20 June 2016

Understanding the many forms of intellectual property


Richard Penfold
Partner | UK

There are many forms of intellectual property (IP), but a good way to think about IP is like this:

•Registered
•Unregistered

Even though IP differs from country to country (e.g. copyright can be registered in China and the US but not the UK), registered still means something you’re granted on application to an official body.

So, let’s talk about Registered IP:

First, trade marks. The purpose of trade marks is to identify the origin of a product or service, for example, Nike shoes are made by Nike and no one else. It can take many forms, including a word, image, sound or colour. Periods of protection vary but if you keep paying renewal fees and using the mark, it can last forever. Hint: You can’t register a trade mark for a word that is common in the industry e.g. CODE for software.

Then, there are patents. The purpose of a patent is to protect inventions of functionality or process. Hint: You can’t register a patent if you’ve already gone public with your invention. Also note that it is difficult to get a patent for a software product in the EU. Related drawback: Filing a patent application involves making details of the invention public, therefore you may prefer to keep your invention secret as a trade secret (we’ll talk about this later).

The last type of registered IP is a design. The purpose of a design is to protect a new and unique visual appearance of a product. Hint: You can’t register a design if you’ve already gone public with your product.

When it comes to Unregistered IP we’re talking copyright, unregistered trade mark and design rights, and confidential information.

•Copyright. The purpose of copyright is to protect against reproduction of an “original work”. This can include images, source code, digital content etc. You do not have to register copyright, it arises as soon as a work is created. Hint: Keep records of when you create a work.

•Unregistered trade mark. If you don’t register a trade mark, the brand may still be protected if it has been used extensively and attracted a reputation. For example, regardless of whether Nike had a trade mark or not, if you bought a pair of shoes with the word NIKE on them, you would expect the shoes to be manufactured by Nike.

•Unregistered design rights. Similarly, if you don’t register a design, you still have the right to prevent unauthorised copying of the design and dealing in products which have had the design applied to it. The downside of unregistered design rights is that they cannot be enforced against independently created designs – whilst registered design rights can.

•Confidential Information. These are not strictly IP rights, but can protect sensitive information (e.g. know­-how and trade secrets). Hint: Make sure all confidential documents are marked with CONFIDENTIAL and any verbal disclosure of confidential information is followed up in writing.

Let’s talk about the commercialisation of IP briefly:

Ownership: Generally speaking, IP created by an employee in the course of his employment (i.e. as part of usual duties) will be automatically owned by the employer without you having to do anything. However, the position regarding consultants, contractors, service providers and other third parties is very different – the IP will generally be owned by these third parties.

Therefore it will be important to ensure IP provisions in your contracts with these third parties expressly provide for the assignment of that IP to you. This must be in writing so put pen to paper.

IP can be commercialised in many ways, but the most common is through licensing. Licensing gives someone the right to use your IP. These can be very complex agreements. Three of the most important aspects though are: a) scope of the licence (what uses the licensee make of the IP); b) exclusivity (whether other people, including yourself, are permitted to use the IP in addition to the licensee); c) your liability for/ warranties over IP infringement.

NDAs are also worth mentioning here. Make sure that the scope of the NDA covers all information you may be disclosing and the permissions for use and disclosure to third parties are tightly worded. Aim for a five plus year term (although really this depends on the level and duration of sensitivity of the information).

Another aspect to mention in relation to IP is enforcement.

First, you can take steps to ‘protect your protection’. For example – use the “R” symbol alongside registered trade marks, the “TM” symbol alongside unregistered trade marks, the “C” symbol (along with your name and the year of creation) alongside copyright works, and “Patent Pending/ Granted” or similar on the packing of a product invention. These put people on notice of your rights.

Second, monitor the marketplace. If £££ permits, you can use trade mark watch services which alert you to new trade mark applications which are similar to your rights.

Third, have a strategy in place to deal with infringers. Your IP rights are only as good as your enforcement of them. Whilst you can always try deal with infringers in an out of court settlement (e.g. a cease and desist letter); the Court is the ultimate place to have IP infringement issues heard. Generally speaking, a court can order an injunction which prevents a person from using your IP and award damages (including reasonable legal fees).

This post was written by Lucy Archer, Associate, Intellectual Property. This information is simplified and must not be taken as a complete statement of the law.

Richard Penfold Partner | London

Category: Blog