30 March 2015

Start-ups intellectual property checklist

Kenneth Mullen
Partner | UK

1. 'Intellectual Property' or 'IP' covers a range of different legal rights

It's a general phrase used to describe a range of legal rights that protect creations of the mind. The four main types we talk about in the UK are patents; copyright, trade marks and design rights. There are other rights such as database rights, moral rights and rights in relation to domain names. The point is that each of them protect different aspects of your business. Some of these need to be officially registered to obtain legal recognition (e.g. patents). Sometimes rights may or may not be registered (e.g. trade marks). Some protections (e.g. copyright) can be claimed without registration.

2. Focus on what the key 'intellectual property' is in your business

Think about the key intellectual assets that your business will have. These are the ones that will generate income. Is it a new product? Is it software? Is it a business idea? Is it a brand name or identity that you want to protect? It may also be a combination of all of the above. Invest some time and money in this process of protecting your key rights. IP can be your most valuable business asset and something that any future investor in your business – or a buyer – will almost certainly be asking you about. 

3. Be careful telling people

If you do have an original business idea or new invention that that you've created, you need to be very careful telling people. In particular, if you have an invention for a product or process that you could claim valuable patent protection for, your ability to do this will be lost as soon as it becomes public knowledge. Make sure discussions about any invention you may want to seek protection for are confidential and subject to appropriate non-disclosure agreements (or are professionally privileged). The aim is to recognise the confidentiality of your idea and to prevent it from being disclosed or used by the person you are telling for their own purposes… and don't say anything more than you need to about your IP.

4. Document the creative process

Keep internal records and log-books of who created what and when, particularly where IP is developed through a collaborative process. You should also make sure that any contractors or freelancers that you bring in to work on a project are subject to written contracts where they agree that any intellectual property they create belongs to the business. Ownership of Employee created IP by law should automatically pass to the business – freelancer IP does not.

5. Execute and be prepared to evolve

Very often, it's not always the most original ideas we see that that are successful. It's the ideas that are executed in the form of a real live business that work best. Legal protection is important but don't get fixated on registering/protecting everything to the detriment of developing a working business. Vey often, getting your business out there and known is the most effective way to enhance your IP position (particularly when it comes to protecting your brand). Also, sometimes, your 'IP' may not be as original as you think – you need to be flexible and prepared to ditch some creations and develop new ideas where necessary.

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