What to think about when starting out?

Whether you have a great idea for a new product or service or are starting a new business venture, there are many things to keep you busy. One aspect which can often be overlooked is the importance of good intellectual property (IP) protection. This article describes some of the main types of IP protection that are available, how each may be obtained, and how these can help protect and add value to your business.

To illustrate, imagine you have devised a new type of kitchen device. 

Patents

A first question to ask is whether it is possible to obtain patent protection for the new device? Patents are a strong form of IP protection as they allow you to prevent others from making use of your invention without your permission for a period of up to 20 years, subject to payment of annual renewal fees. Any aspects of your device which are technical in nature; how it works, its construction and the like may be suitable for patent protection. The invention must be described in a patent application which is then subjected to examination by a patent office. Only applications for inventions which are new and not obvious will be granted.

It is important to recognise that patents are territorial in nature. This means that a patent granted in for example, the UK, only has legal effect in the UK. So, if you aspire to make or sell your new device in a range of countries, consideration should be given to securing patent protection in those countries too.

Registered Designs

So, you have protected the technical aspects of your device with patents, but what about any non-technical features? You have worked hard to make sure that your device not only works well but looks good too. Here is where Registered Design protection can help. Aspects of your device which are new and are of an aesthetic, non-technical, nature can be protected. An application is filed illustrating the features for which protection is sought and if your design registration is granted it stays in force initially for 5 years, and up to 25 years with the regular payment of renewal fees.

A Registered Design would allow you to prevent others from making and selling devices that look the same by incorporating the same design features without your permission. As with patents, Registered Designs are territorial rights and so are only effective in the country or region in which they are granted.

Trade Marks

It’s looking good for your new device. Technical features are protected by patents, and you have registered design protection for the aesthetic features. What other protection might be available? If your new device has a brand name, then you could consider filing a trade mark application. Trade marks are useful as they distinguish your product from similar products in the marketplace and help customers to identify your products as genuine.

As with other forms of IP, a trade mark registration begins with an application which along with your chosen mark, usually a word, logo, or the like, must also define the types of goods or services for which it is to be applied. Your application is then checked for any conflict with existing trade marks. Marks which are the same or similar to pre-existing marks may be rejected, particularly if the types of goods and services overlap. Provided you continue to use your trade mark and renew it periodically, it can stay in force indefinitely. As the owner of the trade mark, you have the legal right to prevent others from using it for the goods or services defined in the application. Trade marks too only have effect in their country or region of registration.

IP rights belonging to others

We have considered what types of IP protection may be available for your new device, but it is important to bear in mind that others may have IP rights too. As we have discussed, IP rights allow their owners to prevent unauthorised use by others. Crucially however, IP rights do not automatically give owners the right to use their own IP.  Even if you have obtained patents for your device, others may own patents which also cover some aspects and by making your product you may infringe their prior rights.  Similarly, some features of the design of your device may be the subject of Registered Designs belonging to others, and care should be taken when selecting any brand name that is does not conflict with any existing trade mark registrations. These rights may affect your ability to make and sell your device.  Therefore, in addition to protecting your own IP, it is important to also check that you are not infringing rights owned by others.

Further information

Our website contains more detailed information about each of these rights.  In addition, there are a number of blogs on our website discussing infringement and how to assess risk on our website: Mathisen & Macara.

Furthermore, our attorneys here at Mathisen and Macara are qualified to advise you on all aspects of Intellectual Property and would be delighted to answer any questions you may have.