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INVENTOR'S CHECKLIST
INTELLECTUAL PROPERTY

WHAT PARTS OF YOUR IDEA CAN BE PROTECTED BY INTELLECTUAL PROPERTY RIGHTS?

"25% OF ALL RESEARCH AND DEVELOPMENT EFFORT ARE WASTED EACH YEAR ON INVENTIONS THAT HAVE ALREADY BEEN INVENTED."- INTELLECTUAL PROPERTY OFFICE (IPO)

Intellectual Property (IP) is a way of protecting your business’ property and assets.

The decision process regarding IP protection is tied into the commercial strategy of your business. Over the course of the 10 modules we will cover a variety of topics which will help you to validate the nature of the demand for your idea, market landscape, and the business model you may choose to pursue, which in turn can help you identify the IP strategy that would be most suitable to you and your business.

There are many different forms of IP, both formal and informal, that can be used to protect your idea, and will allow you to commercially exploit it. The best source of information on IP is the Intellectual Property Office which is the authoritative source of information regarding all forms of IP in the UK.

A useful resource for assessing IP in your business is the Intellectual Property Office’s IP Health Check which can help you identify your IP assets and provides you with guidance on how to protect them.

IP should be considered throughout the innovation and new product development process. When developing your IP approach, you should:

  • Ensure your IP objectives are proportional to your business project objectives.
  • Ensure that you maintain a current review of your IP and your relative business situation.
  • Identify any immediate actions needed.
  • Ensure ownership and management.
  • Identify areas of weakness.
  • Identify areas that require planning and action.

Obtaining IP is not a commercial goal in itself. It is an important means, allowing you to generate value for your business.

THERE ARE TWO TYPES OF IP
Registered IP
  • Patents
  • Registered Designs
  • Registered Trademarks
Unregistered IP
  • Unregistered Trademarks
  • Unregistered Designs
  • Copyright
  • Know-how

PATENTS

Patents protect new inventions and covers how things work, what they do, how they do it, what they are made of and how they are made. To be patentable, your idea must be new and have an inventive step (that is not obvious to someone with knowledge and experience in the subject.)

For further information on patents see the IPO’s 'Patent: basic facts' publication.

A patent is essentially an exchange; the inventor is granted a monopoly which prevents others from making, using or selling their invention (or a specific part of their invention). In return the inventor provides information on their invention, and how to create or replicate it, which is published in publicly available databases..

Patents can provide protection for up to 20 years, provided renewal fees are paid each year. Others can use patents to base their own R&D work on, but during the life of the patent (20 years), others cannot commercially exploit your patent without your permission or without paying you a license fee.

Useful sources on patents: European Patent Office - patent information tour

PATENT SEARCH

Prior to starting the process of patenting an idea, or even deciding whether you wish to patent your idea, it is important to carry out as much research as possible to ensure you are aware of all the existing products, research and patents (prior art) which exists in the area of your idea.

You can do a free worldwide patent search through Espacenet, the European Patent Office’s patent search engine, it offers free access to over 80million patent documents worldwide.

The benefit of doing a patent search is to:
  • Find out what already exists and build on it.
  • Keep track of who is doing what.
  • Avoid infringing other people’s patent rights.
Espacenet

Espacenet will allow you to search what other people have been developing and what they consider worth protecting. If the invention, or more importantly the key aspect of your invention which you would detail within the claims section of the patent, is not new, then you will not obtain patent protection for the idea.

When undertaking a search be wary of ‘naïve’ keyword searches. For example, a ‘spring’ may be described using a term like ‘energy storing means’, or a ‘ball bearing’ may be described as ‘a plurality of balls’. This jargon may be used to broaden the scope of the patent, or to try to prevent the patent from being found.

Becoming familiar with the form, structure and content of existing patents helps to give you an appreciation of how they could be used to protect and add value to the commercial exploitation of your particular idea.

worldwide.espacenet.com

PATENT ADVANTAGE AND DISADVANTAGES

The advantage of a patent is that your draft claims (part of your patent application process) give you exclusivity over elements of your invention. This provides the opportunity to license that patent to a third party who could use it to make and sell the product resulting from your idea, allowing them to make money and you to be paid a license fee in return. This would mean that you would not have to run a business and manufacture and sell the product yourself.

However, the patent would have to provide exclusivity over something which had the prospects of making money.

You will need to consider how easy it would be for a competitor company to produce a product which deliveres similar benefits, without actually infringing your patent. When considering this, it is worth remembering that it is the details of the claims in a patent over which you gain exclusivity, not the entire concept.

It is also worth considering the balance between the cost of obtaining a granted patent and the potential revenue which could come from it. The harsh commercial reality is that enforcement action based on a patent is very expensive. Additionally some less scrupulous organisations will have a strategy of infringing, when they think the person with the patent does not have the resources to take enforcement action.

Many businesses decide not to pursue the route of patenting, and a key reason for this is that after the 20 years they lose their patent protection. Products like Coca Cola and Irn Bru instead decided to protect their products using secret know-how. This is another form of IP protection based on secrecy.

COPYRIGHT

Copyright is an intellectual property right that protects the expression of an idea (rather than the idea itself). For example, copyright will protect a magazine article, but not the idea for the article. It protects written, theatrical, musical and artistic works as well as film, book layouts, sound recordings, and broadcasts. Copyright is an automatic right that you don’t need to formally apply or pay for.

To be protected there has to be some sort of documentation of your idea in a physical form – for example written down, painted, recorded or stored in a computer memory.

The work does not have to be novel, aesthetically pleasing or of artistic merit to be protected by copyright, but it does have to be the result of someone’s independent intellectual effort - that is, it must not have been copied from someone else, and it must be the result of someone's skill, labour or judgment.

WHO OWNS COPYRIGHT?

Copyright belongs to the person who created the work. Even if work is commissioned by you as a customer/client/ employer, the Copyright belongs to the author, unless they have entered into a written agreement that the author transfers ('assigns') the copyright to you, as the customer, client or employer. In the case of an employee, it is best practice to ensure that you have a written employment contract which expressly states that IP in works created as part of the employment are the property of the employer. How long does copyright last?

Copyright typically lasts for 70 years after the death of the author of the work. However please see the IPO for specific information on copyright protection.

For further information on copyright see:

TRADEMARKS

A trademark is a sign which distinguishes your goods and services from those of other traders.

Many people refer to their trademark as their brand. It can be composed of a word, a phrase, a picture, and can even be a shape, colour, sounds, aspect of packaging or a combination of these. For example, the name ‘Coca Cola’ and how it is written is a trade mark, similarly the word ‘Google’ and its use of colour and typeface is equally a trademark for the company. Be aware that registration at Companies House provides no legal right to use that name as a trademark.

There are two types of trademarks - registered and unregistered.
REGISTERED TRADEMARK

registered trademark gives you exclusive rights to use your mark for the goods/services it covers in the UK. A registered trade mark can be identified by the ® symbol. Registering your trademark makes it easier to take legal action against anyone who uses your trade mark without permission.

Not everything can be registered as a trademark, for example:
  • Descriptions of the products you sell or the services you offer. For example, the Pen Shop.
  • Terms which have become customary in your line of trade, for example ‘China Garden’ for Chinese restaurant services.
  • Words or images which are offensive to the public. For example, taboo words.
UNREGISTERED TRADEMARK

If a company doesn’t register their trade mark, they may still be able to take action if a person uses it without permission, by using the common law action of passing off. However it can be difficult and expensive to prove the action of passing off for trade marks that haven’t been registered.

For further information on trademarks see:

DESIGN RIGHTS

A design right protects the visual appearance of a product or part of a product. It can’t protect an idea or a concept. A number of factors can affect the appearance of a product including shape and contour, configuration, textures, materials and colour.

There are two types of Design Rights – Registered Design Rights and Unregistered Design Rights. UK registered designs need to be renewed every five years and last a maximum of 25 years and UK unregistered design rights last between 10-15 years.

For a registered design, your designs are examined and registered by the Intellectual Property Office or other international offices. It gives you a legally enforceable right to prevent others from using your design without permission. For an unregistered design right, you are automatically protected but it offers less protection. An unregistered design right in the UK and Unregistered Community Design (in Europe) provide a similar type of protection to a registered design, but it can be harder to enforce and has a much shorter duration.

CONFIDENTIALITY, CONTRACTS AND PROCESS MANAGEMENT

In terms of protecting your idea just now – we’d suggest you might use a Non-Disclosure Agreement (NDA) when discussing the idea with any individuals.

Other methods of protection can be considered when the idea is refined further into a more specific business proposition.

GUIDANCE FOR WORKING WITH SUB-CONTRACTORS

Before starting work with any contract staff, sub-contractors (website/app/product/graphic design companies) AND SO ON, be clear about who owns the IP of the work being developed. By default, a person who creates something, even as part of their employment, owns that work, and for the you to exploit it, a royalty may have to be paid, an agreement would have to be reached, or the IP would have to be transferred to you as part of the contractual agreement.

Please note that a license by the creator (sub-contractor) of a work in favour of you (as the employer) may be appealing to the creator, but it is certainly far from a good idea for you, as a license is by its nature limited, and there may be ways, not envisaged in the license, by which you may want to exploit the IP at a later stage. This would leave you exposed to the risk of not being able to do what you wanted with the idea.

It is important to ensure that all the IP in the work already undertaken is appropriately assigned to the business. The simplest, most comprehensive approach that ensures that your IP remains your property is by outlining in the contract that upon payment, ownership of the IP is transferred to you (your business).

Having processes in place which seek to identify and record all the different forms of IP can in themselves add value to a business, as they allow all the processes and know-how to be exploited to the benefit of the business.

IP FOR SOFTWARE AND COMPUTER BASED BUSINESSES

When it comes to software and computer based businesses, copyright is the form of intellectual property most often used to assure future revenue and to protect your solution against exploitation by others.

Copyright automatically accrues to the creator of an original work. This includes the software code of your applications, the text and content of the application s you create and includes any images which you create (such as characters, image based context or backgrounds).

Database Rights are a form of IP which is most generally concerned with software businesses. Database rights protect the arrangement and relationships between different aspects of information, where the data itself is non-proprietary but the relationships between different elements of data is.

The most common example of this is the telephone directory, where names, addresses and telephone numbers are a matter of public record, but the relationship between any particular name address and telephone number is protected by the database rights of the owner of the directory, allowing them to commercially exploit the use of that relationship.

LICENSING

Companies can obtain substantial value from licensing their IP, and licensing can offer flexibility in terms of how a business develops. The management and licensing of IP can be important to the success of the business that invents or creates a product.

Whilst it is important to understand the intellectual property you have, IP like a shovel is in itself just a tool by which you can generate revenue.

Consider why a shovel is a business asset. You could sell a shovel and make money from that, or you could rent the shovel to someone else to allow them to dig a hole, or you could dig the hole yourself and get paid to dig the hole. Likewise with IP, there are many different ways in which you can exploit that copyright to generate income, and there are many varied forms of license agreement by which revenue can be generated.

Carrying out some research in this field to understand the different models and how they could apply to your particular situation could help you appreciate what arrangements with potential customers could offer the best return for you.

The most common example of this is the telephone directory, where names, addresses and telephone numbers are a matter of public record, but the relationship between any particular name address and telephone number is protected by the database rights of the owner of the directory, allowing them to commercially exploit the use of that relationship.

For more information on licensing see :
EXERCISE 1 - DEVELOP YOUR IP STRATEGY

Exercise Template (Download)

You may also want to use the Intellectual Property Office's IP Healthcheck tool to help you with this exercise:

  • Identify what types of IP are applicable to your business?
  • What are the benefits and advantages of each type of IP that you have identified?
  • What actions do you need to do to protect your IP?

PLEASE NOTE

While Bright Idea Scotland provides information and assistance on the subject of the commercial exploitation of Intellectual property and guidance regarding the general principles of the various forms of IP, it is important to note that Bright Idea Scotland advisers are not intellectual property professionals.

To obtain Professional IP advice, an appropriately qualified IP Professional should be consulted. To help, we have compiled a list of IP professionals in Scotland.

As a publicly funded programme Bright Idea Scotland is commercially impartial and does not recommend any particular practitioner over another.