We have been running a series of webinars on the basics of Intellectual Property (‘IP’) over the past three months here at M&D, and we will round out the series by looking at Design and Copyright in September. In order to help you, we have summarised the key points on the fundamentals of IP in this article.
Whether you are thinking of starting a business or already running one, IP should always form part of your business plan. Protecting your IP is a crucial foundation for the success of any business because at the most basic level, protecting your IP improves your competitive position by granting legal rights to exclude others from practicing your invention or using your trade mark, copying your design or copyrighted material. It is also important to identify your IP at an early stage to make sure that you are getting the maximum value from your IP assets while preventing others from using your IP.
This article will help you understand what IP is at a fundamental level and how to identify any IP you may already own. It will also help you understand which needs protection. The steps which need to be taken before registering IP are also discussed.
What is Intellectual Property?
IP actually relates to intangible property. It refers to ‘creations of the mind’ such as symbols, names, inventions, designs as well as literary or artistic works. Like other types of property, IP is protected by law which allows the proprietors of such property to earn money or recognition from their inventions or creations while preventing others from making use of this property. IP protection includes trademarks, copyright, patents and trade secrets, among other forms. The different forms of IP provide different rights and obligations and have different rules for claiming protection. The following is a basic overview of the main forms of IP.
- Trade marks
A trade mark is a sign capable of distinguishing the goods or services of one business from those of another business. Most businesses make use of names and logos as the most basic identifier of their products. This allows consumers to recognise the product as originating from your business and distinguish between different products. Trade marks are not limited to just these forms. Sounds, shapes, patterns, colours, motion marks and hologram marks can all act to identify a product or service and have been registered.
Naturally, there are various requirements which your mark needs to satisfy in order to gain protection, which include the requirement for a trade mark which is capable of distinguishing good or services of one business from those of other businesses. It follows that a trade mark which does not have any distinctive character is also barred from registration.
Copyright is a legal term which describes the rights that creators have over the creation and use of books, songs, films, art works and computer programs. This right arises automatically to benefit the author and it protects the tangible form of an idea that is, the expression of an idea in a visible or audible form. Copyright does not protect ideas or concepts while they are in vague form. Therefore, while photographs, graphics, labelling, marketing ads and commercial jingles can be copyright protected, factual data, names and slogans cannot.
A patent is granted for an invention and gives the inventor the exclusive right to use it. The owner can then decide how or whether the invention can be used by others. The proprietor of the patent must then make technical information about the invention publicly available in exchange for this protection.
To be eligible for a patent, the invention must be novel, it must consist in patentable subject matter, involve an inventive step and must be industrially applicable. In this instance always discuss your options with a patent attorney and always avoid disclosing your idea to others before registering for a patent.
- Trade secrets
Trade secrets protect confidential information or proprietary information of commercial value. They are also IP rights which means that they may be sold or licensed. Typically, a trade secret protects a recipe, a process, formula, pattern or method. If such information is used or disclosed without consent by others contrary to honest commercial practices, it would be regarded as an unfair practice.
Having discussed these various forms of IP, consider the following steps which can help you identify your own IP.
- Create an IP Inventory
By making an entire list of the goods and services, you will have a better idea of how the items on the list can be further categorised to fall under the different forms of IP.
- Categorise your company’s products and services
Following the information provided on the different forms of IP you will already have a rough idea of what can be a trade mark or patent. This does not have to be entirely accurate as you will be discussing this list with your attorney.
- Assess different IP protection you might be eligible for
- Assess which items in your goods and services list can be a patent: an invention must meet all the criteria mentioned earlier. It needs to be novel, applied industrially and be non-obvious.
- Assess potential trademarks: A company name is a good starting point to register a trade mark. Domain names can also be registered and therefore, it should be a priority to pick the company’s Internet domain name at the same time if you plan on marketing online through a website.
- Assess potential copyright: In practice, copyrighted material may consist of anything that is original work that is written down. This material will be granted automatic copyright protection however, it will be necessary to monitor these works to check whether there is any infringement carried out in the past or is currently being carried out by third parties. Therefore, the information provided above will help you evaluate which of the items in your list might be copyrighted.
- Assess your Confidential Information: Have a look at your list of goods and services for potential confidential information which may qualify as a trade secret. Go through any company documents, procedures and ideas to assess whether they have any commercial value and which is not already available to the public. Such information may already be safeguarded internally through non-disclosure agreements.
- Your list of goods and services might also include designs.
- Is it Novel?
This criterion of originality varies from one form of IP to another, however all types require an element of originality. Before launching any new idea, brand or product its essential to check first to see whether you’ll be infringing someone else’s IP. When deciding on whether your creation is novel enough to qualify for protection, you will need an attorney’s advice to conduct a search to ensure it doesn’t infringe on prior-existing IP rights. This step is important as it avoids any unnecessary spending on marketing and advertising a product only to find that you are actually infringing someone else’s rights.
- Is it worth Protecting?
An IP attorney can help you prioritise the different IP you own and also help you manage your IP portfolio. When making this decision, an IP attorney will go through the categorised list provided to evaluate the chances of gaining IP protection and will help you budget costs accordingly. Prioritizing according to the value which a trade mark can guarantee in the long term can help plan ahead to maximise the use of that trade mark and further add value to the business.
We at MacLachlan & Donaldson have substantial experience working with companies and investors and we understand the time, effort, and resources that goes into creating new intellectual property. By working closely with our clients, we can recognise new and emerging IP, and the potential value it can create for a business if properly registered. Please feel free to send an email to email@example.com or firstname.lastname@example.org and we would be pleased to discuss your needs with you.