Posted by Claus Andersen, Partner
On 1 September 2016 Withy King LLP merged with Royds LLP. The trading name for the merged firm is Royds Withy King. All content produced prior to this date will remain in the name of the firms pre-merger.
From Idea to Business – IP
We have previously set out what businesses should think about, when a good idea is created and then turned into a business.
As we outlined one of the main assets in a business are its Intellectual Property Rights (IP). This blog summarises the main features of the principal Intellectual Property Rights.
IP is a term used to describe a number of legal rights that attach to certain types of information and ideas and to their particular forms of expression. It is important to be aware of the various IP rights to make sure that they protect what has been created and that they do not infringe the IP rights of other people and businesses.
There are basically two types of IP rights:
- Registered rights. These are granted on application to an official body such as the UK Intellectual Property Office. Such rights are normally referred to as “monopoly rights”, which means that after the rights have been registered, the owner can prevent others from using the right without permission. However, even if granted, their validity can be challenged. The rights include patents, trade marks and registered designs.
- Unregistered rights. These rights arise automatically without registration and give protection against copying or using the right without permission. Such rights include copyright, unregistered design rights, rights in unregistered trade marks and confidential information.
- Give inventors a monopoly over their inventions and protect new and inventive technical features of products and processes. Such rights normally last for a limited period which is 20 years in most countries.
- An invention protected by a patent must be 1) new, 2) involve an inventive step, 3) be capable of industrial application and 4) not specifically excluded from protection.
- Some items are excluded from patent protection. This includes computer programs, methods of doing business and methods of medical treatment.
- Obtaining patent protection requires that an application for a patent is made to the local Patent Authorities.
- It is worth noting that patents are expensive to obtain and maintain. In addition, the patent application process involves public disclosure of technology, which could enable a competitor to develop a competing product without infringing the patent.
- A trade mark is a sign or symbol used by a trader to distinguish its products or services from those of other traders.
- A trade mark can be a brand name (such as NIKE for sportswear), a house mark (SAMSUNG for electronic goods), a company logo, a trading style or packaging.
- A trade mark can also be the shapes of products or their packaging (for example the Coca Cola bottle), and colours associated with a trading style (such as the BP green petrol stations), as well as sounds, smells and slogans. However, such marks are more difficult to register.
- Owners of Trade marks can make an application for the marks to be protected. Application can be made for a UK or a Community trade mark (CTM). A UK-registered trade mark can only be enforced in the UK, whereas a CTM is enforceable throughout the EU. Both registrations last for ten years, and must be renewed for further ten-year periods in order for the marks to stay protected.
- In order to be registered as a trade mark, a trade mark must be:
- capable of being represented graphically;
- capable of distinguishing goods or services; and
- of a type not excluded by statute.
- Copyright protects various types of works. These include original artistic, musical, dramatic and literary works, including computer programs, sound recordings, films, broadcasts and typographical arrangements of published works.
- Copyright arises automatically on the creation of the work and does not require registration with a public authority.
- Copyright lasts for 70 years after the death of the author for artistic, musical, dramatic and literary works. However, sound recordings and broadcasts are protected for 50 years from the date of publication.
- Copyright protects the expression of an idea, but not the idea itself.
- Copyright prevents unauthorised use of the work, such as the making of copies or placing the work on the internet.
Design rights protect the appearance of the whole or part of a product. Such rights can be registered or unregistered:
- Registered designs. Design owners can apply for a UK registered design or a Community Registered Design. However, a registered design must be:
- of individual character; and
- not excluded by statute.
Design protection lasts a maximum of 25 years. However, the protection must be renewed every five years. Design registration is particularly relevant for industries such as fashion where design often is the main selling point of the product.
- Unregistered designs. An unregistered design gives a right against copying. Protection is given in both the UK and EU. However, the EU protection is broader but lasts only for three years. Under the UK right, protection lasts for ten years from first marketing.
Protection of rights in confidential information
- It is possible to protect information which is sensitive to the business through the rules of confidential information.
- Confidential information includes know-how and trade secrets which may not be IP rights as such but which are still very important to a business.
- In order for a business to protect confidential information, the information must satisfy three tests:
- it must be confidential in nature;
- it must have been imparted in circumstances in which an obligation of confidence arises; and
- its unauthorised use would be to the detriment of the person imparting it.
If you have any comments on this blog please contact Claus Andersen, Partner for Corporate and Commercial on 020 7583 2222 or firstname.lastname@example.org