The Imperial Enterprise Lab is an impressive physical and intellectual space where student innovators and entrepreneurs are inspired to put their creative skills and abilities into practice with a view to solving technological, scientific, social and environmental problems. I was lucky enough to be invited to the Lab a few weeks ago to meet some students and alumni (some of whom are at the early stages of their journeys, and some of whom are already accomplished entrepreneurs with thriving businesses) to talk to them about their IP. It was incredibly rewarding to discuss creative ideas with such ambitious people in such a vibrant space. The following is a snapshot of my advice to any innovator or entrepreneur who is trying to get to grips with their IP.
Identify your IP
IP (or intellectual Property) is the collective term for a bundle of different assets and rights that protect different things and function in different ways. The first step in the IP journey is to identify those different rights and to ascertain which ones might be relevant to your business or idea.
Trade marks protect brands. A trade mark is an valuable IP right because it allows you to protect your unique identity (the thing that your target market and consumers will remember and respond to) and distinguish you from your competitors, safe in the knowledge that no one else can benefit from the investment that you have made in building your goodwill, developing your reputation and generating consumer loyalty. Businesses often assume that the most valuable things they have to offer are the goods that they sell or the services that they provide. But before WhatsApp, there was electronic messaging. Before Airbnb, it was possible to reserve accommodation online. Before Uber, we booked taxis. So the product/service is not the be all and end all. On the contrary, one of the most valuable assets that these businesses possess is their brand identity. And their trade marks are the assets that prevent competitors from usurping that identity.
Copyright is also an incredibly important and valuable IP right (for a few reasons). First, it arises automatically without any registration requirement. Second, it protects a broad range of materials including literary, dramatic and musical works, a wide range of artistic works, software, databases, sound recordings and films. Third, it lasts for a very long time. The term of protection varies depending on the category of work, but in the majority of cases copyright protection lasts until 70 years after the death of the creator of the work. In practice, almost every business will have materials that are protectable by copyright, including the code underling a website or an app, photos, videos, blogs and other digital materials, documents and other materials created and developed for training, research and development, data and databases, logos and other brand assets, the list goes on. Because registration is not a factor when it comes to copyright, the crucial first step is to identify (and ideally catalogue) all the valuable materials in your business that might be protected by copyright, and to retain records of creation and development (including in particular who created the materials and when).
Design rights and patents are more niche and may not be applicable to every business. But for the businesses where these rights are applicable, they can be incredibly valuable assets. Design rights protect the appearance of a product, so they are particularly important for businesses that manufacture and sell products. In addition, design rights can also be used to protect graphical user interfaces (GUIs) and app developers frequently use registered designs to protect the look and feel of their app with a view to preventing competitors from replicating certain aspects of their user experience. Patents protect inventive products and processes that are sufficiently technical to attract patent protection, so they are particularly important for businesses operating in the areas of technology and science. However, the availability of patents is not limited to businesses operating in the spheres of complex technology. Manufacturers of consumer products will very often seek patent protection in conjunction with registered design protection in order to exercise monopoly control over what their product does (patents protect functionality) as well as what their product looks like (registered designs protect aesthetics).
Lastly, much of a business’s value resides, not just in its brand or in its products, but in confidential information. Things like internal know-how, methodologies, process, customer data and strategic plans for the business can be difficult/impossible to protect using the main statutory IP rights (trade marks, copyright, design rights and patents), but such information is nevertheless valuable and needs to be protected. The solution is, first, to identify such valuable information within your business and, second, to ensure that its confidentiality is maintained and its disclosure controlled.
Protect your IP
Having identified all the valuable IP in your business, the next stage of the IP journey is to take steps to protect it. There are two main categories of IP rights: registrable IP rights and non-registrable IP rights. As the name suggests, registrable IP rights require registration in order to secure protection. Conversely, registration is neither necessary nor possible in the case of unregistrable rights. Instead those rights simply arise automatically.
The main registrable rights are patents, trade marks and registered designs. In the case of these three rights, protection normally starts from the date the application is filed. Patent protection normally lasts for 20 years, trade mark protection lasts forever provided that renewal payments are made (usually every 10 years) and registered design rights last for a maximum of 25 years (again provided that renewal payments are made, usually every five years). The key consideration with patents and registered designs is that the design/invention must be novel at the time the invention if filed and therefore the design/invention should not be disclosed to the public before the application is filed.
The main two main non-registrable rights are copyright and design rights. In the case of UK unregistered rights (copyright and UK unregistered design rights), protection arises automatically from the moment of creation. As above, copyright usually lasts until 70 years after the death of the creator of the work (though the term of protection is shorter for some categories of work). UK unregistered design rights last for 15 years from the date the design is created or 10 years from the date the design is first made public, whichever occurs first. EU unregistered designs rights last for 3 years from the date the design is first made public in the EU. The key consideration with unregistered rights is that if you engage a third party to undertake any work for your business on a freelance basis, and that work is likely to result in the creation or development of new IP (e.g. a freelance artist, designer, copy writer, photographer, videographer, web/app developer, consultant or collaborator), it is essential to secure a written IP assignment from the freelancer (i.e. transferring the IP from the freelancer to you or your company).
Similarly, if you are intending to share confidential information relating to your business with third party stakeholders (e.g. freelancers, manufacturers, agents, investors, collaborators or suppliers), it is essential to secure a written NDA signed by that third party (i.e. preventing that third party from publicly disclosing or using your confidential information).
Commercialise and enforce your IP
Having taken the initial essential steps of identifying and securing your IP rights, the final leg of the journey is to put it to work for your business. This has two main aspects.
The first aspect is to use your IP to make money. There are many ways in which IP can generate revenue for a business, but IP is most commonly commercialised through some sort of licence. Licences can come in the form of manufacturing agreements, distribution agreements, franchising agreements, collaboration agreements and other commercial arrangements. The common thread that runs through each of these commercial arrangements is that you are authorising a third party to do something with your IP with a view generating revenue. For example, a distribution arrangement may involve granting a third party the right to sell products manufactured to your design or patent in a territory where you would otherwise not have had the infrastructure to distribute those products. Similarly, a franchise arrangement may involve granting a third party the right to provide a service using your brand and copyright materials and know-how in a market where you would otherwise not have had the infrastructure to provide that service. They key to generating revenue in this way is having licensable IP rights which allow you to control how your brand, materials, designs, inventions and/or know-how are used.
The second aspect is to use your IP to prevent infringement. There also many ways in which infringement can arise. In some cases, copycats might seek to emulate your brand and take unfair advantage of the investment that you have made in your goodwill and reputation (in which case you might consider your trade mark portfolio and potentially other remedies like passing off and unfair competition for a solution). In other cases, copycats might seek to replicate what you are selling and take unfair advantage of the investment that you have made in your products and services (in which case you might seek to enforce your copyright, design rights or patent rights). And in other cases, third parties might not seek to copy your brand or your products, but they might seek more subtly to replicate your overall style or approach or a relatively minor aspect of your brand or products. These cases are challenging because generally speaking IP rights do not protect ideas. They protect the expression of ideas. For example: (a) copyright protects artistic works (i.e. the physical expression or manifestation of an idea such as a photograph of a bridge taken at sunset), but it does not protect the idea or concept behind the artistic work (i.e. the idea of taking a photograph of a bridge at sunset); (b) design rights protect the appearance of products (e.g. the shape and surface decoration on a piece of furniture), but they do not protect the idea or concept behind the appearance of the product (e.g. a rustic style or a modern style of furniture); (c) patents protect inventive products and processes (e.g. a new technical invention for automatically locking a vehicle using a sensor), but they do not protect the idea or concept behind the invention (e.g. the idea of having cars lock automatically upon a sensor going out of range of a vehicle); and (d) trade marks protect specific brand identifiers (e.g. a particular word, logo, tagline, colour or shape that customers use to identify the brand), but they do not protect the idea or concept behind the brand identifier (e.g. a particular style adopted by a range of brand identifiers). In these difficult cases, the businesses in the strongest position are those that have protected every possible aspect of their IP making it very difficult for a copycat to replicate any protectable aspect of the business or its brand or products.
Practically speaking, the best approach is a proactive one. If you are serious about protecting your IP and preventing infringement, you should regularly search for infringement, particularly amongst your competitors, by conducting searches on major search engines, social media and news platforms, as well as trade and industry publications and publicly accessible company, trade mark, patent, design and domain registers. In some cases, it may also be possible to set up automatic watching services (e.g. for trade marks and domains) which will notify you if a third party files an application which is identical or highly similar (e.g. to your trade mark or domain) anywhere in the world. Where a potential infringement or conflict is identified, it is always advisable to take advice on your options as soon as possible because, unfortunately, in some cases sitting on your rights can mean losing your rights.
It is certainly a truism to say that IP will play an increasingly significant role in our future.
I recently read an article by the co-founder and CEO of DeepMind, Demis Hassabis, where he said that he had devoted his life to the building of AI because he believes it is going to be the most important technology every invented (he pointed out that AI systems had already reduced the amount of energy used to run data centres by up to 30% by optimising the use of cooling systems, and he hypothesised that radical solutions enabled by AI could be used to fight climate change by capturing carbon dioxide from the atmosphere using methods far cheaper and more efficient than those used today).
If he’s right, and we are on the brink of a quantum leap in terms of technological advancement, the entrepreneurs and innovators of tomorrow, some of whom I was lucky enough to meet at The Imperial Enterprise Lab, will undoubtedly need to equip themselves and their businesses by identifying, protecting and, crucially, using their IP.
Written by Éamon Chawke, Solcitor