What are Intellectual Property Rights?
Intellectual property (IP) is a type of property that covers intangible assets resulting from the creation of human intellect. IP rights refer to the various legal frameworks which allow official recognition of a person or company’s right to claim ownership or other legal rights in a particular creation or invention.
IP is similar to other forms of property in that it can be bought and sold, mortgaged and licensed, so it can create a valuable business asset if maintained and policed properly.
What is the value of IP to your business?
Company value and attractiveness for investment can be highly driven by IP. Companies compete using innovation by either:
- generating IP, for example through direct R&D investment, acquisition/in-licensing or collaborations; and/or
- using IP, for example, by viewing IP as a tradable asset in its own right and granting access to IP for little/no cost to boost collaborations/partnerships and help establish standards.
There are different types of IP and the extent to their protection can vary from country to country. The most well-known types are:
- Copyright
- Designs
- Trade marks
- Patents
- Trade secrets
Copyright
What does it protect?
Copyright protects expressions of works that are original, i.e. created independently and are the personal expression of the author. It’s important to remember that it is the expression of an idea that is protected, not the idea itself.
Copyright can cover anything from literary works, dramatic works, artistic works, music, photographs, motion pictures and book titles to software code and databases.
Using or copying protected works without permission, may infringe on the exclusive rights of a copyright holder. These can include - the right to make copies of the work, license it, distribute, display or perform the work, or to make derivative works. However, there are certain uses without permission that are not classed as infringing - parody, private non-commercial use or news reporting for instance.
Do I need to register my copyright?
No is the short answer. Copyright protection arises automatically upon creation of the relevant work and lasts up to 70 years from the death of the creator. For computer generated works, sound recordings and broadcasts, this duration is reduced to 50 years from the date the work was created. Some countries do have public databases where authors are able to deposit their works and create a “snap-shot” in time which can assist with the protection or enforcement of copyright.
How to I evidence the date on which a work was first created?
It is important to establish the date on which the work was first created (and so the date on which copyright first subsisted) and there are various ways in which you can do this:
- Maintaining an accurate and dated record of developments in your work;
- Record and date meetings and discussions you have with third parties regarding your work;
- Ask a solicitor or other professional advisors to keep and date-stamp a copy of your work;
- Save a digital copy of your work through a service such as WIPO PROOF (provided by the World Intellectual Property Organisation).
Trade marks
What is a trade mark?
A trade mark is, loosely, a distinctive sign capable of distinguishing goods and service of one business from another. A trade mark can be a work or logo, but also 3D shapes, sounds, colours, moving images or smells.
In order to be legally protected, a trade mark must not be descriptive of the goods and services, deceptive, offensive, represent a state emblem or be identical or confusingly similar to a pre-existing trade mark.
Why do they matter?
Trade marks act as key identifiers and are the sign consumers associate with a specific person or business. As such, they play an important role in market dominance, continuing profitability or stopping competitors from free riding on your reputation.
What is the difference between registered and unregistered trade marks?
Registered trade marks
In most countries, trade marks can be registered at the relevant intellectual property office. The registration grants an exclusive right to use that mark in relation to the goods and services it is registered for, and also provides a statutory right to enforce such rights. Due to the accessibility of a public register, it’s very clear when the right was established and what it covers.
Importantly, trade marks are territorial in their nature and must be applied for and registered separately in each country of interest. There is no such thing as a “worldwide” trade mark.
The marking for a registered mark is the well known symbol ®. In the UK, it is a criminal offence to use this upon goods and services that are not registered.
Registering a domain or a company name does not give you registered trade mark.
Below is a summary of the typical lifecycle of a trade mark.
Trade Marks Life Cycle
Unregistered trade marks
As a general rule, unregistered trade marks do not carry the same level of protection and are more difficult to enforce, the right owner having to rely on much more difficult statutory protection (such as passing off in the UK).
Reference to an unregistered mark should be marked with a symbol ™, rather than ®.
Designs
Design rights cover aesthetic aspects of a product including appearance, physical shape, configuration and decoration but can also have wider application, such as the protection of the layout of a store. Importantly, aspects that are purely functional are not protected.
In order to be protected, a design must be:
- novel; and
- possess individual character
Upon protection, design give right owners the right to prevent unauthorised copying of the design in a specific territory.
Design rights can often act as an addition or alternative to trade mark or patent protection as they are generally easier to registered and less expensive.
Design rights arise automatically and can be used to prevent other people from producing the same or a similar design, irrespective of whether they have copied the design or not. However, they can also be registered.
What is the difference between a registered and unregistered design?
In United Kingdom there are two types of design rights: registered and unregistered. The scope of protection and the criteria for infringement vary greatly between registered and unregistered design rights.
One of the key differences lies in the length of protection. Registered designs are protected for a period of 5 years and can be renewed up to a maximum of 25 years. In the UK, unregistered rights last 10 years from the date of first sale or 15 years after the design was created, (whichever is first).
Similar registered and unregistered design rights are available in the European Community.
Patents
Similarly to trade marks, patents are territorial rights and the requirements can vary from country to country. Patents relate to technical inventions, products and processes, how they work and what they do. In order to be granted a patent in the UK, an invention must meet the following requirements:
- Novelty – the invention must never have been made public in any way before you apply and must not form part of the “prior art” anywhere in the word, at any time. This includes, for example, talking about or demonstrating your invention in a public place (or even a private place where you might be overheard/seen).
- It must involve an inventive steps - it must not be an obvious development of something already known
- It must have some industrial application - “can be made or used in any kind of industry”, this requirement is assessed broadly
Patents are territorial, i.e. a UK patent covers just the UK. Different territories require separate patents (no such thing as a “worldwide patent”). Patents are valid for 20 years from the date of application, although this period may be extended in limited circumstances. During the protection period, a patent owner has full control over who can use or how to commercialise their patented product.
Trade secrets
In contrast to other IP rights such as patent or trade marks, trade secrets are by definition not disclosed to the world at large. In order to qualify for protection, the information protected as a trade secret must be:
- commercially valuable
- confidential
- be subject to reasonable steps taken by the rightful holder of the information to keep it secret (including the use of confidentiality agreements)
There is no restriction as to the type of information that can constitute a trade secret provided that it complies with the above requirements.
In the UK, trade secrets are protectable through a common law action for breach of confidence, a breach of contract action where a non-disclosure obligation exists (either written NDA exists or implied).
The advantages of trade secrets include no time limits for protection, no registration costs or formalities to meet and immediate effect. However, protection is generally more limited. For example, it does give the right to stop third parties from “reverse engineering” an invention. In addition, if it becomes public, the right holder will lose the protection. It may also be that that the invention is in the meantime patented by someone else.
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