The Intellectual Property Support Service
Penny Gibson runs the Enterprise Hub IP Support Service, under which portfolio enterprise hub companies are entitled to three hours’ of intellectual property advice, fully funded by SEEDA. Here Penny describes the service and gives us four examples of companies who have benefited from it.
Companies apply for the IP Service through their Enterprise Hub Director, and there usually follows a confidential, one-to-one consultation, after which Penny prepares a comprehensive meeting summary, which includes an ‘action plan’. Thereafter the company can decide on the course they would like to follow and Penny is on hand for further enquiry or assistance.
The topics discussed – whether patents, utility models, trade marks, design rights, registered design, copyright, ‘know how’ confidentiality, ownership, licensing, collaborative agreements, international registration, application procedure, infringement, opposition, or any other IP-related concern – are entirely dictated by the individual company’s needs. For example, a pre start-up or start-up company might want to identify potential applicable forms of intellectual property rights; a more established company might want to reappraise its existing IP strategy (where applications and registrations are already filed); a company might want to investigate how to optimise commercial advantage from intellectual property rights, whether at product launch or with a view to long-term value; or a company might have pursued one course of action, for example a patent, without considering the benefits of other forms of intellectual property rights; and it may simply be helpful to talk through procedure and costs to anticipate professional fees.
The following case studies are examples of some of the help given under the SEEDA IP Support Service, funded by SEEDA:
- A web-based company selling a niche product internationally was assisted in taking action against an infringer of its registered trademark, also a UK web-based company. The action was successful and the infringer ceased to use or to pursue any claim of right to use the name. The Enterprise Hub was content with this outcome, having neither sought damages nor compensation, and the action had not incurred any cost for the Hub company. Meanwhile, consideration of copyright as part of the discussion on infringement and of existing terms within the supplier agreements in the course of the initial Enterprise Hub IP Service consultation, led to the creation of addenda to those agreements which enabled the launch of a new product range.
- A pre start-up company had found prior art close to their new innovative equipment design. With the help of the Enterprise Hub IP Service, the company was able to ascertain the scope of the prior art, the resultant implications with respect to its freedom to operate and the potential for its own acquisition of intellectual property rights. The client was subsequently assisted in self-filing applications for a patent, a Registered Community Design and an international trade mark. Referencing the respective application numbers and understanding the scope of its rights at this point in time, the client was more confident of using non-disclosure agreements and is now working with a proposed manufacturing partner to develop the article and its material specification.
- A strategy for intellectual property was prepared on behalf of a software company for inclusion in a business plan, prepared for use in raising Stage II funding.
In the process, ownership was discussed and the application of rights under ‘Copyright Designs and Patents Act ‘88’ in the absence of a ‘Directors’ Agreement’. The process helped the company clarify their legal position with respect to a Director who was not involved in the company operationally but had contributed ideas and verbally assented to the use and development of his wholly owned software products from a previously owned company. Preserving goodwill and co-operation, the company managed to formalise rights under agreements as a prerequisite to featuring the IP strategy in the business plan. - A start-up company was to be reliant on licensing university patents, and terms as negotiated included their funding the maintenance of the respective patents. With the assistance of the Enterprise Hub IP Service was able to quantify the maintenance costs and reappraise its financial model based on this estimate. Importantly, it was helped to ascertain the scope and potential validity of the patents. Against this background, the company better understood the degree of its reliance on the patents and importantly, was able to identify its potential to claim owned intellectual property rights and what these might be.
BUT IS IT LEGAL?
Intellectual property can be a valuable business commodity. However, since it can take different forms, it is important to identify what rights your business may possess and how you can protect those rights. But do you need a trademark, a patent, copyright, design rights or something else? The answer is that the protection you need depends on the type of intellectual property you have.
The Enterprise Hub IP Support Service has now been operating successfully for over a year. The Service is provided by qualified expert, Penelope Gibson – who is independent of any legal firm – and to date over 70 portfolio Enterprise Hub companies have taken advantage of the Service. The Service is confidential and works closely with companies at every stage of development: whether at start-up or business planning stage, preparing to raise investment, and during each stage of growth. While the specific form of assistance is dictated by the individual company’s needs, the Service to date has generally worked with companies to identify relevant forms of intellectual property rights, or appraise the company’s existing IP strategy (where applications and registrations are already filed) and to identify which alternative forms of intellectual property rights, or combination of intellectual property rights, might be more appropriate for the company’s commercial objectives. The bias is practical and international, anticipating a company’s longer-term objectives.
Many companies benefit from detailed guidance as to the process of registration (whether working with a patent agent, trademark attorney or Intellectual Property lawyer or self-filing) but all will appreciate advice on the likely costs at each stage and the comparative costs and benefits of each form of intellectual property. With a view to capitalising on the commercial potential of intellectual property, the Enterprise Hub Service also advises on international registration, licensing, ownership and agreements, including collaborative agreements.
The Enterprise Hub IP Support Service is complementary to the activity of law firms and attorneys in the field. In the following article, Joanne Vengadesan of Penningtons summarises the key forms of IP.
TRADEMARKS
Trademarks protect trade names, company names and logos. “Common law” rights in unregistered trademarks can be acquired by building up reputation over time. Unauthorised use can then sometimes be prevented by the law of passing-off, but it can be difficult to win such a claim. Generally it is safer to have a registered trademark.
To register a trademark in the UK, you must apply to the UK Trademarks Registry, which will examine the application to ensure it meets certain requirements. Other businesses or individuals can oppose your application if they believe the new mark is too similar to their own. Once registered, a trademark is valid for 10 years and can be renewed indefinitely. The owner can prevent others from using identical marks for identical goods and services; and similar marks for similar goods and services if this would cause confusion. It is also possible to register a mark internationally, either by making national applications or using one of the procedures that facilitate international protection, such as the Community Trademark (valid throughout the EU).
PATENTS
Patents protect inventions. In return for disclosing their inventions, patent owners receive a limited monopoly over their inventions, which is presently 20 years (subject to payment of renewal fees).
To be patentable, an invention must be:
- new – it must not have been made available to the public before the date of application;
- involve an “inventive step” – it must not be obvious to a person skilled in the art;
- be capable of industrial application; and
- not be excluded by law – e.g. scientific theories, business methods.
UK applications are made to the Patent Office.
The specification must disclose the invention clearly enough for it to be implemented by a person skilled in the art, and must set out the patent’s claims.
Obtaining and protecting a patent can be time consuming and expensive, and you should always get specialist advice. A UK patent provides protection only in the UK; there are various international schemes for patent registration available if you require wider protection.
Inventions made by employees in the course of their employment will generally belong to the employer. Companies that commission inventors should expressly state who owns rights in the invention as a condition of their involvement. Proprietors should mark the number of the patent application or registration on the products.
COPYRIGHT
Copyright protects original literary, dramatic, musical and artistic works, as well as sound recordings, films and broadcasts. A company may have copyright in the literature it produces such as brochures and training materials, as well as in photographs or drawings it creates. Software code is also protected by copyright as a “literary work”. Copyright is an “unregistered right”, which means that it arises automatically on creation of these types of work in a fixed recorded form.
Copyright does not protect ideas, though it protects the way an idea is expressed (for example in written form). It gives the copyright owner control over use of the copyrighted work, including any copying or distribution. Copyright also gives copyright owners certain moral rights, to be identified as the creator of the work concerned and to object to “derogatory treatment” of it (which can include editing and cropping).
There is no legal requirement to incorporate a copyright notice. However it is advisable to do so a suitable form of copyright notice is: “© [name of copyright owner] [year of publication]”.
Copyright vests in the creator of a work. However a work created by an employee within the scope of his employment will vest in the employer.
It is particularly important when commissioning a work from a third party to ensure that copyright ownership is contractually transferred.
DATABASE RIGHT
Intellectual property rights generally protect creative works, rather than mere “information”. However, there is an exception. Under English law, it is possible for the maker of a database within the European Economic Area to claim “database rights” where it has made a substantial investment in “obtaining” and “verifying” the contents of a database. These rights protect companies which compile databases such as telephone directories and marketing databases, where otherwise no legal protection would exist (because the database does not have sufficient originality to benefit from copyright protection).
However, a recent case shows that the database right is limited in scope, so you should always seek advice before relying on this right.
REGISTERED DESIGNS
Registered designs protect designs meeting certain criteria. Registered designs can be made up of the whole or a part of a product resulting from the features of the lines, contours, colours, shape, texture or materials of the product. Three-dimensional designs can be protected. The design need not have artistic merit.
To be registrable a design must:
- have individual character; and
- be new and not previously disclosed to the public anywhere in the world prior to the date of application for registration.
Registered designs confer a 25-year monopoly in the design, subject to paying renewal fees. The owner has the exclusive right to make articles incorporating the design. It is possible to infringe a registered design without actual copying ie by arriving at the same design independently. Applications must be made to the Designs Registry. Registration generally takes between three and nine months from application. It is also possible to apply for EU-wide protection. If you own a registered design, you should consider marking products with the registration number and the words “registered design”.
DESIGN RIGHT
Design right protects the appearance of functional products with no aesthetic appeal. All or part of an item may be protected. The shape of a tool can be protected while its get-up (eg colour) cannot. Protection does not require registration and lasts for the lesser of 10 years from the end of the year in which the relevant product was first marketed or 15 years from creation of the design document.
For protection a design must:
- comprise an aspect of shape or configuration of the whole or part of an article;
- be original and not commonplace;
- be recorded in a document or be the subject of an article made to the design; and
- be created by a qualifying person.
The owner has the exclusive right to reproduce (i) the design for commercial purposes by making articles to the design, or (ii) a design document recording the design. A person who does either without the owner’s consent infringes the right. Copying is an essential element of infringement.
The owner of a design right is the creator, except:
- where designs are created under a commission, in which case the commissioner will own the design right (unlike copyright); and
- where designs are created by employees in the course of employment, in which case their employer will own it.
For protection, owners should mark goods and packaging with the words “Design Right”, their name and the year of first marketing.
DISCLAIMER
Specialist advice should be obtained before taking, or refraining from taking, action based on comments in this article, which is only intended as a brief note.
This article has been written with the help of the Intellectual Property team at Penningtons Solicitors LLP.
Author: Joanne Vengadesan
Created Date: 02-02-2006
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