Intellectual Property: Pitfalls and processes you need to know

23rd May 2019

Intellectual Property: Pitfalls and processes you need to know

23rd May 2019

It’s a popular subject for visitors to our Business Hub sessions – “I have a great idea and I want to make a business out of it. How do I prevent someone stealing it?”

While a small number of our visitors know that the question may relate to intellectual property. For the majority, it is an unknown concept.

Intellectual property (“IP”) is something unique that you physically create.  The intellectual property, once formed, is an asset that is capable of ownership (and value!). This allows the owner to take legal action against anyone who steals or copies it.

What is Intellectual Property?

Intellectual property is an umbrella term for several individual rights. You may have (or are capable of having) more than one in your business. They can include:

  • patents for technical inventions;
  • trade marks for a recognisable name, sign, logo or expression;
  • designs for the way something looks; and
  • copyright for original artistic, dramatic, literary or musical works.

These rights all operate differently with differing rules, lifespans and enforcement procedures. Some require registration such as patents and trademarks; while others can arise automatically such as copyright and unregistered design rights.

Idea or IP

An idea alone is not intellectual property. Of course, it self-evident that an idea is the first essential step toward any innovation or creative work. However, the general rule in the UK is that intellectual property exists in the ‘fruit’ of the idea.  For example, the technical design of an invention or the words of a book.

Marketability vs Registrability?

Imagine the scenario, you have created a product aimed towards the farming market. You have a prototype that you have created and you decide to go demonstrate the invention to the local farmer’s association to establish whether they would be interested in the product if it were to go to market.

You have not made a patent application or submitted the design for registration just yet as you do not want to pay out before you know the marketability of the product.

What you may not know is that this decision has serious repercussions.

Novelty is a big thing in certain Intellectual Property applications. This means that you will be specifically asked if the invention or design has been made available to the public. By demonstrating the invention to the farmers, you are likely to have hindered your prospects of success for future registration or patentability.  Confidentiality agreements can offer some protection but are not always a risk-free option.

Instead of direct market research, you may use indirect market research. Your Devon Libraries membership offers powerful market research tools such as Mintel, IBISWorld and Cobra free of charge that can help you establish marketability without compromising your Novelty.

Consider IP in every relationship

Even the smallest of businesses may face important intellectual property questions. A videographer is a great example. They are likely to have copyright in their work but what if they are instructed by someone else to take the footage, such as a client? Has it been agreed who will own the footage? If it remains with the videographer, will a licence to use the footage be granted to the instructing client?

Also, what if the footage was edited into a short film and that film uses third party backing music. Do you have the right to use that music and pass on to the client?

This is where your terms of business become very valuable as they should outline the ownership/arrangement for use of the product (the short film and raw footage in this example).

It is also important for terms of business with suppliers to be scrutinised through IP glasses. Small businesses often contract with large content providers for images, videos or artwork to use for their branding and website. This is a common pitfall as your right to use this content is likely to disappear once your subscription ends (unless you have negotiated an assignment). When it comes to branding, always use professionals and, where possible, create your own IP.

If you are an employee, you may not own your creation

Across all categories of intellectual property, the general rule is that an employer will own the intellectual property created by its employees in the course of their employment unless you have an agreement to the contrary.

However, intellectual property that is created by an employee, other than in the course of employment, is owned by the employee, not the employer.

Your employment contracts and job descriptions should ideally cover details of innovative expectation within the course of employment.

Get advice

An exception to the above disclosure rule is a legal representative. A legal representative is likely to save you future heartache by talking you through the risks and processes of intellectual property. Free clinics are offered by CIPA where you can have an initial confidential consultation with a Patent specialist. Devon Libraries also has a number of online intellectual property resources and the IPO has a helpful online IP health check  function which will highlight if you have IP to protect and how to protect it.