Protecting your intellectual property (IP) to attract investment - Jim Robertson




Having a comprehensive and well managed Intellectual Property (IP) portfolio can create a strong position in the marketplace for your business. It can also make your business more attractive to investors.

IP expert Jim Robertson from Wynne-Jones IP shares some top tips on how to protect your IP:


1.       Always use a qualified IP attorney


Solicitors may offer IP advice but are often not trained in the same way, nor subject to the same professional rigour as IP attorneys, who are required to undertake extensive specialist training in IP.  Always use a qualified trade mark attorney or patent attorney for your IP.


2.       Infringement


When you have created a new product or work, you should consider the IP rights of third parties before launching the product. It is often necessary to conduct searches to locate any third party IP rights which may prevent you from making, selling and/or importing your products in a particular territory.


3.       Consider your markets


Consider the territories where you want to trade and look to secure the relevant protection in those territories, as IP rights are territorial in nature. If you do not do this, it may be very difficult to prevent third parties from making and selling copies of your product in your principal markets.


4.       Types of IP rights


There are various types of IP rights available for protecting different types of original creations. If you have developed a technical product, then the technical concept can be protected by filing a patent application. Alternatively, if you have created a new brand, then you should look to protect the brand by filing a registered trade mark. If you have created a new, aesthetically pleasing product, then you could look to protect its appearance by filing a registered design application.


5.       Prior disclosure


If you are looking to protect the look and appearance (design) of a new product, such as a new style of clothing or shape for a drink bottle, then it is possible to publicly disclose the design to third parties up to 12 months before you file the relevant design application.


For trade marks, you can use the mark in the course of trade and look to register the trade mark at a later date – there is no requirement to keep the brand secret until you have filed the relevant registered trade mark application.


However, it is advisable to file the relevant design and/or trade mark application before making any disclosure, since the first party to file the relevant design/trade mark application will typically get the rights to the design/trade mark.


Alternatively, if you have created a technical product, then you will need to file a patent application before any public disclosure of the invention occurs. You will need to keep the invention secret until the patent application has been filed. If you do need to discuss your invention with third parties, then you should ensure that the third parties execute a confidentiality or non-disclosure (NDA) agreement.


6.       Social media


If you post images of your invention on social media, not only are you putting your product into the public domain, but you may also be forfeiting the right to control the subsequent use of the posted image. Look into the terms and conditions regarding subsequent use of images on the social media channel before you post anything online.


7.       Copyright


Copyright is an unregistered right – you do not need to register the right – it will come into existence once the work has been created. However, as copyright is an unregistered right, you should keep a detailed log of the various iterations of the work which led to the final work piece, to prove that you own the rights to the work.


It is also important to mark all works you have created with the relevant registered patent, design and trade mark numbers. In the case of copyright, you should use the copyright symbol to showcase your rights so that third party cannot claim that they were unaware of the rights associated with the work.


Wynne-Jones IP is a firm of Intellectual Property specialists that have been based in Cardiff, Cheltenham and Telford for over fifty years. The firm advises businesses and inventors in a wide range of sectors worldwide on all aspects of patents, trade marks, design rights and copyright.


Follow Wynne-Jones IP on  Twitter @IP_Expert.

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