Intellectual Property is a massive subject in the tech startup scene. If your IP is at the epicentre of your business idea, you need it protected. Without adequate protected you could lose the rights to your idea, and to all the money it could make.
The experts from Kingston Smith and Reddie & Grose came together to deliver an IP workshop from our Leathermarket Club Workspace venue. Kingston Smith are one of London’s top 20 accountancy firms, and Reddie & Gross are a group of Design and Trade attorneys with a great international reputation. The advice came from Aidan Robson and Pete Sadler of Reddie & Grose and Paul Spindler of Kingston Smith.
Aiden and Pete from Reddie & Grose kicked off the event by explaining that Patent Attorneys are not lawyers. Instead of a background in law, patent attorneys are usually scientists. Science is a good grounding for Patent and IP attorneys as they need to understand your invention, not just the law that is relevant to it.
What Is IP? What is a Patent?
Intellectual Property can be any of these: creative works, inventions, designs, ideas, trademarks, names, packaging or logos. The commodity that you’re protecting as your IP needs to be something that you’re going to exploit for commercial gain.
Patents are for inventions, they are not for ideas. You can’t patent code, or an algorithm per se, it must have an application. For example, you cannot patent 'code a', but if 'code a' is used within a certain the new Samsung Tablet to enable a certain function, you will be able to patent.
A patent is an agreement between you and the government. You give them the knowledge behind your invention, and you get a 20 year monopoly in return.
Unless you have a watertight NDA (Non Disclosure Agreement) in place, do not tell anyone about your IP. Anyone at all. If it can be proven that you have disclosed your IP before going for a patent, the idea is no longer classified as ‘new’, and can therefore no longer be patented.
Who Owns IP?
The usual case is that the creator of the IP is the owner. However, if you create IP whilst employed by an organisation who employs you with the specific intention of creating potentially patentable IP, the IP belongs to the employer.
Another possibility is that you are a freelancer who has created IP. If you have not signed a contract that mandates that you forego your rights to the IP and deliver the rights to your client, the IP belongs to the creator. Startups! If you employ freelancers to code on your behalf, for example, make sure that they agree that all Intellectual Property created belongs to you! Otherwise they are well within their right to seek a patent in their own name.
If someone infringes IP that you have protected by patent, you can force them to stop using your IP and, potentially, take out an injunction against them.
If you are willing to disclose your patented IP for financial gain, you can lease it. This is a simple system by which you give another organisation access to your IP for a certain amount of time for a fee.
What’s the difference between Registered and Unregistered Rights?
Quite simply, registered rights require a registration period that can last up to two years, whereas unregistered rights are assumed, rather than prescribed.
You are required by UK Law to register for patents, trademarks or registered designs. You do not need to register for copyright, unregistered design rights or passing off/common law rights.
Passing off and common law rights are established by building a reputation. For example, you can ascertain the rights to a trademark without registering it. You do this by using the 'trademark' and gaining a substantial reputation. This is not a recommendable route-to-take in order to gain a trademark, it is a protective measure.
TM - UK or European?
Trademarks protect names, rather than inventions. IP protects inventions. Workspace Group is a protected name, as is Apple, Sony, Blackberry...
When you register a TM - the usual route - you have to specify in which industry you would like your TM to be registered. For example, if you are a clothing manufacturer, you would chose the 'clothing' industry, rather than electrical goods, for example. If a wholly separate businesses wants to use 'your' trademarked name to trade in the electrical goods sector, they are allowed to do so.
A trademark costs £500 in the UK.
However, you need to think about where you are going to trade before you register a mark. If most of your trade is going to take-place in Germany, it would be wise to register a German mark! It is possible to register an EU mark, however be very careful when doing so. When registering an EU mark, it is recommended to check if anyone is using your mark throughout the EU. This requires checking every territory - France, Germany, Belgium, Spain, Ireland etc - to ensure that nobody has registered the same name. If they have, you will not have a protected name in that country. You will need to set up another name under which to trade in the troublesome territory.
What is a Registered Design?
A registered design allows the holder to prevent others from using their design for 25 years. A registered design for aesthetically unique goods. All designs, however, have 'unregistered' design rights upon invention. If you create a pair of glasses, and Specsavers start to sell frames with exactly the same aesthetic specifications, you are entitled to claim your design rights.
Registered design rights are not exclusively for physical products, either. Do you have an iPhone? The little icon that you tap for your email? That’s a registered design. As are most of the Apple icons and logos. This is because Apple feel that these design features are intrinsically valuable to the look and feel of their product.
Thank you to the team from Kingston Smith for bringing this fantastically informative event to Club Workspace, and to the Reddie & Grose team who delivered their info with assuredness and panache.
I don’t usually include a 'Coda' in blogs, but this subject matter calls for some prospection. I wrote this blog whilst sitting next to Club Workspace member and tech aficionado Jon Slinn. He pointed me in the direction of this recent European case law. The precedent set after this decision went against SAS means that if you - as a developer - can replicate the 'function' of patented tech, you are allowed to do so. Does this move the goalpoasts? Or does this give you the right to copy our goalposts altogether?