Intellectual property advice General

Im starting a new business, what do I need to know about intellectual property?

75% of business value lies within intangible assets according to The Former Chairman of the Federal Reserve.
So whether youre creating the latest gastro pub, a slick new fashion label, the next blockbuster novel, a new
smartphone app, or a product providing huge advancement in technology, you need to understand intellectual
property, the intangible aspects of your business that you cant touch or see, in order to prosper.
If youve set up a new gastro pub or a fashion label, the way people will know about the tasty food you cook, or the
stylish clothes you design, is because of the brand. It is therefore key to ensure you understand trade marks, the legal
mechanism for protecting your name and brand.
If youve written a novel and youre looking at what you need to do next as you take it to market, then understanding
the associated intellectual property will be an important part of your future success.
Are you clear about what aspects of your book is protected by copyright? Who designed the cover and do you own
any IP resulting from this creation? Have you considered protecting the name?
If youve developed a new smartphone app, it is important to understand what aspects of software are protected by
IP.
You may have copyright in your code, but beware that this has limited value. If youre software provides some
technical advantage over other similar software, you could even have invented something patentable.
Furthermore, aspects of the look of your software, such as GUI icons, may be protectable by registered designs. And
dont forget to consider how trade marks could help protect the name of your app.
For any huge advancement in technology it is important to consider what aspects of your new technology could be
protected by a patent. But also, dont forget to consider whether the look and name of your product could be
protected too.
If you havent thought about any of the above rights yet, then dont panic. Some intellectual property exists as soon
as you create something, so you may already have some IP.
When creating a new company, it is always worth thinking about who owns the IP associated with company. From
the design of your company logo, to the idea that is your companys USP it is essential to make sure that the owner
of the IP is clearly defined.
As your company grows and so too does the creation of new intellectual property, it is advisable that you identify,
capture and protect it as you go. Make sure that you understand the value of and develop an appropriate intellectual
property capture system.
Finally, dont forget that while IP can provide you with exclusivity to an idea or name, it can do the same to your
competitors. As such, dont forget to think about other companies IP and how they could affect your business.

The information contained in this document should not be applied

to any particular set of facts without first seeking professional advice.

What is intellectual property (IP)?

Youve heard that every successful company has it and even some successful people have it and use it for their
benefit.
But what is intellectual property, why would you want it, and how do you get it? Lets explain.
While property such as your house, car or phone, are physical tangible assets, intellectual property is the intangible
stuff you cant touch or see such as your ideas, name or brand.
Intellectual property rights (IPRs) are the legal mechanisms provided to protect IP. The key IPRs are patents, trade
marks, designs, copyright and trade secrets. However, IPRs cover more peripheral protection such as confidential
information and domain names. Lets consider the key IPRs now in a little more detail.
Patents give you exclusivity to an idea or an advancement in technology where would Dyson be today if every
other companys vacuum cleaner could use its bagless technology?
Trade marks provide a guarantee over the origin of goods or services by use of an exclusive name or indication of
origin. Apple Inc. fought hard to stop The Beatles Apple Records use the Apple brand. Would Apple Inc. be a
major player in the music industry without the exclusivity that they fought so hard to protect?
Trade secrets the idea of keeping information confidential within an organisation can be powerful. Coca-Cola are
unlikely to have had such a stronghold over their market had their recipe not been kept a trade secret.
Designs protect the way products look think of the shape of an Aston Martin or the casing of an iPad. They can
even protect the visual layout of websites or software.
Copyright protects more artistic things: photos, books, films, paintings, as well as less artistic but just as
commercially relevant content including computer code, sales brochures and website content.
Hopefully you now have a feel for what IP is, what different IPRs are available for protecting your IP and why they
could be of value.

The information contained in this document should not be applied

to any particular set of facts without first seeking professional advice.

Why should I care about intellectual property?

Put simply, because they can bring huge value to you and your business.
When Google bought Motorola for $12.5 billion in 2012 the value of Motorola was 63% higher than its previous
closing price. Why? Motorolas nearly 25,000 patents and patent applications were of such a high value to Google in
its fight against the likes of Microsoft and Apple it was willing to pay a premium for the company to get its hands on
the intellectual property. Hence, understanding and valuing intellectual property can boost the value of your
business.
Kodak was for decades the market leader in the photographic film industry. Digital photography then came along
and wiped Kodak out. However, who actually developed much of the core technology behind digital photography?
Yes, you guessed it Kodak. Thats why Kodak managed to sell its patent portfolio for around $525 million. While
this shows that protecting intellectual property can bring value to a business. It also provides a cautionary tale
simply protecting your intellectual property is not enough.
When Microsoft bought Nokias mobile business for $4 billion, there was one notable asset that Nokia held onto its
patents. The $4 billion covered the purchase of many intellectual property rights such as brand names and its knowhow. However, Microsoft agreed an additional $1.6 billion to licence Nokias patents for a period of just 10
years. Nokia could see not only see the value in their intellectual property, but they also understood how to
maximise the value for their benefit.
How you can benefit
These examples are all of big business and big money. Lets get back to reality and consider how you can use
intellectual property to benefit your business.
Even at the early stages of a business, intellectual property can bring value to your business. Being able to show that
you understand and value your intellectual property, even if you dont yet invest in it, can provide potential investors
with some comfort.
Registered intellectual property rights such as patents, trade marks and registered designs provide you with
exclusivity to the idea, name or design that they protect. This can help provide you with exclusivity to a certain
market place, or at the very least enable you to clearly differentiate yourself from the competition.
If you build an intellectual property portfolio, a collection of patents, trade marks and designs, to protect different
aspects of your business, this may help attract investors attention because it can show that you have strength and
exclusivity in the market.
When you come to looking to exit, perhaps via an IPO or sale, intellectual property will undoubtedly help to add
value to the balance sheet.
Like any asset, intellectual property is something you can make money from. Whether you sell it, or collect royalties
from other companies licensing the use of it, it can be a very valuable asset. So much so, there are companies that
solely buy, sell and exploit intellectual property rights just as a property tycoon may buy, sell and rent a property
portfolio.
It is also worth remembering that even if youre not thinking about intellectual property yet, some of your
competitors probably are. Having some intellectual property rights in place could provide a very useful negotiating
tool in the event that you step on the toes of a competitor and their intellectual property. In addition, if you dont
protect your latest ideas, or new brand name, then someone else could and you could be pushed out of a certain
area for your business, or left trailing your competitors.

The information contained in this document should not be applied

to any particular set of facts without first seeking professional advice.

Do I have any intellectual property?

If youre a designer, a software developer or are using a name to sell your goods or services, you probably already
have some protection for your intellectual property without realising.
There are three main types of intellectual property rights that exist automatically, without you having to do anything
but create something. These are copyright, unregistered trade marks, and unregistered designs.
Copyright
Copyright protects against copying of a whole or a substantial part of an original work. What do we mean by a
work? This is a catch-all term for the likes of photographs, music, films, books, software, website content and
brochures.
Unregistered designs
Like their registered counterparts, unregistered designs protect the look of products.
Unregistered trade marks
Unregistered trade marks provide some protection against other people or companies using the same name as you.
Other laws such as the law of passing off can provide protection against companies offering their goods or services
as if they are yours or have some relation to you when they dont.
Think holistically
Automatic unregistered intellectual property rights are advantageous because they are free and can be invaluable if
you have no other protection. Its therefore important to remember that they exist.
However, there is no doubt that they are not as powerful as registered intellectual property rights.
It is important to consider whether any registered intellectual property rights such as patents, trade marks and
registered designs could bring value to your business.
In any sophisticated organisation a holistic approach should be taken. Unregistered intellectual property rights
should be used to complement registered rights, rather be seen as a free replacement.

The information contained in this document should not be applied

to any particular set of facts without first seeking professional advice.

What do I need to think about when talking to others before protecting my

intellectual property?
So you've got a great new product and now you want to move to the next stage.
Whether your product involves a great new brand name, a technical innovation or a brilliant new design, moving to
the next stage inevitably involves bringing in outside help or talking to people outside your organisation. This may be
in the form of an investor, a commercial partner, another company with whom you'd like to develop your product
with or a potential customer.
What do all of these entities have in common? They're going to want to know about your product and what makes it
special.
But what if youre not quite ready to move forward on protecting your idea? This could be because you don't have
the funds yet or because you want to develop your idea further first, for example.
Well, there are steps you can take to protect your idea when speaking to others outside of your organisations before
getting any registered intellectual property rights.
The risks
If you start openly talking to people about your business or new idea before getting any protection for your
intellectual property, you risk not being able to get any protection for at least some of your intellectual property in
the future. This could have a multitude of knock-on effects for your business.
Lets say youve developed a new product which includes some great new technological advancements. If you
disclose how your product works, perhaps to an investor when looking for funding to take the new product to
market, then you probably wont then be able to get patent protection for the new technological advancement in
most countries around the world.
Some countries have a grace period for filing patent applications after disclosing your idea. For example, there is a
12 month grace period in the US, Canada and Australia and a 6 month grace period in Japan. In many countries,
such as the UK and in Europe, there is no such grace period. It is therefore generally not worth risking disclosing
how your invention works because you could lose protection throughout Europe.
Similar grace periods exist for designs too, the US and Europe both providing a 12 month grace period for filing
registered designs after disclosing the idea. However, ensuring that you monitor the date of first disclosure and file
within the 12 months is difficult.
Registered trade marks effectively work on a first-to-file system. Lets say you come up with an exciting new brand
name which you are hoping to obtain a registered trade mark for further down the line. If someone else goes ahead
and registers that name you could be prevented from using it even if you came up with the name first.
Preventing those risks
So what can you do? There a number of things you can do in order to help preserve your idea or product.
The first of these is getting the other person to sign a Non-Disclosure Agreement (NDA). In short, by signing such an
agreement, the other person or organisation is agreeing not to tell anyone else about your idea or use to use the
product or idea youve told them about. This means you can talk freely with them.
Whilst this, unfortunately, does not necessarily mean that they won't keep your idea to themselves (or use it
themselves), what it does mean is that you may be able to take steps against them if they did.

The information contained in this document should not be applied

to any particular set of facts without first seeking professional advice.

NDAs are quite common and, in general, investors and companies probably won't be surprised by you asking them
to sign one. However, in some circles, for example in the Venture Capital (VC) community, they can be seen as a
drain on time and VCs may refuse to sign them.
So what if they won't sign a non-disclosure agreement? This can be tricky. If you decide that you still want them on
board and are willing to take the risk, there are still some things you can do to help safeguard your idea or product.
Firstly, you can still make it clear that the information you're giving them (i.e. your idea or details of your product) is
confidential. Ideally, this would be in writing. For example, marking any slides or documents as 'confidential' would
be a good start.
Secondly, you can limit the information you give them. This is generally a good idea whether you have an NDA in
place or not.
For example, whilst you might need to provide an investor with an overview of your idea and its many advantages,
you may not need to set out in detail how your new product works and how they might make their own one, without
your help. Holding back the key information about how the idea works could mean that you can then obtain patent
protection for the idea.
Thirdly, register some intellectual property rights. Its always best to have your ducks in a row. File for a patent, and
register a design or trade mark before you need to start discussing your new business venture with others. This is
always the safest way to proceed.
In summary, it's really important to take as many steps as possible to safeguard your idea. Whilst you may need to
talk to that important investor about your idea or product before you are able to register any intellectual property
rights, there is a chance that that doing so could prevent you from being able to obtain certain protection in the
future. At the very least make sure you have some safeguards in place, but ideally get your intellectual property
rights registered first and talk later.
If the above has come too late and someone has stolen your idea or told others about it (or if you yourself have
already told others about it), all may not be lost.

The information contained in this document should not be applied

to any particular set of facts without first seeking professional advice.

How do I ensure my company protects its intellectual property?

Developing new products, ironing out bugs and flaws in your existing systems in a non-obvious way, or designing a
particularly stylish clothing range may all give rise to intellectual property (IP) rights within your company.
An IP capture process will help to ensure your company is able to identify potential IP rights as they are created, and
will help your company to protect those rights.
Why should I care?
Because innovation on its own is often no longer enough. In todays fast-moving world you must protect the fruits of
your labour and ensure that other companies cannot simply rip-off your idea.
Without an intellectual property capture process, you may not know what rights are being generated by your
company. Worse, you may only realise that you could have protected an idea after it is too late to do so.
What can I protect?
You can use the following rules of thumb when deciding if something can be protected by intellectual property rights.
Patents protect the way things work. The European Patent Office grant patents for new, non-obvious technical
solutions to technical problems. Other patent offices around the world take very similar approaches to assessing
patentability.
If you have overcome a problem when developing a product or system, and you suspect the problem may not have
been solved in that particular way before in your technical field, you may be onto a winner.
Registered Designs protect the way something looks. So if the new part of your creation is at least partly aesthetic
then you may want to look to registering a design.
Copyright protects anything from photographs to films and literature to computer code. If you have put effort into
making something which you have not copied from someone else and is a creative work such as a book, film, photo,
or perhaps something more technical like some software then copyright could help you.
Trade Marks protect brand names or slogans. They are used to provide protection over something that provides an
indication of the origin of goods or services. If youve developed a new product and it has a name, youve created a
new sub-brand, or started using a particular slogan, it is worth looking into whether or not you get a registered trade
mark to protect that.
How do I set up an IP capture system?
It is remarkably simple to set up a simple and effective intellectual property capture system.
The system will depend on the size of your company, however there are important aspects common to all systems.
1. Educate your company. Make sure everyone knows the value of intellectual property. In particular, make sure
everyone knows not to disclose an idea outside of the company until the idea has been assessed to see if it gives rise
to any intellectual property rights.
It can be a worthwhile investing in getting a professional to educate you and your team. It may be the culture of your
company to disclose or publish a new product as soon as possible. However this can irreparably damage your right
to protect the product through the patent or designs systems.
You need to understand what can be protected, but also the implications of actions when you have no protection.

The information contained in this document should not be applied

to any particular set of facts without first seeking professional advice.

In an academic environment, the modus operandi is PUBLISH PUBLISH PUBLISH. However, I think that the
important things to have in mind in terms of patent filing strategy are: to start as early as possible, and to try and
have plenty of time to think before you have actually disclosed your invention.
Jeremy Holmes, Imperial Innovations
2. Keep a log. A note of your developments can prove an invaluable tool when you look back to assess whether you
have anything that can be protected. For many intellectual property rights, the date on which the idea was conceived
is also important.
For patents and designs, one way of doing this is providing an invention capture form, which R&D staff use to record
new ideas they may have come up with or advantageous features they may have created. An example invention
capture form is provided in the resources section.
3. Schedule regular points to check your log for potential IP rights. Make a note to assess the entries on a regular
basis, perhaps every quarter or a set time before a new product launch? With the above rules of thumb in mind, ask
yourself, can I make this idea go further?
4. Take your good ideas as far as they will go. If you think your idea may be patentable, or worthy of design
protection, it may be time to talk to get some legal advice.
An advantage of using a capture system like this is that it provides a record of who has created intellectual property.
This will also help to identify who owns the intellectual property.

The information contained in this document should not be applied

to any particular set of facts without first seeking professional advice.

Who owns an intellectual property right?

Its often said that 80% of the value of businesses lies in their intellectual property. So, put simply, if you dont get the
ownership of intellectual property clear at or before the point of creation, then you risk losing the money and time
you have invested in it.
Not owning an intellectual property right could potentially be disastrous for your company: it could mean someone
else can stop you doing what you want to do, it could mean that an investor wont invest, and it could mean you
need to carry out a complete rebrand.
Determining who owns a certain intellectual property right can depend on the situation as well as the right in
question. Well therefore consider some common situations and where the ownership lies.
Ownership in employment
In general, the rights to a creation, whether an invention to be patented, a design to be registered, or a creative work,
like a book subject to copyright, belong to the creator. However, if the creator is working for a company then it is
quite likely that the company is the owner.
Firstly, employment contracts often have terms that transfer ownership of employee creations to the company. This
will likely override any law that specifies that the creator is owner. Even if there are not terms in the contract of
employment relating to IP ownership, it is likely, at least in the UK, that the employer still owns the creation.
In patents, if an invention is made by an employee in the normal course of his duties then the invention belongs to
the employer. To put that in context, if the inventor is employed by a software company as a developer and the
invention lies in code that has been developed, then the company almost certainly owns the invention. However, if
the inventor was actually employed as a receptionist and happened to do some coding in his spare time, then it is
probably not owned by the employer.
If youre an employer, it is always worthwhile ensuring that your employment contracts deal with IP ownership,
irrespective of whether the rights are likely to automatically transfer to you as employer.
Ownership by founders
So what happens when a founder has created something, but they are not explicitly employed by the company? Well,
owners of companies and directors are deemed to have a special obligation to the company. For example, even if
they are not part of a technical team who are meant to be inventing, this special obligation would extend to creating
potentially patentable inventions that may be of benefit to the company. As such, it is likely that everything created
by someone at director level is owned by the company.
When the idea was created before a company was officially set-up the issue of ownership gets a little more
complex. In these circumstances, the original creator would arguably be owner. When founding the company it
would be best practice to get all intellectual property associated with the newly founded company, even if it was
created before the company was founded, assigned over to the company. Otherwise a founder could cause problems
down the line.
Ownership of intellectual property created by external contractors
If you use an external contractor for some work, say a consultant with particular technical expertise and they invent
something then as the inventor it is likely that they will own whatever they have created.
It is therefore always best to ensure you have a contractual agreement in place before any non-employee starts
doing work for you and ensure that the contract deals with intellectual property ownership. However, it is worth
noting that UK design law is slightly different in that if a work is commissioned by a company to a contractor, then
the company owns any resulting intellectual property.
The information contained in this document should not be applied
to any particular set of facts without first seeking professional advice.

Ownership of trade marks

In the UK and Europe registered trade marks are owned by the person or company first filing the registration. There
is therefore generally less of an issue when it comes to ownership. However, it is worth noting that in other countries
like the US, the ownership is determined based on who used the name or logo first.
Where you do need to watch out is where you get an external consultant to design your logo, which you may then
register as a trade mark. While your company that filed the trade mark may own the trade mark, copyright would
exist in the original work put into designing the logo. The external consultant that designed that logo would likely be
the owner. As such, make sure that you get any IP created by such a designer assigned over to your company.
What happens if I ignore this advice?
Well, on your head be it!
When it comes to patents only those who own the rights to an invention are entitled to file a patent application
directed to that invention. If you file an application anyway, then any third party, at any time, can start legal
proceedings in the UK to have themselves named as the rightful owner of your patent application or patent.
If this happens, your patent application or patent may be taken from you, regardless of the money and time you have
invested in it.
Stop and think ahead
Taking a minute or two to think wait a minute, who owns this invention, design or logo at the outset can save you
time, money and considerably reduce your stress levels.
While various provisions exist to ensure that employers own intellectual property created by their employees and
anyone commissioning a design owns the resultant design, it is always best to put a written agreement in place that
clearly shows the ownership of intellectual property.
As much as anything, this will help to ensure you dont have to spend unnecessary money explaining that you do
own a certain intellectual property right because the written agreement should make it crystal clear that you are the
owner.

The information contained in this document should not be applied

to any particular set of facts without first seeking professional advice.

10

How do I let others know about my intellectual property?

If youve worked hard to obtain one or more intellectual property rights, its in your best interest to make these rights
known to others.
One way to do this is marking. For example, by identifying something as a registered trade mark, or identifying a
patent number on a patented product. Marking is useful in that it lets others know that:
a.
b.

an intellectual property right exists; and

use or copying may be an infringement of your intellectual property rights

While you dont have to make use of marking, it may help to deter copiers. For patents in particular, there can be
further benefits as we will discuss.
Well now consider how to clearly identify the existence of different IP rights.
Patents
If you have a granted patent, any products covered by the patent may be marked. To do this, use the word patent
or patented followed by either:
1.
2.

the patent number; or

a website link to a web page detailing the patent number.

If a website link is used, it is important that the web page clearly associates the patent number with that product. The
web page must also be accessible to the public free of charge. Using a website link is particularly useful where you
have a product with multiple patents associated with it.
In some instances, for example when selling software, it may not be possible to directly mark the product. In such
cases, any packaging, leaflets, emails, or web pages associated with the product may contain the marking.
Marking your patented product provides evidence that an infringer of your patent should have known of the
existence of your patent. As a result you are more likely to receive financial compensation from an infringer, should
you end up in court.
That being said, once your granted patent expires or is revoked, it is essential that you stop marking your products.
Not doing so may lead to a summary conviction and fine. If an internet link is used to mark your product, updating
the web page to remove the patent number would be an easy way to remove the marking.
While it is possible to mark your products when you have a patent application pending (i.e. filed, but not yet granted),
this only has the potential benefit of informing people that you have filed a patent application to protect an aspect of
the product.
This could arguably act to inform a potential infringer of the existence of your pending patent application. If you
would like to do this, you can use the wording patent application no. followed by the application number. Care
should be taken however, as any changes in the status of the patent application (for example, refusal), would require
a change in or removal of the marking.
Trade marks
If you have a registered trade mark, you may use the symbol next to your trade mark. Alternatively, you may use
the symbol RTM (Registered Trade Mark).
However, if you do not have a registered trade mark, the use of or RTM is illegal.

The information contained in this document should not be applied

to any particular set of facts without first seeking professional advice.

11

If your brand name or logo is not a registered trade mark, you can still use the symbol . This simply lets others
know that the name or logo is being used as a trade mark, i.e. it is an indicator of the origin of the product or service
associated with the name.
Copyright
You may use the symbol in connection with your copyrighted material. However, as the law is slightly different in
different countries, some more information is recommended to accompany the . For example, one of the following
notices:
Copyright Year Name or Copyright Year Company
For example, Copyright 1996 Steve Jobs or Copyright 1996 Apple Inc..
It is recommended that you place this notice on any material protected by copyright. For web pages for example,
such a notice should be present at the bottom of every web page.
Designs
If you have a registered design, you can use the words registered design no. followed by the registration number.
Such a marking can be placed on the actual product itself, as well as on any accompanying packaging or literature.

The information contained in this document should not be applied

to any particular set of facts without first seeking professional advice.

12

Should I worry about competitors intellectual property?

There are two categories of intellectual property rights, yours and everyone elses. Both need to be taken seriously.
We are now going to concentrate on the latter, intellectual property rights owned by people external to your
business, for example a competitor. These might be referred to as third party intellectual property rights.
Why should you care about other peoples intellectual property?
Because if you dont you might get some nasty surprises that could stop you doing what you want to do with your
business. Whether you are starting a new business or looking at a new direction for your existing business, whenever
you launch something new you need to check you are not stepping on someone elses toes.
Philip Soo, Patent Counsel at one of the worlds most innovative companies 3M perfectly summarises why other
peoples IP matters:
Understanding the IP of competitors is important for several reasons. First, such information helps us recognize
crowded IP areas and white space opportunities, and thus can help inform the research and business strategies of
3M. Second, this understanding helps us avoid infringing the valid and enforceable IP rights of others, which is 3Ms
policy. Third, an understanding of the prior art enables us to assess the patentability of our own inventions.
Philip Soo, Patent Counsel, 3M.
Well consider each of these points in turn, starting with looking at third party intellectual property to avoid the risks,
and then looking at the opportunities it also presents.
How do you go about looking at other companies intellectual property?
You may be aware of a big name in the field, and therefore one option could be to look to see what granted
intellectual property rights that competitor has. Its a good idea to look at the website of the competitor company to
see if there are any other names the company may be using to register their intellectual property rights.
You can search for most intellectual property rights yourself. See the useful links in the resources section for
searching for intellectual property rights. However, a more robust option is to contact a patent or trade mark
attorney to arrange a professional search for problematic intellectual property rights. This may identify relevant rights
that you are unable to find.
However, there are risks of looking at other peoples intellectual property. Michael Hsu, Patent Counsel at Adobe,
points out that in the US, its probably not a good idea for you to take a look at other people's patents, the competitive
landscape, because then you might find out that you have been put on notice for treble damages.
Basically, in the US if you knowingly infringe a patent, then you could be sued for much more money.
As such, some companies take the policy of not looking at competitors patents because theyd rather only risk
actual damages, rather than triple damages.
If you operate at all in the US, as most companies do, then this is worth taking into account. However, as long as
you avoid any relevant intellectual property rights that you do find then you shouldnt risk the treble damages issue in
the US.

The information contained in this document should not be applied

to any particular set of facts without first seeking professional advice.

13

Ive found a third party intellectual property right, what do I do?

You need to determine whether or not this intellectual property right gets in the way of you doing what you want to
do. Its always best to get a professionals opinion on this because registered intellectual property rights can be
complex legal documents.
It is often the case that certain rights are more or less relevant to your activities than it would seem on the
surface. Furthermore, it is worth remembering that just because a company has a registered intellectual property
right, it doesnt necessarily mean that it is a valid right.
If the third party intellectual property right is a patent application, monitoring the progress of the patent application is
recommended. Often, what a patent application covers changes before it is granted. It may well be the case that the
granted patent therefore covers less than the original patent application.
If the third party intellectual property right is a granted patent or registered design, there are the following options:
1.

Design around - it may be possible to design around the protection provided by the granted patent or
registered design. For trade marks, you might want to come up with an alternative name, or at least change
the way it is represented. If this option is taken, seek confirmation from an expert that the proposed design
around would get around the protection.

2.

Seek a license - the owner of the intellectual property right may be willing to offer you a license to use
whatever is covered by the intellectual property right. It may help the deal if you have your own registered
intellectual property rights to license in return.

3.

Attack the intellectual property right - if it can be shown that the right should not have been granted, then it
will be revoked and no longer a problem. This is generally an expensive option.

4.

Buy the intellectual property right - if you buy it then it is not going to be a problem. This depends on your
resources and the goals of the third party!

5.

Join forces - the owner of the intellectual property right may be willing to join forces with you to develop
and/or market the product.

Opportunities with intellectual property searching

Searching for intellectual property and understanding the landscape of third party intellectual property can help to
identify areas where there is little research, or perhaps lots of research, but few patents. This information can help
guide your intellectual property protection strategy, but perhaps even your R&D strategy.
For patents, understanding the patent landscape can also guide what you try to protect, and what you try to keep
trade secret. If there are a lot of patents out there in a specific field, then it might be difficult to get your patent
protected in which case keeping it secret might be best.

The information contained in this document should not be applied

to any particular set of facts without first seeking professional advice.

14

Someone's stolen my idea, what can I do?

'Help! Someones stolen my idea. I don't have any registered intellectual property rights for it. Is there anything I can
do?' Well, there might be.
Breach of confidence
In some circumstances, you may be able to rely on what's referred to as 'breach of confidence'. Whilst the various
requirements for taking steps against someone who has breached your confidence are complex, the basic
requirements can be summarised as follows:

The information must be of a confidential nature. This means that the information you give to the other
person must not be something you are freely sharing with lots of different people.
The person receiving the information must have used it and caused you harm as a result. For example, if the
other person or company launches their own product, including your technical innovation or great new
design, or publishes it on the internet, then this may well harm you commercially.
The information must have been communicated in circumstances which made it clear that the information
should be kept confidential. In other words, if you tell someone about your idea at a party and dont mention
that it is confidential, the other side cannot be held to have breached your confidence if they pass that
information on. On the other hand, it might be a different story if the information is handed over in a closed
meeting via a document marked confidential.

Whilst you may have legal options open to you if these basic criteria apply, what may be more useful in practice,
however, is that suffering a breach of confidence could be a useful bargaining chip in coming to some sort of
agreement with the other side.
Can I still get a patent if there has been a breach of confidence?
In general, if your invention is disclosed before filing a patent application then you wont be able to get a patent
granted.
However, if you tell someone about your idea in confidence and they then disclose the idea to the public and this
idea contains patentable components, you may still be able to get a patent for it. For example, for European patent
applications, there is a 6 month window after the disclosure in which a patent application can be validly filed if there
has been an evident abuse. In reality, the circumstances in which this issue arises are quite rare.
Can I still get protection if I have told others about my invention but theres been no breach of confidence?
In general, no you cant. That said, you may still be able to protect your idea with a patent in some countries and in
some circumstances.
Some countries have grace periods. Essentially, these are periods before the filing of a patent application during
which disclosures of the invention do not count against the patentability of the invention. For example, there is a 12
month grace period in the US, Canada and Australia and a 6 month grace period in Japan. However, no such
provisions exist in Europe or the UK.
Similar grace periods exist for obtaining registered designs. For example, there is a 12 month grace period for
registered designs in the UK and also for European Community registered designs.
You may even have intellectual property rights without realising it
You may also have some intellectual property rights without even realising it; some intellectual property rights are
automatic. Examples of these are copyright and unregistered designs. If someone is using your brand or making their
products look as though they're yours, you may also be able to rely on the laws of passing off.
In short, if someone's stolen your idea, you may still have some options open to you. All may not be lost.
The information contained in this document should not be applied
to any particular set of facts without first seeking professional advice.

15

Do I have any intellectual property protection for my software?

As soon as you put finger to keypad and develop your code you have some intellectual property protection for your
software in the form of copyright.
Traditionally, copyright is seen as something that protects artistic works like the text of a novel, a directors new film,
or a bands new album. However, like a new novel, the code of a new software application is also protected by
copyright.
Copyright will protect against competitors copying a whole or substantial part of your code. In software, this is of
most value to stop black market software sales.
It provides little protection against competitors taking the essence of your software and programming it in their own
way. This is because software protects against copying of the whole or a substantial part of it.
The first point here is that you have to be able to prove that there has been copying. This is often tricky.
If youve included redundant code in your software then the existence of this in a competitors product could be
useful evidence of copying. This is one good reason to incorporate some intentionally redundant code.
You also have to show that it is a whole or a part of the software that has been copied. So if just a certain aspect of
your code has been taken, copyright might not help you much.
Given the limitations of copyright protection for software it is always worthwhile considering what registered rights
can help you protect your software. In short, you can protect aspects of your software with intellectual property
rights.
Patents can be used to protect aspects of the way your software works. Particularly if your software provides some
technological advancements.
The look of your software GUI or icons may be protected by a registered design.
Trade marks can be used to protect the name of your software and any associated logos or icons, including
distinctive GUI icons.
So in short, you should have some basic protection for your software without having to do anything, but it is
always best to think about all of your options and take steps to protect your software in the best way possible.

The information contained in this document should not be applied

to any particular set of facts without first seeking professional advice.

16

Whats copyright?
Probably the best known unregistered intellectual property right, copyright generally exists in original creative works
such as books, music and photographs. However, it is worth remembering that copyright also exists in commercial
documents. From website content to sales brochures to software code, copyright can provide commercially relevant
protection for any business.
The great thing about copyright is that it exists as soon as you record the original work in writing, or otherwise.
That means that for commercial documents copyright often exists as soon as you create them. Nothing needs to be
registered to get copyright protection. As soon as you take a photo with a camera, copyright exists in the
photograph you have taken. As soon as you code some software, copyright exists in the code youve created.
It needs to be original
So what do we mean by an original work? The whole point here is that copyright protection only exists in things
that are considered to be a product of the creators own skill and labour, or own intellect. That means that for
copyright to exist, the work must be your own independent creation. It must originate from you.
So for the work to be original, it doesnt need to be new. It just needs to be your own independent creation. It
doesnt even need to be of any certain quality. The copyright that exists in a selfie is the same, and as valuable as,
the copyright that exists in a professionally shot photo. Both are the independent creations of and originate from the
photographer.
Protection provided
Copyright allows you to stop unauthorised copying of your copyrighted work. It means that if youve created a work
such as a film, music or book, you have a mechanism to prevent unlawful copying and reproduction of that work.
Copyright also gives you the right to stop people from doing things which make copying or distributing copies of your
work to the public that bit easier. So it gives you the right to stop a shop owner from selling knock-off copies of
your work, which were made without your permission.
While copyright is a right that you have instantly, without having to incur any cost, it also comes with its limitations.
Copyright requires proof of copying of a whole or substantial part of the work.
This often isnt a problem for straightforward black market distribution of media such as books, music and films
because it is crystal clear that 100% of the work has been copied.
It gets harder when a substantial part of the work has been copied. Showing what a substantial part of your work
looks like can be particularly tricky. In addition, having to show that there was actual copying rather than someone
else just producing something similar to you completely independently is often a stumbling block.
Use of the symbol
It is worth noting that you can use the copyright symbol, , along with your name and year of creation to emphasise
that the work is protected by copyright. While this is not completely necessary it can be helpful to ensure that
people cannot copy your work and later argue that they didnt realise it was a protected work.
How long does it last?
Copyright is the longest-lasting type of intellectual property right in the UK and most of Europe. For most types of
work copyright lasts up to 70 years following the death of the creator. So the length your new creation is protected
by copyright is probably something youll never have to worry about, but something that the estates of the rich and
famous musicians and artists care about deeply.

The information contained in this document should not be applied

to any particular set of facts without first seeking professional advice.

17

Someones copied my work

Someone's copied my work, what can I do?
'Help! Someones stolen my work. I don't have any registered intellectual property rights for it. Is there anything I can
do?' Well, there might be.
Whether it is a photo, music, film, code or any other new creative work youve been working on, you may have
copyright in your work, without even realising it. If you do, then you have the right to stop other people from doing
things like copying and distributing your work.
And, even if you dont have copyright, you may have another option: you may still be able to rely on whats referred
to as breach of confidence.
Ive got copyright in my work, but when can I use it?
First, someone must have done one of the activities which as copyright owner it is actually your exclusive right to
do. So maybe someones been making copies of your work without your permission. Or perhaps they have been
issuing copies of your work to the public behind your back.
Second, you have to show that the copy is directly derived from your work. If someone independently writes the
same software code as you, then they are not infringing your rights. Why? Because their work is not directly derived
from yours. But isnt that difficult to prove? Yes, it can be. One useful approach is to leave a mistake or flaw in your
work. If someone has copied the mistake - as well as some of the good bits - then its much easier to say that their
copy is directly derived from yours. This works particularly well for software code. Another useful approach is to
apply invisible watermarks to your work.
Third, you must show that a substantial part of your work has been copied. Usefully this means that the copy doesnt
have to be identical to your work. It means there could be some slight differences between your work and the copy.
Or the form of the work might have changed - from a play to a film, say. Or perhaps only half of the original work has
been copied.
But what does a substantial part actually look like? This is quite a complicated issue and is in many ways
dependent on the type of work. We advise contacting a lawyer if you need advice on this.
Are there any times where I cant use my rights?
Yes. There are a number of times where you cant use your rights. One example is when someone makes a copy of
your work to help their research or private study. Another example is where someone distributes a copy of your
work as part of a review or criticism of your work.

The information contained in this document should not be applied

to any particular set of facts without first seeking professional advice.

18