10 Essential Tips for Getting IP Right

Does your business understand and manage its Intellectual Property effectively?  If not, you are not alone.  Many small businesses worry that it is too complex for them to handle themselves but too expensive to employ external experts.

However, by following some simple steps, you can avoid the most common IP pitfalls and protect your business.

  1. Understand and identify what IP your business holds.
    Your technical innovations, distinctive brands and designs, original authored materials, technical know-how and trade secrets are all your Intellectual Property.  Some arise automatically but some must be applied for.
  2. IP is not only for big companies.
    IP rights help ensure that the people who create ideas are rewarded for their efforts.   They help individuals and start-ups to compete with larger companies. They can be extremely valuable and are a crucial component in building your business.
  3. IP rights are key business assets.
    They can generate income through commercialisation and licensing and add value to your SME.  Investors need to know your IP is protected.
  4. Consider licensing your IP.
    If your IP would be useful to other businesses, you may be able to license its use to them. It is a low risk way of exploiting your IP and can provide small businesses with new opportunities for conducting business domestically or abroad.
  5. Make sure you know who owns the IP.
    Under UK law an employer owns the IP created by its employees working “in the course of their employment”. However, contractors and consultants usually own everything they create – even if you have commissioned it – unless they assign ownership to your company with a simple contract.
  6. Confidentiality is vital to start with.
    If you don’t keep your IP confidential you risk someone else discovering and benefiting from your innovation. Also, some forms of IP cannot be obtained if the idea has been made public before you apply to protect it.  Third parties may need to sign non-disclosure agreements at early stages.
  7. Think strategically.
    Align your business plan with your IP development.  Consider an invention capture process so that you identify and protect new IP at the appropriate times.
  8. Think about international protection.
    Most IP rights are territorial and give no protection outside that territory.  You need to balance the costs of broader international protection against the likely risks and benefits of operating in the countries where you make, buy, or sell your products.
  9. Stay vigilant.
    Regular searches of published IP rights will prevent you unknowingly infringing someone else’s IP. Infringement can result in substantial fines or injunctions for your company. Searches can also identify when somebody else is infringing your rights.
  10. Use your IP rights correctly.
    Your IP rights can be challenged and invalidated if you don’t look after them.  g. Trade marks must be used regularly and correctly.   Patented products should be marked appropriately.
James Sanderson - Patent & Trade Mark Attorney

James Sanderson – Senior Partner

“A proactive, well designed IP strategy can help drive the growth of your company and does not have to be expensive.

Much of the work involved can be managed internally but sound professional guidance will give you vital peace of mind.

It is much cheaper to get professional advice and quality IP protection ahead of time rather than having to try and sort out the mess after things have gone wrong.”

 

Grab it! – The Art of Invention Capture

Protect your innovationsOK… unless your invention is self-propelled or attached to something else that is, it’s unlikely that things are going to get that dramatic… but invention capture can still have a major impact on your business.

What is invention capture?

Invention capture is the process by which an organisation uses a structured approach to identify and collate the innovations generated by their staff.

The majority of patented inventions are for small improvements to existing technologies or processes.  With Intellectual Property increasingly being recognised as a vital part of business strategy, identifying and protecting innovations that may give a commercial advantage is essential.

The invention capture process is a collaboration between the inventors, managers and patent practitioners.  Larger organisations may have an in-house patent department who will facilitate the process.

For organisations without in-house patent practitioners, regular meetings with their patent attorneys can help them to identify new innovations which could be patentable.  The patent attorneys can then also work with the organisation’s management team to decide which of these patentable inventions should proceed to patent applications.

What is the process?

  1. Educate

The initial stage of the process will be to educate the inventors and their managers about what they should be aware of and be looking for while doing research and development.

  1. Brainstorm

The patent practitioner will organise and moderate a brainstorm session with the inventors and managers to talk about recent research and development work to identify new improvements and discoveries.  You may find that you identify a small development which may have enormous significance to the business.

  1. Document

The patent practitioner will create draft invention capture documents for each invention based on notes and discussions at the brainstorming session.  The invention capture document will contain details of the invention as well as indications of the level of importance the company.  Once the content of the invention capture document is agreed, the document is signed and dated.

The contents of the invention capture document can then form the basis of a patent application.  A patent application can be prosecuted straight away or the management team may decide to defer an application, or decide that they do not wish to proceed with a patent application.

As always, it is essential to ensure that the invention is not publicly disclosed prior to submitting a patent application as this would prevent the invention being patentable.

  1. Monitor

In addition to identifying the inventions generated by your own business it is advisable to stay informed about the patenting activities of your competitors and others in the fields of technology relevant to your business.  Your patent practitioner can set up alerts with the US Patent Office, WIPO or EUIPO which will flag up new patent applications which may be of interest to you.

 

If you would like to discuss setting up robust invention capture procedures please contact us for more information.

 

Fast-track your patent application with a quick(er) trip through the Green Channel

With a UK patent application typically taking 4 – 5 years to reach grant, the patent process can seem like a very slow beast indeed.

If your invention has green credentials there is an option that may allow you to speed the process along a little.

UK IPO Green Channel

Use the UK IPO Green Channel for faster processing of your patent application

If your invention has some environmental benefit, applicants can make a written submission to the IPO requesting accelerated processing of their application.

The Green Channel option is not only available to the more obvious green inventions, such as solar panels or wind turbines – any invention that can reasonably be claimed to have an environmental benefit may be eligible.

What does it cost?

Nothing! There is no fee for using the Green Channel.

How do I it do it?

Requests must be made in writing by the applicant with details of:

  1. How their application is environmentally-friendly.
  2. Which actions they wish to accelerate:-search, examination, combined search and examination, and/or publication.

If you think your invention might qualify and would like advice on how to write the application letter please contact us at sandco@sandersons.co.uk.

For more information go to https://www.gov.uk/patents-accelerated-processing.

What does the Intellectual Property Act 2014 mean for you?

The importance of IP registrationThe Intellectual Property Act 2014 (the Act) will start to come into force on 1st October 2014. The Act seeks to modernise and simplify Intellectual Property law and introduces a number of changes, particularly to UK design law and practice largely as a result of the 2011 Hargreaves Independent Review of IP & Growth.

We have outlined some of the key facts below:

Intentional copying is now a criminal offence

One of the main changes relating to design law is that intentional copying of a UK or European Community registered design will now be a criminal offence. The “infringer” must be aware or have reasonable grounds to suppose that the design in question is registered and so there is an increased importance to indicate the existence of IP rights on products. The maximum penalty for infringement will be 10 years imprisonment or a fine.

The designer owns the rights for commissioned works unless by prior written agreement

Another important change which seeks to bring UK design law into harmony with European Community design law relates to commissioned designs and ownership. The change ensures that, unless there is an agreement to the contrary in place, the actual designer will be the owner of a design created under commission rather than the commissioner. It is therefore important to make sure that written agreements are in place before a design is commissioned to establish clear ownership.

New Design Opinion Service from IPO

Several further design law changes include a new Design Opinion Service operated by the Intellectual Property Office and the implementation of defences to infringement of a UK unregistered design.

Make sure people know your rights exist

In order to recover damages in patent and design infringements it is important that enough information is provided so that an infringing party cannot claim to be unaware that a patent or registered exists. To ensure that an infringing party is aware of existing rights, the patent or registration numbers and the country where the right exists must also be indicated.

In this regard, the Act now stipulates that it is sufficient to provide a web address on the product allowing the relevant information to be accessed online.

Act paves the way for implementation of Unitary Patent Court Agreement

So far as patent law is concerned the Act will enable the UK to implement to Unitary Patent Court Agreement (UPCA) for the introduction of a unitary patent covering all member states of the European Union. The implementation of a unitary patent in due course is likely to have a significant positive impact on the costs and procedural efficiency of obtaining protection throughout the EU.

Further patent law changes include expansion of the IPO Patent Opinion Service to consider a range of validity issues not solely limited to novelty and inventiveness and the power for the Comptroller of patents to revoke a patent on his own initiative if an Opinion finds a patent to lack novelty or inventiveness.

For more information concerning the IP act 2014 and how this could have an impact on your business please contact us.

 

Author: Caroline Ward

Caroline Ward

 

 

 

Setting your IP GOAL – Leveraging your IP Rights

The importance of developing an IP strategyYour Intellectual Property (IP) rights can provide a number of significant benefits to your company.

The most obvious benefit is that they can prevent your competitors from copying your products or brands, but they can also be used to generate revenue through licensing or selling your IP rights to others.

It is important to have a  complete strategy for your business when it comes to IP.  Your comprehensive IP strategy should consider four main areas:

In our previous three posts we have discussed Generating IP, Obtaining IP rights and Avoiding IP rights; in this final post in the series we discuss ways in which Sanderson & Co. can help you with Leveraging your IP rights.

Passive Approach

What are your competitors doing?

If you are aware of your competitor’s products and brands, then you can be in a better position to assert your rights against those products and brands. Sanderson & Co. can monitor the products and brands of your competitors and can help you to identify potential infringements. We can also provide an assessment of the strength of your IP rights and advise on the likelihood of there being an infringement.

Collaborative Approach

Do you want to compromise?

Sometimes the most appropriate approach is to grant a licence or assignment of your IP rights to a potential infringer.  Sanderson & Co. can assist with negotiating licences or assignments of IP rights, and we can be on hand to review licence and assignment agreements to ensure that they are suitable for your needs from an IP perspective.  We can also work with solicitors on the wider commercial aspects of a deal.

Pro-active Approach

Is further action needed?

Ultimately it may be necessary to assert your IP rights against others. However, this must be done in the right way so as to be effective and so as to avoid you being accused of making groundless threats.

At Sanderson & Co. we can help you to assert your rights in the right way, for example by sending appropriately worded warning letters. We can also assist with providing arguments to present during court proceedings for infringement actions.

The above are just some of the ways in which Sanderson & Co. can help you to achieve your GOAL of a comprehensive IP strategy.

If you would like any advice regarding Leveraging IP or any of the other topics in this series of blogs, then do not hesitate to contact Sanderson & Co. to book a free 30-minute consultation. Please remember to mention this blog when booking your consultation.

Setting your IP GOAL – Obtaining IP rights for your company

The importance of developing an IP strategyIntellectual Property (IP) rights can provide a number of significant benefits to your company.  So how can you make sure that you secure strong IP protection for your business?

It is important to have a complete strategy for your business when it comes to IP.  At  Sanderson & Co. we believe that a comprehensive IP strategy should consider four main areas:

In this four-part series of blogs we will explain how we can help you to achieve your IP GOAL.

In our previous post we discussed Generating IP.  This week we discuss ways in which Sanderson & Co. can help you with Obtaining IP rights.

Geography

Where should I apply for protection?

Registered IP rights, such as Patents, Trade Marks and Designs, are generally only granted for specific countries or regions. For example, a UK patent will only be enforceable in the UK. The costs and requirements for obtaining IP rights in different countries or regions can vary dramatically, but Sanderson & Co. can discuss with you possible filing strategies for obtaining registered IP rights based on your budget, your market and your competitors activities.

Drafting

What should I try to protect?

Registered IP applications can be complicated documents and it is important to get these documents right from the outset.  Sanderson & Co. provide a complete drafting service including providing drawings.  We could also provide you with templates to help reduce your costs for drafting applications. In either case, you will be involved in the drafting process throughout, ensuring that your application is complete and accurate.

Prosecution

I’ve filed an application… What happens next?

Prosecution is the process from filing an application for registered IP rights through to the granting of those rights. This can be a complex process and it is extremely common for objections to be made to the application by the IP Office involved. Sanderson & Co. can help to guide you through this process. Together we can decide on a strategy for responding to any objections raised that still provides you with useful protection for your products or brands. Sanderson & Co. can also be responsible for monitoring any letters sent and deadlines set by the IP Office in question, removing the burden of your doing this yourself.

Purchasing IP Rights

What are we getting?

Another way of obtaining IP rights is to purchase those rights from others. However, IP rights are not always as good as they appear to be and so it is important to assess any IP rights before agreeing to purchase them.  Sanderson & Co. can carry out due diligence assessments of IP rights including assessing the validity and scope of protection provided by the IP rights in question so that you can be more certain that you are getting a good deal.

The above are just some of the ways in which Sanderson & Co. can help you to achieve your GOAL of a comprehensive IP strategy.

If you would like any advice regarding Generating IP or any of the other topics in this series of blogs, then do not hesitate to contact Sanderson & Co. to book a free 30-minute consultation. Please remember to mention this blog when booking your consultation.

In our next piece we will be discussing Avoiding the IP rights of others.

Setting your IP GOAL – How to generate IP rights for your company

The importance of developing an IP strategyDeveloping and maintaining a strategic approach to your business’s IP rights could be the difference between your company thriving or being overtaken by the competition.

Intellectual Property (IP) rights can provide a number of significant benefits to your company.

  1. IP rights can provide protection against a competitor using your products or brands
  2. Registered IP rights can be an asset.  They can help convince financial institutions to invest in a business, enabling more money to be raised for development.
  3. IP rights can be used to generate revenue through licensing or selling your IP rights to others.
  4. Your IP rights could potentially also be used as a bargaining tool if you are accused of infringing another company’s IP rights.
  5. Registered IP can enhance the “cutting-edge” reputation of your business.
  6. You may be able to benefit from a reduced rate of corporation tax on profits generated by products that relate to your patents using the UK Patent Box scheme.

On the other hand, the IP rights of others can cause your company problems if they are not identified and assessed early enough, or if those IP rights are not handled in the right way.

It is therefore important to have a complete strategy for your business when it comes to IP.  At  Sanderson & Co. we believe that a comprehensive IP strategy should consider four main areas:

We can help you develop an IP strategy specific to your business that covers all four of these areas.

In this four-part series of blogs we will explain how we can help you to achieve your IP GOAL.

Generating IP for your business.

1. Innovation Awareness

Do your employees know what IP is and do you encourage your employees to generate IP?

With a basic knowledge of IP and with suitable incentives, employees may be more likely to identify when they have created something that could be worth protecting.  To help your employees to identify when they may have generated useful IP,  Sanderson & Co can run seminars that are tailored specifically to the aims of your company and that set-out the basics of IP.  We can also discuss with you ways to encourage your employees to create IP and tell you about the IP that they have created.

This IP could then be used to protect your products or brand or to generate income through licences and assignments.

2. Innovation Capture

Do you know what IP has been generated by your employees?

Your employees may be thinking of new ideas all the time but those ideas may be overlooked if they are only mentioned to you in passing.  Sanderson & Co can help you keep track of the IP that is developed by your employees by providing you with forms tailored to your business that can be used to record IP. These forms may sound simple but collecting the right information is not always straightforward. These forms are also a useful tool which can be used by you or us when assessing how best to utilise any IP.

3. Innovation Assessment

Do you know what is worth protecting?

Some ideas are worth protecting whereas others are less useful or are not protectable, and it is not always easy to spot when useful IP has been created. IP rights can be complicated, but Sanderson & Co. can help you to identify whether a particular idea can be protected and is worth protecting.  We can also provide advice on which types of protection are suitable for a particular idea.  We can also carry out searches to help you to decide if your idea is sufficiently original.

The above are just some of the ways in which Sanderson & Co. can help you to achieve your GOAL of a comprehensive IP strategy.

If you would like any advice regarding Generating IP or any of the other topics in this series of blogs, then do not hesitate to contact Sanderson & Co. to book a free 30-minute consultation. Please remember to mention this blog when booking your consultation.

Next week we will be discussing Obtaining IP rights…