Identifying your Intellectual Property

What are the consequences of not doing this?

Not all business owners are able to readily identify the IP in their business. This means that they do not take appropriate steps to protect or effectively commercialise the IP. It is quite common for businesses to be sold without proper consideration being given to the value of the IP, which is often just handed over as part of the deal.

What kind of professional help is available?

Typically business owners will need some professional assistance to enable them to identify the IP in their business. Such assistance may be provided by lawyers, trade mark or patent attorneys.

Is any government funding available?

It may be possible to obtain funding for that advice through the Government’s IP Audit initiative, which provides a partially funded scheme in relation to IP audits for business. We can refer you to the scheme to check whether you are eligible.

CONFIDENTIAL INFORMATION, TRADE SECRETS AND KNOW-HOW

What are confidential information, trade secrets and know-how?

Confidential information, trade secrets and know-how are all terms used to describe proprietary information or materials used in a business which provide it with a competitive advantage.

The information may be held in documents, within the knowledge and skill of staff or alternatively in materials.

How can they be protected?

It is essential that the know-how or materials remain confidential to the business in order to retain their value.

As ever, in order to protect know-how, it is first necessary to identify it. Ideally this process starts with documenting it. If the know-how is undocumented it will prove very difficult if not impossible to manage it. It will also be much harder to ensure that staff understand what is (and is not) confidential.

COPYRIGHT

Copyright protects your work and stops others from using it without your permission.

How do you obtain protection?

Protection is automatic – it doesn’t need to be registered. There is no register of copyright in the UK.

Copyright arises when you create any of the following:

• original literary, dramatic, musical and artistic work, including illustration and photography
• original non-literary written work, such as software, web content and databases
• sound and music recordings
• film and television recordings
• broadcasts
• the layout of published editions of written, dramatic and musical works

It is common for the creators of such work to mark it with the copyright symbol (©), their name and the year that the work was created. However, if you don’t use the mark your legal rights will not be affected.

What are the benefits of copyright protection?

The existence of copyright prevents third parties from:

• copying your work
• distributing copies of it, whether or not free of charge
• renting or lending copies of your work
• performing, showing or playing your work in public
• making an adaptation of your work
• putting it on the internet

TRADE MARKS

The words “trade mark” and “brand” are often used interchangeably. Both refer to signs which are used by businesses to differentiate their goods from those of other businesses.

What is a trade mark?

A mark may consist of:

• Word i.e. trade names
• Slogans
• Designs
• Letters
• Numerals e.g. 501 jeans
• Internet domain names
• The shape of goods or their packaging
• Sounds
• Colours
• Gestures
• Moving digital images

PATENTS

What kind of industrially applicable processes and devices can they cover?

• Mechanical devices e.g. a mousetrap
• Methods for doing things e.g. methods for dyeing or bleaching fabrics
• Chemical compounds e.g. a new drug
• Mixtures of compounds e.g. an improved hand cream

DESIGN RIGHTS

What are the essential features of a design right?

• A design right protects the appearance of a purely functional product. Examples of items protected by design right are functional articles with no aesthetic appeal such as agricultural tools. Different parts of the same article may be protected. For example, in relation to a hot water bottle, a design right may extend to features of the bottle such as its shape, the shape of the nozzle or a combination of those features, but it would not apply to any printed pattern on the surface of the bottle that was there merely as decoration
• Commonplace designs and features of designs that must fit or match other articles are unprotected
• It is a right to prevent copying. Rights-holders faced with unauthorised copying may sue for infringement. An alleged infringer can challenge the validity of the design right in proceedings
• A design right does not require registration
• It is valid for the lesser of ten years from the first marketing of articles made to the design or 15 years from the creation of the relevant design document, subject to licences of right in the last five years of the term
• A design right owner may seek to exploit their right through the licensing of the right

DATABASE RIGHTS

What are examples of databases?

• Contact management systems
• Knowledge management systems
• Intranets
• Back-office inventory systems
• Purchase order systems
• Websites
• Document management systems.

In the information society, databases are simply modern forms of property which, in common with most assets, can be sold or licensed to third parties. A database is often such a valuable asset that businesses are increasingly looking to exploit them in their own right. In practice, the majority of database owners tend to exploit databases by way of licence rather than sale, to take advantage of their inherent characteristics which allow them to be reproduced infinitely and effortlessly without degradation, and to be accessed by many users at once.

If you need advice on identifying your intellectual property, please contact a member of our corporate and commercial team in confidence here or on 02920 829 100 for a free initial call to see how they can help.