Every company has intellectual property. Even the stupid ones. In everything from the sign above the door to the details of its marketing plan, via a whole raft of other elements of the way a business conducts itself, intellectual property (IP) is constantly being generated.

And, as demonstrated by everything from the recent multi-million dollar Barbie/Bratz copyright spat to the battles that raged throughout the 80s over which offshoots of long-split rock bands got to tour with the original name, it’s a goldmine for lawyers.

Intellectual property is protected in law under five main headings: trademarks; copyright; design rights; trade secrets; and patents. Each confers a different level of protection to a different aspect of intellectual property, over a different period.

According to Fredrick Mostert, IP expert and author of the book on the subject, “From Edison to iPod”, the best approach to IP protection is to employ a “cocktail” of different forms of protection. So, for example, a new pen could enjoy patent protection for its mechanical elements, trade secrets would protect its ink formula, design rights would cover ornamental elements of its shape and trademark rules would protect the manufacturer’s logo. And anything you write with it will be protected by copyright.

Copyright protection is automatic – these words are the property of EN’s publishers and woe betide you if you duplicate them without their permission. Trademarks (logos, some product designs etc) enjoy some protection without registration – but it will help your case against an alleged infringer immensely if you have registered them.

Design rights, which protect original, nonfunctional elements of a product’s appearance, operate in a similar way to trademarks – some protection is automatic but it’s a lot easier to prove your case if you have registered your design.

Meanwhile patents, for which you have to apply, protect what can broadly be termed “inventions” – in the UK for 20 years from the date of application.

Trade secrets, meanwhile, cover things like secret recipes (Coca Cola’s “Merchandise 7X” formula being the classic example), computer code (which can also be protected by copyright and patents) confidential business information and processes. Protection is automatic and indefinite – but in the case of a dispute you’ll need to prove that the secret was yours in the first place, and that you went to some lengths to keep it confidential.

Mark Shipley of Shipley Solicitors

Protection is only part of the story, however. According to Mark Shipley, of Liverpool law firm Shipley Solicitors, there are four stages to dealing with IP: identification, rotection, exploitation and defence. Of these the first is arguably most important, as it is only once it has been identified that a business can decide how to protect and exploit a given form of IP.

Once identified, however, the next thing to do is work out how you’re going to prove that it’s yours. The overarching principle here is “first in time is first in right”. So you need to be able to prove that you were the first to create any given item of IP.

Posting a copy to yourself, sadly, is unlikely to hold up in court. A declaration stamp witnessed by the Notary Public,
however, ought to do so in cases of copyright disputes. In order to ensure the protection of your work in the biggest English language market in the world, meanwhile, it is possible to obtain a copyright certificate from the US Copyright Office.

The majority of this article deals with protecting your intellectual property in the UK. Classes of IP including trademarks, patents and design rights can also be registered in other territories, including the EU and US. If you think you may ever expand overseas, it is probably wise to do so – though with trademarks the “use it or lose it” condition applies in each territory.

COPYRIGHT
Copyright protects, in Mostert’s words, “the physical expression of ideas”. It is automatic and covers (among other things) original work expressed in the written word, artistic creations, musical scores and recordings, engineering and architectural drawings, films, broadcasts, computer programme source code and designs for items ranging from cars to dresses to web pages.

For most items copyright lasts for the lifetime of the author and the 70 years following the calendar year of their death. For sound recordings, computer generated works with no human author, and broadcasts, however, protection lasts for just 50 years from the date of creation or publication. Readers may remember a recent unsuccessful attempt led by Sir Cliff Richard to extend the latter period.

Copyright is owned by the author of the work or, if the work is carried out in the pursuit of their employment, by their employer. In the latter case the 70-years from the death of the author rule still holds.

In cases where work is sub-contracted, ownership depends on the phrasing of the contract. This is one of the commoner IP problems of which smaller businesses can fall foul, according to Shipley – especially in cases where a third party is engaged to write a piece of bespoke software.

Any company commissioning a piece of software (or other form of copyright material) that it wishes to exploit itself, and does not wish to be sold on to other parties, should ensure that the contract under which it commissions that material includes a clause explicitly stating that the copyright in the material will be assigned to it upon delivery.

In cases where this has not happened, however, all is not necessarily lost. Shipley says, “If the contract isn’t right, you can look back at the emails sent when you originally commissioned the work.

“What are the implied rights? If you made clear when you asked them to do the work that it was top secret, then there’s no implied right for the developer to sell it to others.”

Conversely, businesses that make a living creating intellectual property for other organisations should be clear about the rights they reserve and those they are comfortable assigning away when drawing up contracts themselves. Are you licensing the client to use your work – and if so in what ways, for how long, and to what extent – or are you handing over ownership of the copyright lock, stock and barrel?

Again, if this hasn’t been done properly, there may be an implied licence agreement discernible from the correspondence leading up to the creation of the copyright work.

TRADEMARKS
Trademarks can be registered or unregistered. They can cover everything from logos to slogans to product designs to corporate colours, and provide protection against infringement in perpetuity (as long as you keep using them).

While it is possible to challenge the use of your trademark by an interloper even without registration, you will need to demonstrate that you were the first to use it – meaning in most cases diligent record-keeping.

Registering a trademark with the UK Patent Office usually costs a few hundred pounds and, as long as no prior users challenge your use of the mark, provides an impressive certificate to wave in the face of infringers and the authorities.

Kate Withers, an associate at law firm Eversheds, points out that you should wherever possibly use the ® or TM (as appropriate) symbol to put potential infringers “on notice” that you mean business.

Kate Withers, an associate at law firm Eversheds

In order to achieve protection, the trademark should be distinctive. It helps for it not to be descriptive or generic (“the third largest soapsud manufacturer”, for instance, is unlikely to stand up as a trademark slogan).

For the most part, trademark protection exists to prevent confusion between products, and thus if the Trade Mark Examiners do not believe there is any danger of this then two similar marks in different classes of product are likely to be allowed.

However, the use of a very well known trademark in a different context is unlikely to be approved. If a soap powder were to be launched called Suds-U-Like, for example, customers might not unreasonably assume that the jacket potato giant had branched out into household detergents on the strength of its brand name. It’s all, sadly, a question of judgement.

In any event, in order to be protected – whether registered or not – a trademark should be used. While it is protected forever when in use, once it has been out of use for five years or more a competitor can apply for your trademark registration to be cancelled.

In the event of any dispute, it pays to be aware of the rights and wrongs of your position whether you are being threatened over an alleged infringement or making threats yourself.

Withers says, “It would be unusual to see a business with decent legal advice taking a punt and making threats that aren’t justified – this could be actionable and the basis of a claim against them.

“Also, it is rare for these cases actually to go to court now, so it is unwise to suppose a vast amount of resources are needed to defend an action.”

DESIGN RIGHTS
These can be registered or unregistered, in a similar way to trademarks, and cover the nonfunctional elements of a product’s design.

Unregistered design rights last 15 years and registered ones 25 years. In some cases continuous use of the design in question will over time enable you to build up trademark rights (see above), which last indefinitely.

Design rights can be registered via the Design Registry of the UK Patent Office and also the Community Designs Office of the European Union. They protect unique visual elements of a given design, and should be registered using drawings that make clear which elements are being claimed as your original work (eg use a dotted line to separate off the ornamental handle on a teapot if that’s the original element of your design). According to Mostert, you shouldn’t use colours unless they are integral to your design (otherwise a competitor can safely make a blue version of your yellow teapot), and photos are discouraged – the registering authorities are, it appears, painfully literal about the designs with which they are presented.

PATENTS
A patent, for which you have to apply, covers an invention, and the individual original elements (sub-inventions, if you like) within it. Thus the advertisement slogan: “To get to the A6, Audi have filed 9621 patents”.

A patent provides protection for 20 years from the date of filing with the Patent Office, and covers new inventions (this can include blueprints etc) with an industrial application. Of course, elements of many patentable inventions can also be protected in perpetuity by copyright, trade secrets, and even – as a brand – by trademarks.

However, a patent proves that an invention belongs to your business and, importantly, provides 20 years breathing space in which to exploit your work before anyone can think about selling a reverse-engineered product (which would safely circumvent copyright and trade secrets).

But getting the patent application right is important, and usually involves a patent agent. Shipley reckons that you can “drive a coach and horses” through many DIY patent applications. However, even if you use an agent, it’s important to make sure they’re a specialist in your field.

“It’s possible for people to engineer around a patent with something that does the same job but doesn’t infringe it,” he says. “That does happen but often it’s because the correct patent agent wasn’t used in the first place.”

EN recommends: From Edison to iPod: Protect Your Ideas and Make Money by Frederick Mostert (Dorling Kindersley, £14.99).

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