple as sending a solicitor’s letter to stop the infringement, but taking action sends a clear message to everyone that you will protect your IP if you have to.
How we can help you identify and protect your IP and enforce your IP rights
Our commercial team can advise you on the extent of the IP that you hold and recommend the best ways of protecting your interests.
If your rights have been infringed, we can represent you in dealing with the matter. Our advice will be clear and pragmatic and we will make sure that the strengths and weaknesses of your case are honestly presented to you so that you can make an informed decision as to the best course of action.
It is advisable to seek legal advice as soon as you become aware of a possible infringement as well as keeping any evidence you have as to the date of the infringement and what exactly has happened.
We can send an initial cease and desist letter on your behalf, which may be enough to stop the infringement. We can also discuss with you the possibility of an injunction to stop the breach of your rights.
It may be commercially preferable to negotiate with the other party to try and resolve the issue without protracted legal proceedings. We can deal with this on your behalf with a view to ending the infringement quickly and without publicity.
For more information about resolving disputes out of court, see our article, What is commercial dispute resolution?
If a settlement is agreed upon with the other party, we can draft a sound settlement agreement. This will state the terms that have been negotiated and will also mean that if the agreement is breached and infringement occurs again, you will have a stronger case should you wish to ask the court for an injunction.
In the event that an agreement cannot be reached, we can put together a case for court on your behalf and advise you on the best course of action.
Some breaches of IP rights are also criminal offences and Trading Standards may be able to assist in stopping the infringement of your rights.
Contact us
At Witan Solicitors, we have experience across a range of intellectual property issues and can help you conduct an audit and develop a strategy for protecting your IP.
If you would like to discuss identifying or protecting your IP or taking enforcement action in respect of an infringement of your IP rights, email us at info@witansolicitors.co.uk or fill in our contact form and we will be happy to discuss your options with you. We have offices in London, Birmingham and Northampton.
