Protection plan

There’s more to safeguarding new products than a simple patent on the technology, writes Jonathan Moakes.

New products can often be protected by a variety of intellectual property rights, and ensuring that your innovation is adequately protected will help guarantee a return on investment.

Depending on the nature of the product, it can be protected by patents, design rights, copyright and trademarks. In addition to these specific rights, well-drafted employment and confidentiality agreements will further ensure their correct ownership and protection.

Patent protection is available for inventions that are new, involve an inventive step and are capable of industrial application. A granted patent gives monopoly protection to the patent owner over the invention for 20 years, provided it is renewed annually after the fifth year.

But beyond that there are numerous other methods of safeguarding your innovation.

UK unregistered design right, for example, offers unregistered protection against copying and can also be used to protect original ‘designs’. This can apply to any aspect of the shape or configuration of the whole or part of an article, but not methods of construction, ‘must-fit’ or ‘must-match’ features or surface decoration. It prevents copying of the design for up to 15 years.

European unregistered design rights prevent copying of new designs with individual character — except where the design is dictated solely by its technical function — for three years.

UK and European registered design protection is also available for all new designs with individual character, except where the design is dictated solely by its technical function. The protection given by a registered design can last up to 25 years, provided it is renewed every five years. There is no need to show copying.

If the new product is to be sold under a particular name, logo or mark then it is a good idea to seek registered trademark protection before the product goes on the market. This protects signs capable of distinguishing goods or services of one trader from those of another. The sign to be protected must be capable of being represented graphically — words, logos and symbols for example. The monopoly given to the owner of a registered trademark is indefinite, provided it is renewed every 10 years.

Protecting a distinctive design can be as important as securing a patent on the technology

Elsewhere, copyright protection can be used to prevent copying of original literary, dramatic, musical or artistic works and, most notably for the engineering sector, for computer software. Copyright will also protect design drawings, but generally not 3D designs themselves. It usually lasts for the lifetime of the author, plus 70 years following his or her death. There are various exceptions to this general rule, such as where the work is computer generated, in which case copyright will last for 50 years.

If the intellectual property rights (IPRs) are infringed, the owner may take proceedings against any infringers, and the Court can order the removal of any infringing products from the market and order payment of either damages or an account of the infringer’s profits to the rights owner.

The relationship between employer and employee is also worth investigating. As a general rule, IPRs created in the course of normal employment duties or those falling outside normal duties, but specifically assigned to the employee, will belong to the employer.

To be absolutely sure of the position, employment contracts should contain provisions which operate to ensure that all IPRs either vest or will vest in the employer.

In the case of consultants, only certain types of IPRs are automatically owned by the ’employer’ and a formal assignment of the results of their work should be obtained to ensure that the rights vest in the company employing the consultant’s services. There is a real issue with software specialists who often operate as consultants, and an assignment from them is vital.

Agreements with employees and consultants should also include confidentiality provisions to ensure that all sensitive commercial information — including details of design projects — remains confidential, particularly prior to publication of any patent applications or design registrations.

There are many ways to protect new product designs, and the steps needed to safeguard the protection and maximise the exploitation are relatively simple and inexpensive compared with the potential revenue that new products can generate.

Conversely, if the steps are not taken — at the correct time — then the ability to protect and exploit may be severely impaired.

Jonathan Moakes is head of the Intellectual Property, Commerce and Technology Group, and a partner with law firm Halliwells LLP