intellectual property - geldards llp · intellectual . property . intellectual property can be one...

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INTELLECTUALPROPERTY

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INTELLECTUAL PROPERTY Intellectual property can be one of the most valuable assets a start-up business has, as it grants you rights to stop others from doing the things protected by yourintellectual property (such as copyingyour designs or manufacturing similar products). This can give you that all important edge in the market place.

Intellectual property may also be licensed or sold to third parties, earning you additional revenue or capital and/or used to raise finance for your business. So protecting your intellectual property and maximising its financial potential is of real importance.

Geldards LLP have combined their experience and expertise to provide start-up businesses with a complete, competitively priced intellectual property service. In this booklet, we explore the main types of intellectual property that may be relevant to your business and explain how we may be able to help you make the most of your intellectual property rights.

WHAT IS INTELLECTUAL PROPERTY?Intellectual property is the collective term given to the different legal rights that may be available to protect things created by individuals and, in some cases, by companies or computers. Itincludes patents, copyright, database rights, design rights, trade marks and confidential information/know-how.

Some types of intellectual property are subject to a formal registration process (for example, patents, registered designs and registered trade marks), meaning

that you do not have any rights to enforce until the registration process has been successfully completed.

Other types of intellectual property (such as copyright and unregistered design rights) do not need to be registered in the UK.

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PATENTS

WHAT IS A PATENT?A patent is a registered right whichis available in respect of new and inventive products, processes, materials and devices which are capable of commercial exploitation. There are certain exclusions on what can be patented. For example, it is not possible to patent a method of treatment of the human or animal body by surgery or therapy, though it is possible to obtain patents for products or articles used in such treatments.

WHAT RIGHTS DOES A PATENT GIVE YOU?The rationale behind the patent system is simple: the state grants an inventor a limited monopoly to exploitthe invention for a set period of time in return for full disclosure of the invention - so that the public at large will be able to use that invention once the patent has expired. While the patent is in force, the patent owner has the right to stop anyone else making, using or selling their invention without their permission - whether or not their invention has actually been copied.

HOW IS A PATENT OBTAINED AND HOW LONG DOES IT LAST?

Patents are the most expensive of the registered intellectual property rights to obtain. The registration process involves a number of stages, beginning with the filing of an application (which must include a detailed specification describing the invention). The drafting

Patents can last for up to 20 years from the date of filing the application, provided that the relevant renewal fees are paid. Renewal fees are payable annually after the fourth year and the level of fees increases as the patent gets older. If renewal fees are not paid, the patent will lapse.

POINTS TO NOTEIt is advisable to commission a search of the Patents Register before any significant research and development project is undertaken and, in any event, before any patentapplication is submitted. Such a search should reveal any similar inventions which are already patented and help you to evaluate the likelihood of your patent application succeeding. It will also, importantly, highlight any risk of infringement of patents owned by others which may prevent you bringing your product to market.

If you plan to apply for a patent, the patent application must be filed before the invention is disclosed or published anywhere in the world, otherwise the invention will not meet the requirement of “newness” (known as “novelty”). Publication includes selling a product incorporating the invention and disclosing details of the invention to another person without doing so in confidence. So if you need to disclose details of your invention to a third party before your patent application has been filed (for example, for the purpose of a proposed

collaboration or to attract investment), it is vital that a signed confidentiality agreement is put in place with the intended recipient first.

Whilst there is no requirement for you to do so, it is advisable, for a number of reasons, to give notice of your patents by marking patented goods with the words “Patent” or “Patented” (in the case of a patent application, the words “Patent applied for” or “Patent pending” should be used) and the patent number (or patent application number). Alternatively, it is now possible to give notice of your patents by marking your products with a website address, which links to a webpage which provides details of the relevant patents/patent numbers.


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Patents are generally applied for and granted on a national basis. However, certain international treaties, make it possible to submit a single application for a bundle of national Patent rights. Also, plans are well underway to introduce an EU unitary patent (which will provide coverage in all participating EU memebers states). It is not net clear how Brexit will affect the UK's participation in the Unitary Patent.

of the specification is a specialised task which should only be carried out by a qualified patent agent. We have close links with a number of firms of patent agents and can assist you to access such services should you require them.

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COPYRIGHT

WHAT IS COPYRIGHT?Copyright is, essentially, the exclusive right to copy a work - and, by implication, to stop others from doing so. Copyright protects original (i.e. not copied) literary, dramatic, musical or artistic works, sound recordings, films, broadcasts and typographical arrangements of published editions, provided certain criteria are met.

People often assume (mistakenly) that copyright protects ideas, but actually it only protects the form that an idea takes. As a result, some types of copyright work (e.g. literary works) have to be recorded in a tangible form before copyright protection will arise. Other types of copyright work are, by their very nature, tangible (e.g. sound recordings).

Also (unlike, for example, patents), your copyright will only be infringed if someone copies your work, not if someone independently comes up with the same thing.

It is not just businesses in the arts or media sectors that create copyright works. Most businesses routinely do so, even if they do not realise it. Business documents, databases, marketing materials, designs, drawings, logos, software (which is protected as a ‘literary work’), plans and written formulae are all capable of protection as copyright works.

WHAT RIGHTS DOES COPYRIGHT GIVE YOU?As well as having the right to stop others from making copies of the work, the owner of a copyright work also has various other rights - for example, the right to prevent others from selling copies of the work or from modifying it. The precise rights you have vary depending on the type of copyright work.

HOW IS COPYRIGHT OBTAINED AND HOW LONG DOES IT LAST?It is not necessary to register a copyright work to obtain protection. Provided the

various conditions for the existence of copyright are satisfied, copyright will arise on creation of the work. The duration of protection varies depending on the nature of the work but in most cases it lasts for the life of the author (i.e. the creator of the work), plus 70 years.

POINTS TO NOTE The first owner of a copyright work will usually be the author, unless the author is an employee who produced the work in the course of his employment (in which case the first owner will be the employer). Consequently:

The copyright in works created for a business by someone who is not an employee (for example, a third party consultant or contractor) will not be owned by the business unless there is an express agreement to this effect;

Copyright works created by a director prior to the creation of a company will belong to the director rather than to the company (unless legally transferred to the company by the director).

Certain copyright works also attract various additional rights, known as “moral rights”. These give extra protections to the author of a work, even if he or she sells the copyright (for example, the rightto be named as author of the work and to object to any derogatory treatmentof the work). It is not possible to sell moral rights but they can be waived. Consequently, if you are acquiring copyright in a work, you may need to obtain a waiver of the moral rights.

It is advisable to include the © symbol on copyright works, together with the name of the copyright owner and date of creation of the work. This is an easy way to assert copyright protection and will also assist in any actions for infringement.

In some jurisdictions (including the US) it is possible (and advisable) to register copyright works.

CONFIDENTIAL INFORMATIONWHAT IS CONFIDENTIAL INFORMATION?Confidential information is not a form of intellectual property as such, but it is often included under the same umbrella as it is not a tangible asset but can be extremely valuable commercially. A body of information will be regarded as confidential under the law if it is not generally known and has value/worth. By its very nature, part or all of the value of confidential information can be lost if it is disclosed without taking precautions to ensure that it is kept confidential by the persons it is disclosed to.

WHAT RIGHTS DOES CONFIDENTIAL INFORMATION GIVE YOU? If a third party wrongly uses your confidential information, you may be able to obtain an injunction through the courts to stop such unauthorised use and/or sue for damages.

POINTS TO NOTEIt is important that all your staff are subject to contractual obligations to keep the confidential information of your business confidential, both during and after their employment by you.

If you need to disclose confidential information to a third party – such as another company or a consultant - it is vital that they are bound bycontractual obligations to keep such information confidential.

Documents and materials containing confidential information should be clearly marked as such.

Access to confidential information should be restricted and staff should be advised of the confidential nature of any information that they acquire or have access to and records kept of who has access to what and when.

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HOW LONG DOES CONFIDENTIAL INFORMATION LAST?

Confidentiality does not “run out”. Your ability to take steps to protect your confidential information will last indefinitely provided the information does not become public knowledge.

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CollaborationAccounting& AssuranceTRADE MARKS

WHAT IS A TRADE MARK?A trade mark is any sign which is used to distinguish the goods or services of the owner of the trade mark and indicate their connection with that owner. For many companies, trade marks are amongst their most valuable assets.

Trade marks can be registered or unregistered. However, not all trade marks are capable of registration. At the moment, in order to be registrable in the UK, a trade mark must:

Be capable of being graphically represented (for example in writing or as a drawing);

Be capable of distinguishing the relevant goods or services from those of other businesses/organisations. The more descriptive the trade mark, the harder it will be for that trade mark to be, or become, distinctive (for example, calling a new energy drink “Energy Boost” or a one coat paint “One Coat Wonder”); and

Not conflict with an earlier registered or unregistered trade mark.

Registered trade marks include the Nike “tick” symbol and strapline “Just do it”, the shape of the Coca Cola bottle, the Intel four-note musical jingle and the Heinz registration of the colour turquoise for use on baked bean tins.

WHAT RIGHTS DOES A TRADE MARK GIVE YOU?Registration of a trade mark gives you the exclusive right to use the trade mark in respect of the goods and services for which it has been registered.

If a trade mark is unregistered, your rights are much less certain. Essentially, you can only stop other people from using an identical or similar mark by proving that you have established a reputation in your mark and that the other person’s use of their mark will deceive people and cause you damage. Such actions (known as actions for passing off) are risky and expensive. Registration of trade marks is, therefore, recommended wherever possible.

HOW IS A TRADE MARK OBTAINED AND HOW LONG DOES IT LAST?Registration is generally on a national basis. However, it is possible to obtain a Community registration which covers all countries within the EU (this will exclude the UK following Brexit).

Applications for registration are made in respect of specified classes of goods or services in connection with which the trade mark is to be used. Ideally an application for a registered trade mark should be made before the trade mark is used, (although this may not be possible in some countries where actual evidence of use is required). Registered trade marks can last indefinitely provided that they are properly looked after and renewed. A trade mark

registration will lapse if the renewal fees (payable every 10 years) are not paid.

Your rights in an unregistered trade mark can only be established and maintained through use.

POINTS TO NOTEIt is advisable, once a new name or logo has been devised and in any event before use, to take all possible steps to try and identify whether anyone else is using that name or logo or a similar name or logo for the same or related products or services (and who could therefore take action to prevent you using the new name or logo). As part of your investigation, searches should be carried out at Companies House, the Trade Marks Registry, in trade directories and of the registers of domain names.

Registered trade marks may be invalidated in certain circumstances, for example, if they have not been used for a continuous period of 5 years.

It is always advisable to use a trade mark symbol. For unregistered marks, the mark should be accompanied by the words “Trade Mark” or the symbol “TM”. For registered marks, the words “Registered trade mark”, or the symbol ®, should be used. The usual form of a trade mark notice is: “[Mark][Registered trade mark or ®] or [Trade mark or TM] [Name of trade mark owner]”.

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REGISTERED DESIGNS

WHAT ARE REGISTERED DESIGNS?A registered design protects the appearance of a product resulting from the features of, for example, its lines, colours, contours, shape and materials.Registration is generally on a national basis. However, it is possible to obtain a Community registration which covers all countries within the EU,

In the UK, a design can be registered if it is new and has individual character. To fulfil the requirement to be new the design must not have been disclosed to the public (e.g. published, exhibited or sold) more than 12 months prior to the application for registration.

There are some designs which cannot be registered, in particular, designs dictated solely by technical function and designs for computer programs.

WHAT RIGHTS DOES A REGISTERED DESIGN GIVE YOU?A registered design gives you the exclusive right to make articles incorporating the design. The owner can sue for infringement even where a third party has not copied the design.

HOW IS A REGISTERED DESIGN OBTAINED AND HOW LONG DOES IT LAST?There is a formal registration process. The application must be accompanied by a representation of the design, a statement of novelty and the prescribed fee. UK registered designs are initially granted for five years but the registration can be renewed for four further periods of five years, subject to the payment of renewal fees.

POINTS TO NOTEGenerally, the first owner of a registered design will be the designer. This includes where the designer has been commissioned by a third party to produce the design. If a party commissioning a design wishes to own the rights in the design, it will be necessary for the parties to enter into an agreement transferring the rights in the design to the commissioning party. As with copyright, the main exception to the ‘creator as first owner’ rule is where a design is created by an employee in the course of his or her employment. In such cases, the first owner will be the employer.

It is advisable to undertake a search at the Design Registry before any design application is submitted or new design launched. Such a search should reveal any similar designs which are already registered. This will help you to evaluate the likelihood that your application will succeed and highlight any possible infringement of third party designs which could prevent you bringing your product to market.

It is advisable to mark goods with the registration number and with the words, 'registered design'. If a registration is pending, goods should be marked with the words 'registered design pending' or 'registered design applied for', together with the application number. Also , the Government intends to introduce the option in the near future to give registered design owners the option ti give notice of registered designs by marking relevant products with a website address at which details of the registration would be published.

(this will exclude the UK following Brexit).

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DESIGN RIGHT

WHAT IS DESIGN RIGHT?Design right is an unregistered right which exists in the UK and the EU (although the

EU unregistered design right will cease to apply to the UK designs following Brexit).

In the UK, unregistered design right protects the appearance of a product resulting from its shape or configuration. In the EU, it protects the appearance of a product resulting from the features of, for example, its lines, colours, contours, shape and materials.

WHAT RIGHTS DOES DESIGN RIGHT GIVE YOU?Design right gives the owner the right to prevent others from copying the features of the design which are protected. Unregistered design right is generally more difficult to enforce than a registered design as the right holder must be able to prove their design was copied.

HOW IS DESIGN RIGHT OBTAINED AND HOW LONG DOES IT LAST?Design right arises automatically upon creation. The UK design right lasts for a maximum of 15 years, depending on when articles made to the design are first marketed. The EU design right lasts for 3 years.

POINTS TO NOTEAs with registered designs, generally, the first owner of a design right will be the designer. The position regarding ownership of commissioned designs and designs created in the course of employment is the same as for registered designs.

It is advisable for goods to be marked to show that design right is claimed. The following notice will be suitable: “Design right [Name of design right owner] [Year of first marketing]”.

HOW CAN WE HELP YOU?

IDENTIFYING YOUR INTELLECTUAL PROPERTY RIGHTS (GELDARDS)

Also, your commercial interests will need to be taken into account to ensure that any protection sought will meet your business needs. For example, the costs and time involved in developing an international patent portfolio may not be justified if your target market is based in specific countries.

Geldards has the legal and commercial expertise to help you with this initial process, by carrying out a complete intellectual property audit of your business or by providing advice in relation to a specific project or invention. Our unique relationship with patent attorney's also means that you will, if necessary, have direct access to their scientific and technical expertise in the fields of patents, registered designs and trade marks.

OBTAINING REGISTRATION AND MAINTAINING YOUR RIGHTS If a decision is made to seek patent, registered design, trade mark or other registered protection, patent attorneys will be able to assist you with every stage of the registration process, including:

• Carrying out registerchecks and searches;

• Preparing and filing applications;• Drawing up specifications;• Dealing with objections

to registration; and• Representing you at intellectual

property hearings in appeal and opposition cases.

Once registration has been granted, Patent attorneys can also help you to maintain your intellectual property rights by:

• Sending you renewal reminders(including estimates ofthe cost of renewal);

• Arranging payment of renewalfees on your behalf;

• Gathering evidence in supportof trade mark renewals; and

• Providing a “watching service”.

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Deciding what intellectual property your business has, whether it is capable of registration, whether registration is appropriate in the circumstances and when and where to register is usually the first step. This can be tricky exercise, as there is considerable overlap between some intellectual property rights and a new product may, for example, be capable of protection by patent, by registered design and by unregistered design right.

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Geldards' together with patent attorney experts, provide an intellectual property service which covers the whole range of intellectual property advice and assistance that a start - up business may need.

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COMMERCIAL EXPLOITATION OF YOUR INTELLECTUAL PROPERTY RIGHTS (GELDARDS)It goes without saying that any start-up business will wish to begin generating income from exploitation of its intellectual property as soon as possible.

Geldards can provide a range of legal services to assist you with this. For example:

Advising you on the various routes to market and the key legal considerations;

If you need to disclose confidential information to third parties (for example, for the purposes of discussions with a potential business partner or attracting investment), drafting suitable non-disclosure agreements (“NDAs”);

If you plan to collaborate with a third party, advising you on the terms of and drafting and negotiating a suitable collaboration agreement;

If you intend to license your intellectual property to a third party, advising you on the terms of and drafting and negotiating a suitable licence agreement;

If you need to take a license of intellectual property from a third party, advising you in connection with that license;

If you wish to appoint a third party to manufacture products for you, advising you on the terms of and drafting and negotiating a suitable manufacturing agreement;

Should you decide to sell or buy intellectual property, drafting and negotiating suitable assignments;

Drafting agreements with third party consultants that ensure that you own all the intellectual property rights in any work being carried out for you; and

Providing you with competition law advice to ensure that your legal agreements and business practices are compliant.

If required, Geldards can also prepare a wide range of other commercial documentation on your behalf (such as terms and conditions of sale and supply agreements). More information about such services can be found in our Commercial Contracts booklet.

INFRINGEMENT (GELDARDS)From time to time, situations may arise where you need to enforce your intellectualproperty rights against a third party who is using them without your permission or defend your intellectual property rights from allegations that they are invalid. Alternatively, you may find yourself in a position where you need to defend claims that you are infringing the intellectual property rights of another person. Geldards can assist you in each of thesescenarios, including providing you with advice on strategies and options open to you, drafting letters before action and, where necessary, taking legal action on your behalf.

Again, our unique relationship with patent attorney experts, means that, where required, you will have direct access to their scientific and technical expertise.

OBTAINING INVESTMENT: (GELDARDS)Geldards can also assist you with the process of securing investment. We can provide reports on your intellectual property rights and advise on all aspects of any funding or investment. For more information on the services we can provide in relation to investment, please see our Raising Finance booklet.

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Exit Planning

Strategic Plan

Acquisitions

Terms of Occupation

Lease


Key Contracts

Grants

Debt

Equity

Benefits of Audit

Managing Risk

Corporation Tax

VAT

Employment Taxes

Tax Reliefs

Optional Policies

Handbook

Contracts

EMISIP


Funding Options

Litigation


Collaboration

Corporate JV

Contractual JV

Design D

Protecting IP

Exploiting IP

Key IP Rights


Design Protection


CHECKLIST

Before you begin using your proposed business name or logo, have you checked to make sure that no one else owns the rights to them?

Have you registered any important names and logos used by your business as trade marks? If so, have you obtained registration in all key countries in which your business is likely to operate?

Do you have any innovative ideas, processes or products? If so, have you considered whether patent or other protection ought to be secured? Ensure that you keep those ideas, processes or products confidential until appropriate applications have been filed.

Have any consultants or third parties been involved in the development of your products or processes? If so, have all IP rights been assigned to you and are such persons subject toconfidentiality obligations in your favour?

Are you taking adequate steps to protect your businesses confidential information?

Are you using appropriate IP symbols on your products and packaging?

Do you have the necessary rights to use any images, music, artwork etc. used by your business? If you

don’t, you may be infringing someone else’s copyright.

If selling, buying or licensing intellectual property rights, always consider taking legal advice.

BusinessPremises

BPCommercialContracts CC

Tax T

Employees E

Share Options

SO

DisputeResolution

DR

Ventures

Exit Planning

Strategic Plan

Terms of Occupation

Lease


Key Contracts

Benefits of Audit

Managing Risk

Corporation Tax

VAT

Employment Taxes

Tax Reliefs

Optional Policies

Handbook

Contracts

EMISIP


Funding Options

Litigation

Design D

Protecting IP


Design Protection


[email protected]

0844 736 0006

IP

This briefing note is intended solely as an overview of the law in England and Wales. It was last updated on 02.06.15. No responsibility can be accepted for the completeness or accuracy of this briefing note and professional advice should be taken in relation to any specific matters. Geldards LLP is a limited liability partnership registered in England and Wales (OC313172) and is authorised and regulated by the Solicitors Regulation Authority. A list of Geldards LLP members is available for inspection at our registered office at Dumfries House, Dumfries Place, Cardiff CF10 3ZF. We use the word ‘Partner’ to refer to a member of the LLP or an employee of an equivalent standing and qualification. In this document, “PwC” or “PwC UK” refers to PricewaterhouseCoopers LLP, which is a member firm of PricewaterhouseCoopers International Limited, each member firm of which is a separate legal entity. This document is for general information purposes only, and should not be used as a substitute for consultation with professional advisors. GV020615v25