The value of the intellectual property held by your business should not go unnoticed or be underestimated. Intellectual property is usually the result of years of hard work which may have been undertaken by you personally or by the employees of your business, and is often produced at great cost and expense in terms of time and financial commitment. Consequently, the results of such work should be identified, protected and exploited as fully as possible. Your intellectual property is capable of conferring a huge benefit on your business by providing:
advantage and competitive edge over your competitors;
protection of your business’s brand and image as well as of its other assets such as inventions and know-how, designs and published works;
enhancement of the value of your assets;
income for your business by the exploitation and licensing of your intellectual property.
However, in order to take advantage of these benefits it is essential that you first recognize what intellectual property your business may have and ensure that it is properly protected. It is the purpose of this article to briefly highlight the different types of major intellectual property that may be relevant and the advantages proper protection may afford your business.
Trade marks
Trade marks have existed in various forms for over 5000 years, the first known example being that of a stamp on pottery. Such marks have proved a very effective and straightforward method of indicating and communicating to the general public the source and origin of goods or services and provide reassurance about the quality and reliability of such goods or services. This is crucial to building and maintaining a reputable brand and image for your business.
Trade marks may be registered or unregistered. In the UK, trade mark registration is not compulsory and it is for the proprietor to recognize the value of a trade mark and apply for registration if it meets the relevant criteria. The proprietor of an unregistered trade mark is automatically at a legal disadvantage if it does not register the mark, as in order to sue for infringement of an unregistered mark a party must rely on the common law remedy of passing off. Passing off may be exceptionally difficult and costly to prove, as there are significant evidentiary issues that must be addressed and overcome in order to be successful. Alternatively, a registered trade mark provides a monopoly right to use the mark for at least 10 years and affords automatic protection for any infringement and places no such onerous or unduly expensive evidentiary burden upon a party wishing to sue for infringement. Therefore, a registered trade mark is a valuable asset in any intellectual property portfolio, as it confers on the proprietor:
a statutory right to the exclusive use of the trade mark in connection with the goods or services for which it is registered;
the ability to license the mark for use by others thereby generating an income from such use;
the right to sue for infringement of the mark, if a business or competitor uses an identical or similar mark in connection with similar goods or services.
Copyright
Copyright affords protection to a wide range of original works which include:
original literary, dramatic, musical or artistic works;
sound recordings, films broadcasts or cable programmes, and
the typographical arrangement of published editions.
The above examples are extremely wide and offer protection for works such as manuals, documentation, photographs, databases and images. Copyright is also exceptionally important in some areas in affording protection to works that may not be covered by other forms of intellectual property protection. This includes the source codes for software, as well as the contents of websites and any material that may be downloaded or uploaded from the internet. Therefore, it is clear that your copyright works may be subject to use and copying without your knowledge and such use will be without the financial benefits that should rightly accrue to your business.
It is important that your business owns the copyright to any work it produces. This should be automatic if, for example, computer source code has been written by your employees. But questions of ownership are not always clear cut. The issue of copyright ownership can be a complicated matter and it can never be too early to seek advice, as works protected by copyright can be of surprisingly great value but it is often overlooked.
Patents
Patents are perhaps the most familiar form of protection many people first consider when they think of intellectual property. Patents are a way of protecting inventions inclusive of compositions as well as how things operate or come together technically. They may also protect such things as chemical processes. Patent registration ensures a very high level of protection by securing for the proprietor a monopoly over the invention for 20 years, thereby prohibiting others from using the invention without the proprietor’s permission. Patent exploitation and licensing may generate significant income on a royalty stream basis and other one-off license fees. Such income may endure for the life of the patent. However, there are a series of criteria that must be met before an invention can be patented. Crucially, the invention must not be disclosed to any third party prior to applying for a patent and the correct legal advice must be sought at a very early stage in order to ensure that “novelty” is preserved. To obtain patent protection, it is also necessary to demonstrate that the invention represents an inventive step and has potential industrial application.
Registered design rights
Registered design rights serve to protect the appearance of otherwise functional articles and can confer protection on three-dimensional designs where the product results from the features of the shapes, lines, colours, contours, materials or texture of a particular item. Protection also extends to two-dimensional designs including character images, logos and textile and other surface patterns. Above all, to be eligible for registration, a design must be new and have individual character. It should not have been previously disclosed unless disclosure took place within a grace period of 12 months.
The process of registering a design is relatively inexpensive and straightforward compared to some other forms of intellectual property protection. Registration may provide a 25 year monopoly and allows the proprietor to sue for infringement even where a defendant did not copy the design.
It is never too early to review your intellectual property! Businesses might wish to contact us as soon as possible so that we can audit the intellectual property rights it has and advise on the acquisition and exploitation of further rights it might acquire.
For more information contact Laurie Heizler.First published September 2007.
