9th October 2012

Expert Advice from Wynne-Jones IP: Protecting and Enforcing Your Intellectual Property

Once you have established that your business has intellectual property, it may be necessary to register it. In order to have a granted patent, one must first apply for a patent at an intellectual property office. Similarly, if you wish to register a design or a trade mark, an application needs to be made.

However, copyright and unregistered design right is automatic and comes into existence the moment the qualifying work is recorded, e.g. if you write a scientific report then it will automatically have copyright.

Here are ten things to remember about IP:

(1) In order to protect your rights, you should clearly mark any documents with the correct marking such as ® for a registered trade mark and patent application number GB xxxxxxx.x.

(2) IPR’s are a negative right which means that they stop anyone who isn’t the owner or licensee from using them. It does not give you the right to use them. For example, you may have an invention which is protected by a patent and which describes an improvement on a known technology. However, you may need permission from the owner of the known technology in order to fully exploit your invention.

(3) It may not be as expensive as you think to apply for and enforce a patent, trade mark or registered design. Many firms of patent and trade mark attorneys, including us, offer free, initial consultations where they can discuss your IP, how best to protect it and the costs involved. The Patents County Court was set up with a remit of giving SMEs more cost effective enforcement of their IP rights.

(4) You should be aware of what your competitors are doing. If you believe they are infringing your rights then seek professional advice. There are certain ways to challenge a potential infringer so seek professional advice patent or trade mark attorney before taking any action.

(5) Your IPRs can be challenged, either in retaliation to challenging someone who you believe is infringing your rights, by a competitor or by anybody else.

(6) In order to defend yourself from challenges and to help prove infringement you must keep accurate records. These can be lab note books to prove what was carried out on which days or receipts of sales of a product bearing a trade mark. The more well documented your records, the easier it is to prove what was known or done on a given date.

(7) It is advisable to file a patent application before disclosing an invention in scientific journals or at exhibitions. However, sometimes things slip through the net. It is still possible to apply to obtain patent protection in a number of countries within a time limit or 6 or 12 months, depending upon the country, from the date of the disclosure. The USA is one of these countries, but the UK and Europe are not.

(8) If you have an idea and want to disclose it before applying for a patent application then disclose it in confidence using a Non-Disclosure Agreement (NDA). It is also sensible to use an NDA even after you have filed a patent application and before it is published.

(9) Do not forget about trade marks. These are a powerful, yet relatively, cheap way of protecting your company name, products, brands, logos etc.

(10) Finally, the UK Government is introducing Patent Box in April 2013 which provides substantial tax relief made on worldwide profits of patented products.

Wynne-Jones IP is an Intellectual Property specialist firm having offices in South and North Wales with many clients in the sciences sector including start-ups, universities, Health Boards and international firms.

For more information, please contact Lyndsey Lynch – Lyndsey.Lynch@wynne-jones.com