Top 5 Intellectual Property Mistakes Made by Small Businesses
Intellectual Property (IP) law can be a minefield, particularly for start-ups and SMEs that either don’t have the necessary experience or resources. As a partner to the Business & IP Centre and at our firm of patent and trademark attorneys, London IP, we work with small businesses to sort out IP problems that could have been avoided if the right steps had been taken at the right time. So, to help you avoid any problems with IP we have put together a list of our top five IP mistakes (and how to avoid them).
1. Being scared of IP and ignoring it
There is a myth that IP is an expensive business, and no doubt it can be. However, really you can spend as much as you want to. The UK official fees for registered designs are £60, for trademarks fees start at £170 and for patents £230. Indeed, the official fees to obtain a registered design that covers the whole of the EU are only EUR350!
If you use a patent or trademark attorney to help you then you will need to pay their fees as well, but compared to the cost of many other business expenses such as rents and business rates IP isn’t all that expensive. For example, the cost to get a UK patent granted could be anywhere in the region of £1500 to £4000 spread over five years or so. For a potential twenty year monopoly, and a halving of corporation tax (through the patent box tax scheme), that may be a very worthwhile investment.
Also, it’s worth knowing that IP law is actually quite generous in that it gives you free IP rights that you don’t have to do anything to obtain other than create something that is worthy of being deemed to be protected. The most well-known of these rights is copyright, but there are others.
For example, any designs you create may be automatically protected for three years by EU unregistered design right, and for up to 15 years by UK unregistered design right.
That said, unregistered design rights are not as strong as registered rights as unregistered rights (other than the ‘passing off’ right for unregistered trademarks) are only infringed by copying, whereas registered rights provide an exclusive right meaning that they can be infringed even if the original work has not been copied.
Thus, it must be recommended that you register your IP rights if possible.
2. Being fooled by scam invoices
The publishing of applicant and inventor names and addresses is essential to the transparency of the IP system as the public needs to know who owns a particular IP right.
Unfortunately, all this information can also be used by criminals, so if you do choose to register any IP rights then it is almost certain that you will receive one or more very official-looking letters from rogue companies that try to scam applicants for patents, trademarks and registered designs.
These scams can simply be an invoice that appears to be from a ‘patent office’ or a ‘register’. The amounts of money requested vary, but are sometimes quite significant.
The UK Government seems to be generally powerless to stop most these scams as they are often run from overseas
3. Not registering IP at the right time
There is nothing more disheartening than a client describing what sounds to be a marvellous invention with a view to protecting it with a patent and the client commenting ‘it’s selling really well’.
To obtain valid patent protection in most of the world a patent application must be filed before any non-confidential disclosure of an invention.
So before you file a patent application for your invention you can’t sell it, put on a crowd-funding website, use it in public, etc., etc.
You can of course talk to third parties in confidence without jeopardizing your chances of obtaining valid patent protection. You may wish to use confidentiality agreements with third parties just so it is clear that everyone understood that the discussions were confidential.
As an aside it is worth noting that all correspondence with patent attorneys is inherently confidential both under common law and their code of professional conduct, so using confidentiality agreements with patent attorneys is quite unnecessary.
It’s not just patents though; many countries of the world require registered design applications to be filed before any non-confidential disclosure of a design in order to grant valid protection.
Furthermore the trademark system in many ways operates on a first-to-file basis so trademark applications should be filed as early as possible to safeguard future use of the mark and to minimize the chances of expensive and protracted disputes with owners of later-filed conflicting trademarks.
Many trademark disputes would never have occurred if a relevant trademark had been registered when use of the mark started.
In summary, IP should be considered at the very outset of any new venture to try to make sure that patent, trademark and design applications are filed at the appropriate time.
4. Ignoring infringement issues
It should be appreciated that IP is double-edged sword and along with protecting your own IP rights you need to careful not to infringe existing IP.
As mentioned above, registered IP rights provide the owner with the exclusive right to use the IP in the territories covered. This means that you may believe that what you are doing is original but you could be infringing an existing right.
This is the case even if what you are doing is in fact original as registered IP rights can be broader in scope than the thing that they were created to protect.
For example trademark registrations give the owner the right to stop use of identical and similar marks, and registered designs protect against designs with the same ‘overall impression’.
Often we see clients obsess about protecting ‘their’ idea with a patent, and ignoring the fact that someone else might have thought of it before (perish the thought!).
So before spending money on branding, prototyping and tooling, try to make sure that whatever it is that you are developing isn’t going to infringe.
If it does infringe and you can’t obtain a license, then unless the IP can somehow be worked around you may need to completely reconsider your project.
5. Not understanding IP ownership issues with commissioned works
If you pay someone to build you a house then you own the house once the work is complete.
IP doesn’t work like that unless the ‘builder’ is legally an employee, so problems regularly arise with commissioned works, where the person doing the work is paid money for a project, but is not an employee.
For example, if you commission someone to design a logo or a product, or to write something for your website then (unless there is an agreement in place to the contrary) the person that does the work will own all of the IP rights when the work is done.
Because this is so counterintuitive a lot of disputes about the ownership of intellectual property arise. Indeed, if the law on this were to be changed a lot of IP lawyers would be out of a job!
It is therefore very important to have a clear agreement at the outset of any commissioning process about who will own all the IP once the work is completed and to ensure that, if desired, any IP rights created are legally transferred to the commissioning party.
David Warrilow, Patent & Trademark Attorney London IP, on behalf of the Business & IP Centre