How to navigate the intellectual property minefield

If you are developing a new product, protecting your intellectual property should be high on your list of priorities, possibly even at the top. However, there are a number of myths and half-truths that have developed around this subject, and some of them can waste a lot of time and money. We would like to offer our take on the main issues – and suggest some ways that you can protect your company’s IP without incurring unnecessary stress or expense.

1. Careless talk costs profits

Most intellectual property issues come down to the disclosure of ideas. The obvious solution to this would be to keep all new ideas completely secret, but this is clearly not practical. Even if you only share your new idea with close colleagues, you will quickly reach a point where you need to talk to possible suppliers or consultants. The solution to this is to ask your new contacts to sign a Non-Disclosure Agreement (NDA) that legally obliges them to keep your information confidential and not do anything with it except assist you. NDAs can range from simple one page documents to twenty page complex contracts. We prefer the former, but you should consider what you need from an NDA before preparing one. We recommend looking at the excellent gov.uk site on IP for this and other aspects of protecting your intellectual property rights. The crucial thing to remember is that NDAs are not retrospective, so make sure you get yours signed before you start talking.

2. Paperwork – boring, but very important

The importance of keeping clear records of your ideas and when you had them – as drawings, notes or photos – cannot be overstated. These ‘dates of origin’ will be essential in proving your ownership of the idea, particularly if you decide to challenge a competitor – or are challenged by one – once your product is on the market. It is good practice to create an IP file at the start of the project and keep records of all your experiments, meetings and sketches, ideally with proof of dates. These will be particularly important if you apply for a patent – see below.

3. What are you protecting?

NDAs are great for keeping your IP safe whilst you develop it, but you need to decide what form of protection you are going to use when the product is launched. Your new product might involve trademarks, particularly if you have created a new company. It might also involve the copyright of graphics and text. However, the main IP topics that concern companies developing new products are patents and the protection of appearance with design rights and registered designs. Design protection is relatively straightforward, although it does have its moments, as we will see below. However, it is patents that raise a large number of issues, so we will tackle those first.

4. Are you skilled in the art?

Patents are complex legal and technical documents that should, in our opinion, be approached with extreme caution. There are a number of reasons for this. First, the subtleties of what can and cannot be patented are rarely obvious. Getting this right requires the services of a good patent attorney. In our view, this means one who will start from a sceptical position, and search for the reasons why your product might not be patentable. This might be because of existing products (‘prior art’); the unsuitability of the product (a purely aesthetic object, for example); or the fact that it lacks an ‘inventive step’. This issue is the really tricky one, and comes down to whether or not the thing that differentiates your idea would be obvious to someone ‘skilled in the art’ (loosely translated as someone who works in the same industry as yours). The excellent gov.uk site on IP makes the point that inventive steps can be based on apparently trivial details, so it can be hard to identify them. A good patent attorney will test your ideas and claims – and will make sure your idea is worth protecting. We would recommend talking to a company like Coller IP if you need this kind of advice.

The second reason for treading carefully is that patents take a long time to get into place and are expensive to create, maintain and – especially – defend. It is an unfortunate fact that patents do not guarantee that an idea will not be copied. Whilst having a patent or patent application will deter some potential competitors from copying your ideas, it will ultimately only be as good as your ability to defend it in the courts – and the costs of that will be down to you.

For more advice on patents go to this page on the gov.uk IP site.

5. Know your design rights

Design rights are free and apply to the internal and external appearance of any new product you develop. Like copyright, they are automatic, but they can be hard to enforce and you need to keep very clear records to show when you created your design. They also only last for a maximum of ten years after it was first sold or fifteen years after it was created – whichever is earliest. Protection is also limited. They do not, for example, protect two dimensional qualities like surface patterns. For more information on design rights go to this page on the gov.uk page.

6. Get registered

Applying for a registered design is the best way to protect two and three-dimensional product ideas. Design registration creates more formal protection which can last up to 25 years and is inexpensive to arrange. Like design right, a registered design only protects appearance, rather than technical issues like function and mechanisms, but it is a good way to protect your ideas and/or obtain a commercial return through licensing, etc.

Design registration depends heavily on the images used to illustrate the product. The use of subtle CAD images has raised some interesting issues in recent years and led to one particularly famous legal dispute involving the Trunki children’s suitcase.

For more information on registering a design, look at this page on the gov.uk site.

7. The bottom line

Good IP protection is essential to protect your company’s commercial interests, but it needs to be handled carefully, so avoid anything that looks like a quick fix or a ‘get rich quick’ approach. Simple NDAs can protect your ideas whilst they are under development and registered designs provide a good – and low cost - level of protection to the appearance of your product. Patents will be essential for some products, but not all. Good, professional patent advice is essential. This means qualified attorneys who will probe and test your ideas to make sure your product qualifies for and will benefit from this level of protection.