29 May 2019
An introduction to intellectual property (IP)
The Intellectual Property Office (IPO) is the official UK government body responsible for intellectual property (IP) rights including patents, designs, trade marks and copyright. The IPO operates and maintains a clear and accessible intellectual property system in the UK, which encourages innovation and helps the economy and society to benefit from knowledge and ideas, as well as helping people get the right type of protection for their creation or invention. Here the IPO outlines the basics of IP and explains how you can discover your IP rights.
Intellectual property (IP) rights grant you the ability to take legal action if others attempt to make, use, import, copy or sell your creation.
The four main types of IP rights are:
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Copyright
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Designs
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Patents
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Trade marks
Protecting creativity
Work in the creative sector? You’ve probably heard a lot about copyright but may not fully understand how it protects your work.
Copyright is a property right which is intended to reward the making of, and investment in, creative works. Copyright protects literary, dramatic, musical and artistic works, sound recordings, films, broadcasts and published editions.
In the UK, copyright comes into being automatically when a qualifying work is created; there is no formal registration. The term of protection for most copyright material is the life of the creator, plus 70 years from the date of their death. Check the website for more information on how long copyright lasts.
Copyright grants the creator the right to authorise or prohibit copying, distribution to the public, rental/lending, public performance, adaptation, and communication to the public.
Visit our website to find out more about the rights granted by copyright.
A flair for design
Crafter or designer?
Design refers to the appearance or ‘look’ of products. The look of your design includes the appearance, physical shape, configuration and decoration. This can be 2D patterns or 3D designs.
Registering your design allows you to gain a marketing edge by preventing others from using it without your permission.
Automatic design rights do exist in the UK (UK Unregistered Design Right) and in Europe (Unregistered Community Designs).
Unregistered UK design right automatically protects your work for 10 years from when it was sold, or 15 years from when it was created, whichever is earliest. However, it only protects the shape and configuration of a design and does not include 2-dimensional designs like textiles and wallpaper.
Unregistered designs offer limited protection and can be difficult to enforce. Where disputes arise, you may have to prove the existence of your rights. Unlike registered designs, it will be your responsibility to prove intentional copying.
The IPO has an Instagram account with lots of useful information to help creatives know their rights, protect and champion their products. Follow us @ipforbusiness and use the hashtag #IP4biz.
The ‘lightbulb’ moment
Think you may have invented a market sell-out or something that could even change the world? Or perhaps something simple that just makes everyday life that little bit easier?
A patent protects new inventions and lets you take legal action against anyone who makes, uses, sells or imports your invention without your permission. You can only apply for a patent if you have created something that is inventive, new and useful.
A patent specification is a legal document and requires specialist skills to draft properly. Your chances of obtaining a patent are significantly greater if you use an attorney. Visit the website to find out why you should use an IP attorney.
The most common mistake made by inventors is revealing their invention before applying for a patent. It is your choice on whether you decide to take your product straight to market or apply for patent protection. However, if you have made your invention public, you could lose the possibility of obtaining a granted patent.
Sometimes, you may need help from a third party to create or distribute your products. Non-disclosure agreements (NDAs) are created when a business owner is speaking to potential partners such as investors, manufacturers and stockists.
NDAs are important when applying for patent protection. If a third party is helping you to create your product, make sure they sign an NDA, or it could affect your chances of gaining a patent. To learn more read our guidance on non-disclosure agreements .
Building a brand
Creating a brand that encompasses what you and your business offers is an important aspect of your business plan.
You may want something distinctive and unique that sets you apart in a crowded market. A trade mark protects your company name, logo, or a phrase. It can even protect a shape, colour, sound, aspect of packaging or any combination of these.
The registration of your company name with Companies House doesn’t automatically protect it. You have the legal right to the name, but it doesn’t stop other businesses from trading under very similar names.
The most effective trade marks are those ‘distinctive’ to the goods and services they protect. This allows consumers to identify your goods or service from your competitors. So, if your company name describes the products you sell or the services you offer, there’s a good chance it won’t be distinctive enough to be a registered trade mark!
It is recommended you search our trade marks database before applying to see if a similar trade mark to your brand already exists.
Sharing out the IP
A license grants a third-party permission to do something that would be an infringement of your IP rights without the license.
IP can be “licensed-out” or “licensed-in”. You can “license-out” to another company in return for a fee. You can “license-in” if you want to use another company’s IP to develop your own business and products.
Free online learning
The Intellectual Property Office’s has a range of online learning tools to help you better understand your IP rights.
Our IP Health Check free online tool can help you identify what IP you own. Answer a series of questions and receive a tailored confidential report, based on what you have told us.
IP Equip tool is a free online CPD-accredited training tool. It takes your through four short modules and uses case studies to show why intellectual property is important.
More of a visual learner? Our IP Basics videos provide short, simple explanations of the various IP rights. They also cover licensing and franchising, how to avoid infringing IP and what to do if your business is a victim of IP crime.
Don’t forget to sign up to our e-alerts to receive IP advice, events and updates direct to your inbox.
23 April 2019
IP Corner: Reach for Gold - Intellectual Property and sports
Patent application and grants are published every week and it is always interesting to see what is coming through the system and potentially on to the market.
This years’ World Sports Day is on 6 April and World Intellectual Property Day is on 26 April, so I thought I’d take a look and see how many of the March 2019 patent publications were related to sport. There were 15 relevant patents in total including some interesting ones…
US2019083870A is a published USA application for an ‘In goal ball return or collection device” which details a flat device for soccer (football to you and me!) practice. Rather than covering the whole goal mouth this device is apparently intended to cover the lower part of the goal and to lie at an angle thereby allowing the ball to potentially bounce back to the player or to be easily retrieved. This is intended to save valuable practise time usually spent in retrieving or chasing loose balls.
EP3132778A1 is a European patent application that designates GB for patent protection. The inventors are Spanish and the invention claimed is for a “Wheelchair accessory for playing soccer”. The idea basically consists of a pair of manually-operated levers, one for each hand, which are attached to the wheelchair and have devices at the bottom for retrieving and shooting a conventional ball.
Amongst the 15 patent specifications published there are also a couple of GB applications GB2566646A, “Method and apparatus for playing a sports game”. The proposed game, consisting of at least two wickets and an inflatable ball, sounds like a derivative of cricket! Then there is GB2566799A “Sports Aid” which is basically an enclosure for sports practice.
It’s going to be a case of wait and see to find out if any of these patents do get granted.
Patenting innovations relating to sports is not new, the earliest granted patent I could find relating to football boots is GB11854 of 1887. This was granted to a Harry Howe a boot manufacturers’ warehouseman from Leicester, and it was titled “Improvements in and appertaining to boots or shoes used in playing football and the like”. His idea was to add a roughened, corrugated or grooved surface to the toe of the boot to help ensure that when the ball is booted a ‘sure kick is obtained’.
However, football isn’t the only sport that I found patent documentation for, there is a great patent from 1894 for a new innovation in clay pigeon shooting. A certain Hugo Fuchs of Vienna, Austria was granted a British patent in 1894 for “An improved pigeon or object to be used as a moving target in shooting sports and practice”. His idea was that the ‘pigeon’ should be made out of paper or cardboard rather than the traditional glass or clay. He maintained that by filling his discs with coloured powder or soot the ‘hit’ would be as visible as a shattering clay or glass pigeon would be and his innovation would be much safer. Personally, I’d rather be hit by paper or even soot than a lump or glass or clay!
Patent searching, if you have an innovation in mind, is a must because if an idea has been patented at anytime, anywhere in the world it cannot be re-patented. So if your new idea happens to be steel toe-capped football boots, sorry that’s already been done!
If you do have an invention in mind it would be worth visiting your local Business & IP Centre, there are 13 in total around the UK details of which can be found here.
You can also download copies of our free intellectual property guides including A brief guide to patents and patent searching or if you wish you can attend one of our free workshops or webinars on intellectual property and intellectual property searching. Just take a look at our workshops and events page.
Maria Lampert, Intellectual Property Expert at the Business & IP Centre London
Maria has worked in the field of intellectual property since she joined the British Library in January 1993. She is currently the British Library Business & IP Centre’s Intellectual Property Expert, where she delivers 1-2-1 business and IP advice clinics, as well as intellectual property workshops and webinars on regular basis.
19 October 2018
IP Corner: Happy 20th Anniversary Espacenet
When I first began working at the British Library patent searching was very much a manual process which involved using a Catchword Index to find your patent classification, then looking that classification up in the accompanying Classification index to get the relevant subclass and finally, looking the classification and sub-classification up on microfiche to find any relevant patents. It was a fairly labour intensive and time consuming process, but it worked.
Then in 1998 the European Patent Office launched their free search database called Espacenet. Espacenet revolutionised patent searching for the ordinary ‘man on the street’. If they had access to a computer, either at home or more often through their local library, they were able to carry out patent searching using keywords or names or numbers or dates or all of them together.
Espacenet was however kind of a two edged sword, since without any experience of patent searching it was (and still is) possible to convince oneself that your invention was new and innovative because you did not find it when in fact you were simply using incorrect keywords.
The Business & IP Centre's Introduction to patent searching workshop takes delegates through the Espacenet database explaining the searching process and providing hints and tips on how to get the best from the database. Personally, I’ve lost count of the number of inventors I have helped learn how to use Espacenet effectively, preventing some from wasting time and money pursuing an idea that already exists and helping others start on the road to protecting and producing their new product.
If you can’t make one of our workshops you can download one of our IP guides here, which are free to access.
In the last twenty years Espacenet has grown from a basic search database to a database that can be used to search worldwide through 100 million documents, both published patent application and granted patents, from over 90 patent granting authorities. Searchers can now check legal status of patents, find out if patents are still in force using the European Patent Register and gain immediate access to the application files or ‘file wrappers’ from the world's largest patent offices using the Global Dossier. Full copies of patent specifications can be downloaded onto a hard-drive, or printed out if preferred, for later consultation by the searcher.
Espacenet is one of my favourite search databases mainly because it costs nothing to use but also because it empowers new inventors by helping them gain an understanding of patents, patent classifications and patent searching so that they can have informed conversations and make better decisions regarding their proposed inventions.
Happy 20th Anniversary Espacenet. Here’s to many more!
Maria Lampert, Intellectual Property Expert at the Business & IP Centre London
Maria has worked in the field of intellectual property since she joined the British Library in January 1993. She is currently the British Library Business & IP Centre’s Intellectual Property Expert, where she delivers 1-2-1 business and IP advice clinics, as well as intellectual property workshops and webinars on regular basis.
To see all upcoming workshops, webinars and events, visit our website.
01 August 2018
IP Corner: Patent databases, which one is right for you?
Here at the British Library's Business & IP Centre we meet many inventors who are starting out on their journey through to patenting their inventions. The majority understand that their first action should be to search to see if their proposed invention is truly ‘new and innovative’ as it must be in order to obtain patent protection. What inventors will be searching for is known as ‘Prior art’ which is basically anything that shows the proposed invention is already known and is therefore not new. Prior art doesn’t have to be a patent, it could be a newspaper advertisement, a magazine or journal article or even a product on sale in another country.
Most inventors will have heard of, and some may even have used, the Espacenet database. Espacenet is a patent search database containing data on over 100 million patent documents worldwide. Searching the database is fairly intuitive, but if needed there is a very informative Help section to aid the novice searcher. Espacenet is a great starting point for any would be inventor and is freely available via https://worldwide.espacenet.com.
What is generally less known by inventors is that here at the Business & IP Centre we subscribe to another search database that our registered readers can use for free. This database is the Derwent Innovations Index or DII as it is also known.
DII is a search database that provides access to more than 30 million inventions as detailed in 65+ million patent documents. Once a search has been run, clicking through from the results list, users are able to view details of the relevant patent including any patents and/or articles cited as ‘Prior art’ against it. For most patents there are also links through to Espacenet to view the full published specification.
Espacenet also does this, so what are the advantages of visiting the Business & IP Centre and using DII?
Well, it should be remembered that patents are technical documents which are written in such a way as to meet all the relevant criteria for obtaining a patent but, by providing only the most important information, give nothing away.
With Espacenet you are searching the patents as published; the title or abstract, bibliographic data, description and claims all exactly as written in the original documents. This can make keyword searching problematic, not everyone will necessarily use the same keywords to describe the same subject, and often searchers will need to resort to classification searching to ensure they are searching in the correct technical area. Add to this the fact that patent titles can be slightly ambiguous and patent searching can become slightly more difficult.
With the Derwent Innovations Index (DII) what happens is that when a patent is published a member of the DII team who is experienced in the particular technical area covered by the patent takes the patent specification and does the following:
- Writes a more concise title that describes the invention and its claimed novelty
- Then writes an abstract giving a 250–500 word description in English of the claimed novelty of the invention
- Finally, DII also add their own ‘Class codes’ and ‘Manual codes’ to the records: Derwent Class Codes allow the searcher to quickly retrieve a particular category of inventions whilst Derwent Manual Codes indicate the novel technical aspects of the invention.
To give you a quick example of this, the title of patent WO2018064763 on Espacenet is ‘Compactable bicycle’ as shown below:
Whereas on DII the title is written as:
The Espacenet bibliography and abstract looks like this:
Whilst the DII bibliography and abstract looks like this:
Note: DII highlights, Novelty, Use and Advantage within the abstract.
Another advantage DII has is that using the Advanced search option searchers have the ability to ‘build’ a search by searching keywords, classifications, inventor/applicant details etc. and then adding search sets together as desired.
Searchers then click on the live link in the Results box to view the results list from where they can select relevant patent records to save to a Marked list. Searchers can then email the results from the Marked list to themselves to view later if they wish.
With the Espacenet database searchers can download and print out copies of the front pages of relevant specifications (known as covers) or they can select titles from their search results list to export to either CVS or XLS. Copies of full patent specification can also be downloaded and printed out if desired.
Both Espacenet and DII are extremely useful for searchers. Each database has their own strengths and weaknesses, but if you visit the Business & IP Centre we will be happy to discuss your needs and show you how to get the best from both databases.
Maria Lampert, Intellectual Property Expert at the Business & IP Centre London
Maria has worked in the field of intellectual property since she joined the British Library in January 1993. She is currently the British Library Business & IP Centre’s Intellectual Property Expert, where she delivers 1-2-1 business and IP advice clinics, as well as intellectual property workshops and webinars on regular basis.
26 April 2018
IP Corner: Happy World Intellectual Property Day!
April 26th is World Intellectual Property Day. “What?” I can hear you asking, why should there be a special day to celebrate Intellectual Property? Well, stop for a minute and take a look around you and I can guarantee that, whether you realise it or not, you will be surrounded by Intellectual Property.
Like the book you are reading (e-book or otherwise!), the iPod or MP3 player you are using to listen to music, the music itself, even the clothes you are wearing, every product or service we use in our day to day lives is the result of innovation. These innovations may be big improvements in function, or small changes in design that alter the way a product looks, either way these improvements will generally be protected by Intellectual Property (IP).
Intellectual Property (IP) is like any other piece of property and the owner of the Intellectual Property rights controls what, if anything, happens to those rights, including who can benefit from the work or from the investment the rights holder has made into the creation of the product or service.
So how does this affect you and your business?
Whatever business you are engaged in it is very likely that you are using and probably even creating a large amount of IP and, if you want to get the best possible commercial results from its ownership, you need to think about the steps you need to take to protect, manage and indeed enforce your rights.
- Protect – register your IP rights where possible.
- Manage – keep a record of all the IP you have and any IP that you license from third parties. Ensure renewal fees are paid and licenses are up-to-date.
- Enforce – as the rights holder it is your responsibility to keep an eye out for any IP infringement and to take action to stop it. If you do not intend to enforce your IP rights then perhaps you need to reconsider whether or not you should register your rights.
So let’s look at each form of IP in turn;
The first piece of registrable IP most businesses will have is a trade mark. Trade marks are used to indicate the origin of goods or services. They may be symbols, words, colours or even a combination of these, the choice is yours, but whatever the makeup of your trade mark it needs to be distinct enough to allow consumers to identify your products or services from those of your competitors.
As well as standard trade marks there are several other types of mark such as Collective marks, used to distinguish the goods and/or services of members of a particular association, or Certification marks, given for compliance with defined standards to anyone who is able to certify that their products meet certain standards e.g. ISO/TC 181 Safety of toys.
Trade marking is not to be approached lightly as your trade mark is likely to be one of your most valuable business assets.
Next, Copyright. Most of us when we think of copyright we think of books, music, films etc. but copyright will also exist in your website, the flyers or brochures you may produce for your business, the menus for your restaurant or café. All of these, provided they are your own original work or you have a license to use them if they were created by a third party, will be protectable.
Mark all of your original copyrighted material with the copyright symbol ©, the name of the rights holder and the year of creation, e.g. © British Library 2019.
If you are a designer then registered designs are probably something you should consider as registered designs protect what it is that makes an item attractive or appealing to its intended market. As the holder of the registered rights you will be assured an exclusive right to the design and thereby protection against unauthorised copying of the design by third parties.
Finally, patents (this is the biggie!)
A patent is an exclusive right granted for an invention. It provides patent rights holders with protection for their invention for a limited period, usually 20 years, subject to the payment of annual renewal fees. Having a patent for your invention means that your invention cannot be made commercially, or distributed or sold without your written permission. You get to decide who may or may not use the invention for the duration the period of protection. However, once the patent expires, after 20 years or if you stop paying the renewal fees, the invention will no longer be protected and will enter the public domain. Basically, it becomes available for anyone to use as they wish.
Probably lesser known, but just as important IP rights are Know How and Trade Secrets. Know How is the practical knowledge of how to do something, to get something done. This sort of knowledge will not necessarily be included in a patent for example, but will be necessary to finish the product, project or job. For examples of Trade Secrets; think of the Coca Cola recipe or the recipe for Irn Bru. These rights are not registrable and need to be protected using contracts and/or confidentiality agreements.
This post just touches on the subject of IP really as a way of highlighting World IP Day and anyone thinking of using IP or making any financially crucial or business crucial decisions based on IP should speak to an IP attorney. The website of the Chartered Institute of Patent Attorneys can help you locate an attorney in you local area via their website. Most IP attorneys offer a free 30 minute one-to-one advice session.
Alternatively, you can visit your local Business & IP Centre for free, impartial, non-legal advice. Click here to see the full list of Centres around the country.
A final comment; innovation through the years has shaped the world we live in, from the simple hand cast nail invented more than 2,000 years ago to the invention of the wheel and the wheel and axle concept, from Gutenberg’s printing press to the telephone, the electric lamp to penicillin, all of these innovations have made our lives easier, better and more interesting and, hopefully, the inventors and innovators of our generation will continue the trend.
Maria Lampert, Intellectual Property Expert
05 July 2017
How Intellectual Property helped Julie Deane start a £10 million business from her kitchen table
So many small businesses lack IP awareness and understanding, but IP is something of an unsung hero and can prove critical in making or breaking a business.
The Business & IP Centre team are dedicated to helping entrepreneurs and SMEs understand what IP is and why it’s important, what IP they might have created and how they might increase their business success and profitability by protecting and exploiting that IP in the future. Over the years the team have supported thousands of small businesses unlock the value of their IP, and much of the support we provide in the Centre uses case studies and real-life stories to demonstrate how having a handle on your IP gives you a huge commercial advantage.
One such example is Julie Deane OBE, founder of The Cambridge Satchel Company, who has taken her business from the kitchen table and a £600 start-up budget to a global success story with a turnover of £10 million. Along the way Julie has overcome numerous business challenges including managing designers, manufacturers and overseas distributors, establishing web and physical retail sites around the globe and dealing with thousands of imitator brands. Here, in a free 30 minute podcast with the Intellectual Property Office, Julie lays the truth bare on how she’s developed strategies to tackle copycat websites, build the brand, keep putting the quality of the product at the heart of the business and “hang on to the passion that made you start the business in the first place.”
Here are our 3 ‘top tips’ for what you need to know when it comes to your Intellectual Property:
- Think about trade marks - Is your business name protectable in the countries that you wish to trade? Is it already being used or does the word have another meaning in a different country. Future investors will want to know that you have the rights to trade in the countries that they wish to trade in, and you need to consider this right from the start to give your business the best chance of success.
- If you’re creating a ‘thing’ - Do your research before filing for a patent; is there a market for your product? It is expensive and takes a long time to protect your idea so make sure you do your market research and can be confident that somebody will buy it at the end of the day. If you have paid for your product to be patented and want somebody to manufacture it for you, you also need to ensure you have agreements in place limiting their rights to your initial idea or design.
- Founder’s agreement - It is easy to set out a document with your business partner right at the start when setting up your business agreeing things like % of ownership and what should happen in the case of a dispute, or if one of you wish to sell then business and the other one doesn’t. Once a dispute has started it is much harder and messier so you need to make sure all parties are clear on this from day one.
You can find further help, support and information on IP in any of the eleven Business & IP Centres up and down the country, including the British Library in King’s Cross. Speak to any one of our specialist staff face-to-face, over the phone or by email. You can also log on to our free of charge online workshops to grow your knowledge about IP, and increase your chances of business success.
Julie Deane is Entrepreneur in Residence at the British Library and a huge champion for ambitious business owners. She recently gave advice and practical tips on Intellectual Property at the Library’s Scale-up Summit alongside Will Butler-Adams, CEO of Brompton Bicycles. Cambridge Satchel and Brompton recently launched a range of colour-matching bags and bikes where the satchel fitted perfectly to the handlebars. This ‘made-in-heaven’ brand match caught the attention of the press and delivered extremely high sales. Will and Julie's opening keynote presentation on ‘Getting your business in the media’ was a great success too.
04 November 2015
Spotlight on Nimble Babies founder Von Sy
Von Sy had always dreamed of being an entrepreneur and eventually decided to set up his own business using his skills as a chemist to help parents keep their babies bottles from smelling of stale milk. When starting up Von used the Business & IP Centre to help with market research which was crucial to getting his business off the ground. We asked him some questions.
Where did the idea for your business come from?
One day my sister asked me, knowing that I'm a chemist, how she could get rid of the milk odour and film building up in her baby's bottles. She said that a regular washing-up liquid could do the job but she had to use loads of it and it made her bottles smell of washing-up liquid.
I thought that perhaps this was a problem that only my sister complained about, so I did a quick search online and, to my surprise, I saw a lot of parent blogs and forums that talk about similar problems in baby bottle washing and there was not a single brand out there addressing them.
Thus, I saw an opportunity to come up with a business that could help parents free their baby bottles from smelly milk residues.
What is so unique about your product?
Nimble Babies Milk Buster is a new washing-up spray that is specially made to remove smelly milk residues from baby bottles.
Unlike regular washing-up liquids that are made for heavy food grease, Nimble's patent-pending formula detaches milk fat and proteins from plastic surfaces.
It also comes in a spray format that mums love because it allows them to clean teats more easily.
Have you always wanted to run your own business?
Most definitely! As a student back in the Philippines, I used to carry extra stationery items in my schoolbag which I sold to my classmates in case some of them forgot to bring their notebooks, paper or pens. In uni, I tutored Maths and Science to primary and secondary school students so that I would earn extra money on top of the money my parents gave me. I bought and sold things too like CDs and college rings. So since an early age I have been quite entrepreneurial, and this did not fade even when I was working for a huge consumer goods multinational for 10 years.
What planning did you do before starting up?
It took years before I managed to have the guts to leave my job. But whilst I was working as an R&D Manager, I would take evening courses on marketing, finance and economics to give me a basic understanding of other business functions.
I'd also read business books and watched shows like Dragon's Den to keep me inspired and aware. I also saved up money because I knew one day the time would come when I would be able to start my own business.
When I finally took the leap, I did a lot of market research work at the Business & IP Centre in the British Library and conducted surveys in cafes and shops (John Lewis in Oxford Street was my favourite turf) by randomly and cheekily asking mums for short interviews, as well as attending a number of workshops and networking events.
What challenges or obstacles have you had to overcome?
As I lived in the North (Liverpool and Leeds) for a total of seven years prior to moving to London, I did not know very many people who understood what I was going through as a new entrepreneur. I need to meet others who could help me figure out where to start and guide me in areas I wasn’t experienced in: for example, graphic design, branding and accounting. And this is where going to networking events and doing my research at the Business & IP Centre helped a lot, as I got the chance to meet like-minded people who were at the same or more advanced stage as I was.
If you could have given yourself one piece of advice when you started what would that be?
I would say to myself not to wait for everything to be perfect and complete before doing anything, because what matters most when you have your own business is that you're able to test your ideas fast enough to know if they will succeed or fail.
We are now taking applications for the next Innovating for Growth programme find out how you can apply today.
20 July 2015
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
Beware.
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
21 April 2015
Copying – right or wrong?
Across the Business & IP Centre National Network, we believe it’s important for everyone to have a think about copying. We want individuals and businesses to know about their rights to use content and creations that are either in the public domain or under an open license - and to learn more about copyright generally. As we say in our intellectual property workshops make sure you “don’t infringe!”
Copy-right or copy-wrong?
We know that to copy something is wrong; it’s been ingrained in us since we were children - and as we grew up copying took the name of ‘plagiarism’. Whether your interests are listening to music, appreciating artwork, watching films or TV series, we know copying a song, a film or a TV show without permission is wrong. Every time we watch a DVD we are told that copying the DVD is piracy. Websites are often closed down because of infringement of copyright – is the right given to creators or owners of the intellectual property to control what is done with their works and YouTube videos are removed. Robin Thicke and Pharrell Williams were more talked about for being found guilty by a US court of copying the late Marvin Gaye’s songs than for their musical talent (the court did not make any comments on the latter).
And yet, I copy. Yes. You do too. We all copy. As you can imagine, I would never admit to doing anything illegal and I am certainly not accusing you, of committing any crimes either! That must mean there are cases where copying is right, legal and even encouraged. For example, you buy a CD, then copy it onto your computer, then copy all the tracks again on your MP3 player so you can listen to the album on the go. That is perfectly legal - and it has been very clearly so in the UK since the last changes to copyright law came into force in November 2014. So let’s see what the law does allow.
When it is legal to copy
- Copyright does not last forever - even though new laws can change its duration, copyright has an end – in most cases, count 70 years after the end of the year in which the work’s creator died. What happens to the work after that? It enters the public domain – it belongs to everyone, and anyone can use it, without asking permission.
- Copyright exceptions - the law recognises that there are cases when we do not need to ask for permission to re-use a work. For example, when we make a copy for private use (like with our CD), or we copy and publish an extract for review purposes, or when creating a parody of a famous picture by copying it and adding something humorous to it.
- Open licenses - sometimes the copyright owner will publish their work and tell you it is fine for you to copy it without asking for their permission. The most common way to do this is to use Creative Commons licenses – like the ones on the pictures illustrating this post. CC BY-SA on the image below means “this work is licensed under a Creative Commons license; you can use it without asking for permission as long as you credit the author and share it under the same license”.
Copying, business and innovation
But let’s get back to business. How does all this apply to you as an entrepreneur? When you create something, you are proud of its originality and inventiveness (and rightly so); you would be horrified if someone copied you. In business, entrepreneurs legitimately want to stop others from copying them: if a competitor copies your unique selling point, then how are you going to differentiate yourself in the market? In the Business & IP Centre Network and the other PATLIB centres you can discuss with an adviser how best to protect your creations against copying. We will tell you all about copyright, but also designs, patents and trademarks.
Some large companies, like Dyson, have an impressive intellectual property strategy to protect their ideas. However, other companies like the one behind the Sriracha sauce has a more lenient strategy and encourages others to use their product name in order to generate free advertising and from a Forbes article, Elon Musk recently announced that other companies are now welcome to copy and use Tesla’s patented technology. Each company needs to think about what is the right approach for their business.
There are also industries that thrive on a type of copying – one that is called “inspiration”. Think about fashion, music, art, etc. It poses some pertinent questions for business owners; how would you react to another business copying you? Would your reaction be different if you were copied by individuals? Do you think people who copy and share your content on social networks without your permission are right, or wrong? This World Intellectual Property Day take the opportunity to get informed and discuss the role of intellectual property to encourage and control innovation and enterprise in your business.
Aude Charillon on behalf of the Business & IP Centre Newcastle
Aude is Library and Information Officer at the Business & IP Centre Newcastle and leads the Commons are Forever project, which aims to empower participants about our rights to use creative works that are free of copyright, and to in turn share what we create with others.
10 April 2015
Fight Intellectual Property Fraud
At the British Library Business & IP Centre we help small business owners, inventors and entrepreneurs understand their intellectual property and how to protect it. An idea, whether it’s an invention, a brand name or a song can be protected with a patent, trade mark, copyright or registered design.
However, there are now many intellectual property frauds or scams operating which could jeopardise your business. We have heard our share of horror stories here in the Business & IP Centre. Just recently the Intellectual Property Office issued a warning about misleading invoices which ask people to pay for services from unofficial sources. If you don’t want to be caught out and fall into this trap you need to know about the four common types of fraud that could potentially harm your business.
The most familiar types of intellectual property fraud you may come across include:
1. Database invoices
These claim you need to pay for your patent, trade mark, or design in order to be included on a database or register. However, once you’ve registered your patent or registered design with the Intellectual Property Office, there is no need for further payment as it’s included in the registration fee.
2. Fake renewal invoices
You may receive what appears to be an alert that your intellectual property is about to expire, demanding money for it to be renewed. Some unscrupulous companies send invoices earlier than the official intellectual property offices do, and while they will usually pass on the actual renewal fee, they will also charge you a grossly inflated handling fee. If your patent or trade mark attorney is administering renewals for you, just ignore the invoices. If you are handling renewals yourself and you receive an apparent renewal demand, go to the intellectual property office website and check when the official renewal date is and how to pay it.
3. Extending your intellectual property to cover other countries
This can be expensive and you should really consider whether you want to do this from the start. Beware of anyone contacting you exaggerating the ease and necessity of protecting your intellectual property in another country you are not trading in as you only have to extend your intellectual property to cover other countries if you intend to do business there.
4. “Invention promotion” scams
These are organisations that advertise for invention ideas and offer to develop them into a commercialised product for you, in exchange for a fee. There are reputable companies that can help you with prototyping, patenting and marketing (such as our partners Thames Productions, Bang Creations, and Ideas21). However, there are other companies that will do very little and charge inflated fees for it. We have met customers in the Centre who have spent five-figure sums for “market research” and “patent search” services that produced limited results compared to what they could have achieved using a business advice centre. Generally, you should be suspicious of any company that suggests you can earn huge amounts of money from an invention concept without putting a lot of effort into the technical development or business planning.
The good news is that the official intellectual property offices around the world are trying to stop fraudulent companies by complaining to marketing regulators like the Advertising Standards Authority here in the UK, and prosecuting them. As a business owner it is important to be aware of existing scams; make sure you read the small-print which can often include a “we are not official” disclaimer, and if you are still unsure contact the Intellectual Property Office or the Business & IP Centre for further assistance.
Philip Eagle on behalf of the Business & IP Centre
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