26th April 2019 marks World Intellectual Property Day.
Here Karen Holden, founder of A City Law Firm, gives her top tips for protecting your Intellectual Property.
What is IP?
Intellectual Property (IP) comes in many forms. It might be your company name or logo, your domain name, or an invention or design such as software, an App or a product.
IP can be both registered and unregistered rights. But firstly, you must identify what IP you own in your business and take the right steps to protect it.
Whatever your IP, it is one of your most valuable assets and should be protected from potential competitors. Often people put off dealing with IP, but a business is never too young to protect its assets. Just imagine having to rebrand if someone else registers your trademark first!
If you can register your design rights (the look of your product/packaging/designs) and trademarks (such as trading name/logo/slogan/domain name) then I highly recommend you take steps to do so. Make sure proper searches are conducted so you are aware of possible objectors.
It is vital that you ensure that you properly own all IP which has been created for you. Often branding agencies and website designers only licence you the right to use the IP in their designs or software and do not actually transfer the ownership rights. It is important that you are aware of what you do and do not own especially if you are looking to sell the business.
Registered IP shows a potential investor the value of your company, offers them comfort in what they are investing in and can act as collateral.
On the other hand, if you want to sell your business, then registering and valuing your IP increases the value of your company and increases your chances of a successful sale.
I have seen horror stories where money has been spent on branding and logos, but the owner couldn’t see the benefit of registering these until year five. On submitting the registration forms they have received objections and have had to rebrand. We’ve seen clients have to rebrand decades later as a result of failure to properly protect their IP.
Top tips for protecting your Intellectual Property
1) Identify what IP you own. Make sure full rights of ownership, for example from designers, have been assigned to you and check that no one has already registered the IP.
2) Register all important trademarks so that you can deter others from using your brand. This will give you the right to take legal action against anyone using it without permission.
3) If you have invented something you should look to register this as a protected patent as soon as possible. It is important that you keep any inventions secret until you have a patent as disclosure may invalidate any registration.
4) If you have hired someone to create your IP, have an agreement in place. This should assign full ownership to you upon completion as this does not automatically transfer to you. It should also cover what that party should do with the IP such as destroying any workings, maintaining confidentiality and importantly being unable to use the IP themselves unless permitted to do so.
5) If your own employees create the IP during their employment, this will usually automatically be your property, but you should ensure these provisions are outlined in their employment contracts for added protection. Having proper confidentiality restrictions and a non-compete clause also means that if they terminate their employment with you, they cannot take this knowledge and create new IP which they can themselves sell on.
6) If you are going to disclose any details about your business, IP or development, you should have well-drafted non-disclosure agreements in place. You may invalidate any patent application if this is not done.
7) You can permit someone else to use your IP and pay for this right. A license should be executed between you to protect your position as the IP owner. It should set out the exact terms the user can use the IP, on what basis you can withdraw this right, and protect your full ownership.
8) If your IP is used without your permission or someone tries to copy your branding, there are clear legal steps you can take. It is important that action is taken swiftly, and a Court would want to see that you have taken action as soon as possible once you discover a breach rather than just accepting the situation. You can seek to resolve the issue amicably or take immediate action such as an injunction to cease its use or you can issue a claim to seek damages for your losses and the immediate return or destruction of your IP.
These are the main things to consider when you have Intellectual Property:
• Register your IP
• Protect your designs through tight agreements with all relevant parties
• Ensure you document ownership and any permitted rights assigned to others
• Monitor your IP and its use
• Take action if anyone seeks to use this without permission