Protecting your IP
Function
The operation of a computer; the action of a pharmaceutical drug; the mechanism of an engine - these are all examples of a product’s function. It is generally well known that the function of a product or process can be protected by a patent, but even where no patent protection has been sought, you may still have options to prevent copying.
Patents
Patents can last for up to twenty years and can be obtained for inventions that are new, that are not obvious, and that are industrially applicable. Many functional aspects of an invention may be suitable for patent protection; for example, a pharmaceutical patent may protect the drug itself, methods of manufacturing the drug, specific dosage forms, and treatment of specific conditions. A consumer product such as a vacuum cleaner may have separate patents on the vacuum mechanism, the storage of accessories, even the mechanism by which the collecting bin is secured.
Some functions are excluded from patentability in the UK. Examples are methods of doing business and methods of medical treatment. However, certain aspects of these may still be patentable in the UK, and the law differs around the world, so patent protection can still often be obtained in other countries - for example the USA.
Patents are obtained via a formal application procedure that involves the drafting of a technically and legally sophisticated specification, searching and, in most cases, the submission of arguments to the patent office. Although this may seem daunting, it is worthwhile, because patent protection for the function of a product or a process will normally allow you to prevent anyone from making a competing product or using a process with the same function. The process or product doesn’t have to be identical to yours and there isn’t even a requirement for copying to have taken place: a well-drafted patent can be a powerful weapon that can support an entire business.
Design and copyright
Unregistered design rights and copyright come into existence automatically when certain conditions are met, whereas design registration is obtained via a formal application process. UK unregistered design right protects shape and configuration and can last for up to ten years from first marketing of the product or fifteen years from the first creation of the design. The European unregistered design right lasts for three years from first publication of the design in the EU. The duration of copyright depends upon the type of work protected. A design registration can last for twenty-five years.
Function itself, such as a method of manufacture or a process, cannot be protected by design right, registered design of copyright. It is the appearance of something which is protectable. However, the design of a product to have a particular function is protectable. For example, the appearance of a novel product will be protected by unregistered design right in the article itself or in engineering drawings. Computer software is protected by copyright. Unregistered design rights and unfair competition laws in the UK and EU may apply to features of a product, even where that feature has a technical function. It is also possible to register a design which is 'not dictated solely by the function which the article has to perform'; this provides scope for protection of features that are only partly dictated by function.
Registration is desirable, since it allows action to be taken even against others who independently create and use substantially the same design; unregistered rights only protect against use resulting from copying.
Know-how
Patent and registered design procedures involve the publication of details the invention or design in return for the monopoly that is granted. Occasionally, however, it is viable just to keep things secret. There are naturally risks associated with this approach, but with proper risk management and well-drafted legal instruments they can be significantly reduced. Some companies have successfully frustrated competitors by keeping know-how secret for far longer than the life of a patent.
publication
Sometimes an idea is not appropriate for patent protection - either because it doesn’t merit the cost or because it is unlikely that the invention will be marketed in its existing form in the foreseeable future. In such a situation, it may be appropriate to take steps to ensure that a competitor cannot get a patent for the idea either. One of the simplest ways of doing this is to publish the idea, because most jurisdictions will not allow a patent to be granted for an invention that is not new - and an invention that is in the public domain is not normally considered to be new.
Human resources
Inventions will only arise if those expected to create them are properly motivated and educated. Opportunities are regularly lost because researchers or engineers do not understand the commercial potential that IP protection can afford or because they do not realise the importance of protecting IP before disclosure. A good education programme, with financial incentives for successful inventors, can yield significant results. It is also important to ensure that appropriate legal structures are in place so that IP created in the workplace is clearly owned by the company and so that dissemination of information is carefully managed and controlled
Suppliers and partners
If you work with another organisation, it is important to ensure that the contractual relationship is clearly defined in your favour. It is not uncommon for ownership of inventions and other IP to be disputed as a consequence of poorly drafted or even non-existent agreements governing ownership. This is particularly common where one party has developed a basic concept and then retained the services of another in order to develop the idea further.
Licensing
Like any other IP right, patents, copyright, and design rights can all be licensed to third parties. Because IP rights can overlap, creative, strategic licensing can greatly enhance the value and effectiveness of existing rights.
Watching
Sometimes the best way to protect your commercial position is to ensure that you know what your competitors are trying to protect. Since the details of patent applications are published, it is possible to set-up regular watches directed at specific competitors or specific commercial fields.