Hanging on to a good idea

A company’s success often reflects its investment in R&D, and safeguarding ideas is therefore of prime importance.

However, a recent report reveals that a number of companies have no Intellectual Property (IP) protection plan at all, and those that have are not policing it properly.

Only once all IP assets have been identified and valued can a company fully assess whether its registration, protection and policing policies are adequate.

UK companies may possess trade marks, registered and unregistered designs, patents, copyright, know-how and confidential information and only some require formal registration, but in relation to all rights, revenue can be lost following unauthorised use.

A patent can provide a monopoly on an idea for up to 20 years, but it is essential that all information is kept confidential until publication. New developments sometimes overtake patents so regular reviews are needed to judge whether protection is really appropriate.

Even if a patent is unsuitable the data involved in developing an idea can still be protected. Obligations of confidence should be imposed on both employees (during and after employment) and third parties.

Alternatively, design registration, lasting 25 years, can be obtained for industrially manufactured articles which are original and have visual appeal. Even purely functional designs such as machine tools may be protected. A review of a company’s product portfolio can establish which products are suitable for registration, and which satisfy the requirements for unregistered design right protection.

Copyright arises automatically when original works are created and embodied in a permanent form. All copyright material created by employees is owned by the company, although, without prior agreement, ownership of promotional literature produced by third parties is not guaranteed.

Trade Mark registration is a relatively inexpensive method of protecting company names, brand names, logos, packaging, etc.

Although a company can still protect unregistered marks, trade mark registration is a more powerful weapon. Not only does it enable rapid enforcement of IP rights, it also enables Trading Standards Authorities to take criminal proceedings against potential infringers.

A comprehensive review of a company’s technology assists in establishing what steps can be taken to improve protection. This also enables the company to assess the value of each asset, and undertake a cost/benefit analysis in relation to expense involved in the registration of patents, designs and trade marks.

IP is no longer simply used to maintain a company’s market position, but also as an asset in its own right that can be bought and sold or used to raise finance.

The Inland Revenue is currently considering the reform of the taxation of IP and has published proposals that will involve companies changing accounting practices.

As a result, many companies are marrying banking and financial issues with IP issues, and reviewing their IP portfolios to ensure the full exploitation of what is likely to be a valuable asset.

Identifying under-utilised technology and IP assets is a key feature of any IP audit. Patents, registered designs and trade marks all have potential for licensing or even assigning to third parties to increase revenue through royalties and increased market exposure.