Patent Pitfalls

Before embarking on a new business venture, there are some pitfalls in IP that are avoidable with the right advice. These include:-

•Publicly disclosing an innovation before filing a patent application:

Making an innovation “available to the public” by launching the product, engaging in any form of non-confidential disclosure e.g. publishing details of the innovation in a newspaper, on a website, or disclosing the nature of the innovation to a potential customer without having a Confidentiality Agreement in place. If a patent is granted in respect of an invention that was disclosed publicly prior to filing the patent application, the patent may be invalidated.

•Failing to conduct a clearance search for existing IP Rights:

Before manufacturing or importing a new product, it is vital to carry out a search of granted patents, patent applications and registered designs to ascertain whether the innovation infringes an existing IP right. If the innovation infringes an earlier right then its use could result in a High Court Infringement action, which, if successful, would expose the user to significant costs, including the payment of damages to the owner of the infringed IP rights.

•Failing to agree the ownership of IP Rights:

Before embarking on a new venture, the parties involved should execute an agreement dealing with the ownership of any IP Rights resulting from the innovation and from any incremental improvements to the innovation. Failure to reach agreement on the rightful owner of the IP rights may lead to future disputes and result in a Court having to decide the issue.

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