Find an Intellectual Property Solicitor

Introduction
 
All businesses have intellectual property (IP), regardless of their size or sector. This could be the name of your business, or copyright, designs, patents and trade marks.

Your IP is likely to be a valuable asset. Securing and protecting it could be essential to your business' future success, so it's vital to understand your rights and how the law can help you.

This guide explains the importance of conducting an audit of your business' IP. It sets out the different kinds of legal protection available for IP and explains the range of things you can do to protect and manage your IP rights.

The importance of protecting intellectual property

Intellectual property (IP) rights are valuable assets for your business - possibly among the most important it possesses.

Your IP can:

• set your business apart from competitors
• be sold or licensed, forming an important revenue stream
• offer customers something new and different
• form an essential part of your marketing or branding

You may be surprised at how many aspects of your business can be protected - its name and logo, designs, inventions, works of creative or intellectual effort or trade marks that distinguish your business can all be types of IP.

Some IP rights are automatically safeguarded by IP law, but there are also other types of legal protection you can apply for.

To exploit your IP fully, it makes strong business sense to do all you can to secure it. You can then:

• protect it against infringement by others and ultimately defend in the courts your sole right to use, make, sell or import it
• stop others using, making, selling or importing it without your permission
• earn royalties by licensing it
• exploit it through strategic alliances
• make money by selling it
  

Intellectual property management - conducting an audit

The first step to protecting and exploiting your business' intellectual property successfully is carrying out a systematic intellectual property (IP) audit.

To carry out an audit, look closely at your business to:

• identify where IP is used
• find out who owns the IP rights
• assess the value of the IP

This won't always be straightforward. Remember that your IP doesn't just reside in patents you hold or trade marks you've registered. You also need to consider items such as any bespoke software, written material, domain names and customer databases.

Key questions an IP audit should raise:

• Is my IP protected?
• Am I infringing anybody else's IP rights?
• Am I fully exploiting my IP?

Using a logbook to manage your IP
It can be helpful to record all research, notes, designs and meetings related to your ideas in a dated, tamper-proof logbook, with witness signatures where appropriate. This can serve as a powerful tool, helping you identify and protect your IP later on.

The Department of Trade and Industry's Innovation Unit has, in conjunction with the Patent Office, produced an Innovation Logbook.

Getting legal protection for your intellectual property

There are four main ways in which the law provides protection for your intellectual property.

Patents
Patents protect your inventions for a set period. You must apply to the UK Patent Office for a patent.

You can only patent an invention if no one has done so before you. To see if there is an existing patent you need to carry out a patent search.

Trade marks
A trade mark is the distinctive way in which your business' goods or services are represented - in the form of slogans, symbols, words, logos, brand names or forms of packaging, for example.

You can take legal action to prevent someone else using your trade mark if you've built up sufficient trading reputation and goodwill in it - but this can be difficult to prove. For added protection it's a good idea to use trade mark registration to protect your trade mark.

Design right and registered designs
Design right gives automatic but limited protection for the appearance of three-dimensional objects. A registered design gives added protection and applies to both two-dimensional and three-dimensional objects. See our guide on design right and registration.

Copyright
This is the automatic protection the law affords original literary (including software), artistic dramatic work and sound recordings that is the result of intellectual effort or creative skill. This could cover your website's content, technical drawings or instruction manuals, for example.

Assistance with intellectual property protection

Intellectual property (IP) protection can be an important part of ensuring your business' success, so it's important you get it right. Mistakes can be time-consuming and expensive. They can even result in your business' failure.

IP protection is a complex legal area and getting help is often sensible.

Sources of IP law

• The Trade Association Forum. Find your trade association on the Trade Association Forum website.
• The UK Patent Office. Contact the Patent Office Central Enquiry Unit on Tel 08459 500 505 or find information on IP protection on the Patent Office website.

Specialist legal advice is also available. Patent agents, also known as patent attorneys, are legally qualified in all aspects of patents, trade marks, design and copyright law. They are represented professionally by the Chartered Institute of Patent Agents (CIPA). Similarly, trade mark attorneys are legally qualified in trade mark, design and copyright issues. They are represented professionally by the Institute of Trade Mark Attorneys (ITMA).

Protecting your ideas overseas
IP protection is territorial, which means if you've registered protection in the UK it applies only within the UK. However, the majority of countries have similar laws relating to intellectual property and you can seek protection in other countries.

Intellectual property rights and your employees

It's likely that your employees will create work containing intellectual property (IP) rights.

This isn't just if they're developing inventions in a research and development department. Staff could also be creating potentially valuable IP if, for example, they're compiling databases, writing marketing material or producing training brochures.

The good news is that IP rights created by employees generally belong to the employer.

Showing that a member of staff has an employment contract is usually enough to prove you own all IP rights. But it's a good idea to state the position explicitly in separate clauses of employees' contracts.

This prevents any confusion arising - perhaps over work created outside office hours or as a by-product of specified work.

You may also want to ask employees to record information relating to any innovative work they do in a logbook.

Unless otherwise explicitly stated in their contracts, employees will retain the moral rights to any literary, dramatic, musical or artistic works created as part of their employment.

This means they can object to distortions of their work and retain the right to be identified as its author, but have no economic rights over it. If you want to obtain the moral rights in your employees' work you must state this clearly in employment contracts.

Your employees may also have access to sensitive information about IP. It can make good business sense to include confidentiality clauses in your employment contracts.

You may want to seek legal advice when drawing up contracts.

Intellectual property and freelance contractors

You should take steps to ensure your business owns any intellectual property (IP) rights in work created for you by freelance contractors.

You have an implied legal right to use IP rights in work you have commissioned from freelance contractors for the purpose it was originally intended for.

However, unless you take steps to assign the IP rights to your business you will neither own them nor be able to make additional use of them.

For example, unless you take adequate precautions you could find your business unable to use a successful advertising slogan across all its promotional material if it was coined by an agency that agreed to produce the slogan for a one-off newspaper campaign only.

You should therefore set out, in a written agreement, who will own, control and use the IP rights of all work created before a contractor produces any work for your business.

A clause assigning moral rights to your business could also be beneficial. Unless you do this, your contractors will retain the right to object to distortions of their work as well as to be identified as the author.

Remember that IP rights may reside in promotional material, bespoke software - such as databases and website content management systems - and other creative work which may be undertaken by freelance contractors.

You may want to seek legal advice when drawing up agreements with contractors.

Prevent intellectual property infringement

If your ideas get into the wrong hands before you have taken action to protect them, you could find your intellectual property (IP) rights seriously compromised - or even lose them entirely. It's therefore very important that you keep secure all your business' material in which there are IP rights.

This is essential before IP protection has been applied for - or registered - as any disclosure could jeopardise your claim to originality. For certain creative works it will also be important afterwards because enforcing your intellectual property rights against infringers can be time-consuming and expensive.

Basic steps you can take to avoid IP infringement include:

• asking employees - and third parties to whom key information must be disclosed - to sign confidentiality agreements
• keeping important hard-copy information locked up

Take special care when trying to sell or license an invention, idea or design to an agent, manufacturer or potential partner, even if registration is complete. Apart from a confidentiality agreement, if you have not protected your idea by applying for a patent, trade mark or design, post a dated copy of your idea to yourself using recorded delivery and lodge the unopened envelope and postal record with your bank or solicitor.

Information stored electronically, particularly on computers connected to the Internet, needs protection from both lapses in security and IT disasters.

You should:

• ensure sensitive information is kept on password-protected areas of your system
• install anti-virus software and keep it up to date
• install firewalls to prevent unauthorised users from hacking into your system, and update them regularly
• back up your work and ensure back-ups are stored securely
• protect your system against power surges and failures
  

Protecting your business name and domain name

Your business name is the most basic intellectual property asset you have. It could also be the most important. Your business' reputation is tied up with its name so you don't want somebody else trading on it.

If the name of your business is distinctive to the goods and services you provide, you may be able to take legal action against anyone using it in the same or a similar field.

You will get additional legal protection if you register the name as a trade mark.

Protect your name on the Internet
If you want to establish an Internet presence for your business you will probably want to register a domain name incorporating your business name, or any trade marks you have.

However, having a trade mark doesn't give you an automatic right to a domain name incorporating your trade mark. Someone may have already registered the domain name you want for the same or different goods and services.

But you may be able to take legal action if you think:

• someone is using a domain name to pass off their goods and services as yours
• someone has taken out your trade mark as a domain name just to sell it back to you
  

Respect other people's intellectual property

You must make sure you respect other people's intellectual property (IP). If you infringe it the owner of the IP can take legal action against you. This IP law infringement can result in injunctions against you, along with orders to pay high costs and damages.

In some cases, infringers can even be guilty of a criminal offence and be given a prison sentence or an unlimited fine.

Intellectual property management - carrying out searches
It's a good idea to carry out searches to check you're not committing IP infringement.

If you're planning to use a sign to distinguish your business from competitors, you should always carry out a full trade mark search.

You could also use the Patent Office Search and Advisory service to search for you and check that your trade mark meets registration requirements. Find out about the trade mark search and advisory service on the Patent Office website. You should also consider checking with Companies House to ensure that no one else is using your proposed trade mark as their company name. Check registered company names at the Companies House website.

If you want to make, use, sell or import someone's invention, you should carry out a full patent search. You should also do a search if you're considering applying for your own patent.

If you want to make, sell, use or import goods you should carry out a full design search. If you want to use original creative work you should find out whether it is covered by copyright.

Making a mistake and infringing upon someone else's rights could be costly, so it is worth obtaining professional help. You can get help with your searches from a patent agent or trade mark attorney.

Find an Intellectual Property Solicitor