How can you protect your invention? Crisis often inspires innovation and with the recent Coronavirus pandemic we have seen a number of individuals and businesses innovating to adapt to the changing climate and respond to the challenges it has presented.
Whether it is the way remote working has been embraced or how organisations have found new ways of doing business, the pandemic has shown just how innovative people can be. New solutions have been found for unique problems which we are facing for the first time, such as how you collect customer details to comply with track and trace requirements or how to provide goods and services in a contactless way. It’s important to protect those innovations and inventions with intellectual property protection.
Many people have found themselves on furlough or sadly have been made redundant, and some individuals have taken the time to focus their mind on creating innovative solutions for existing or new problems. For many individuals and businesses this will be their first foray into the world of inventions and intellectual property protection which can be a daunting area.
So what do individuals and businesses need to consider when developing new technology or products? In this article we cover some of the key questions to ask.
How can I best protect my invention / innovation / product and what do I need to consider?
Whatever sector you are in, if you are creating new technologies or inventing solutions for old problems, you need to be aware of the intellectual property (IP) rights that can protect your inventions. Some IP rights, such as copyright, arise automatically as soon as you put pen to paper but other rights need to be registered first. Below is a brief overview of the various IP rights:
Copyright arises automatically and can protect (among other things):
- Written materials;
- Design drawings; and
- Artistic works.
In the UK there is no registered copyright, but in other countries, including the US, you can register copyright. In the UK, there are however strategies you can use to help strengthen your copyright protection.
Unregistered Design Right
If you are creating a tangible product, your product may also benefit from unregistered design right which arises automatically to protect the appearance of purely functional products. To be protected by design right, a design must:
- Comprise an aspect or shape or configuration (whether internal or external) of the whole or part of an article;
- Be original and not commonplace; and
- Be recorded in a design document or be the subject of an article made to the design.
Unregistered design right enables the owner to prevent copying of the protected design for a set time period.
Registered designs protect the way a product appears. You can apply for either a UK or EU registered design. Other countries may also offer different protection for designs.
With a registered design you can stop people making, offering, putting on the market, importing, exporting, using or stocking (for the aforementioned purposes), a product to which your design is applied. You can protect two-dimensional designs or surface patterns as well as shape and configuration with a registered design.
The test for validity of a registered design requires that the design is:
- New; and
- Has individual character.
Both UK and EU registered designs give you exclusive rights in a design for up to 25 years. Registered designs could be used to protect interfaces used in software and mobile applications as well as more traditional types of product designs.
We have written more about registered designs here.
Patents protect how something works. Patent applications can be made for products which meet the following criteria:-
- Are new or novel;
- Have an inventive step that is not obvious to someone with relative knowledge, skill and experience in the subject; and
- Are capable of being made or used in some kind of industry.
Certain items are not suitable for patent protection, such as ways of doing business, scientific theories and certain computer programs and mobile applications.
The “novel” and “inventive step” criteria can be very hard to satisfy so patent protection may not be the right option for you. However it is important that you seek appropriate advice at an early stage before dismissing patent protection as an option as once the product is in the public domain or disclosed to a third party without a non-disclosure agreement (NDA) in place you will be unable to obtain a patent.
You also need to protect your name and brand.
Registered trade marks are a cost-effective way to ensure you gain a monopoly right over the name of your products in the sectors in which you operate and help differentiate your products from others in the market.
You should consider applying for trade marks for your business name and logo and any product lines.
What about data protection?
The General Data Protection Regulation (GDPR) requires you to put in place appropriate technical and organisational measures to implement the data protection principles set out in the regulations and safeguard individual rights.
Data protection by design is about considering data protection and privacy issues upfront in everything you do from the initial design stages until the launch of the final product. It is important you consider GDPR when developing any new technology which processes personal data to ensure you are complying with the law and have adequate security and policies in place.
To protect our invention, what legal issues do we need to consider when we work with third parties?
The most common legal issues that come up when two parties choose to work together are around knowledge sharing and confidentiality, and about who will own the rights in the product. At the beginning of any working relationship the parties should carefully consider how they are going to work together and take the time to document this in a binding contract.
An NDA should be entered into prior to discussing any of your technology or revealing any confidential or commercial information to the other party.
A more detailed binding contract should follow any initial discussions once you agree how you are going to work together setting out who will own the IP rights in any materials created. This greatly lessens the risk of disputes later over ownership of the IP rights.
Any outside contractors that the parties work with will also need to be bound by way of written contract with appropriate IP clauses included.
It is important to remember that even if you are paying a third party to create materials for you, it is not automatic that you will own the IP rights in the materials – this needs to be covered in a written contract whereby the third party assigns all rights to you.
Finally, you also need to ensure you comply with the requirements under GDPR before sharing personal data with third parties.
There are a number of IP and Data Protection considerations that come into play when creating innovative new products and it is important that you are aware of these from the outset – both to protect your work and the investment you have made, and to commercialise your ideas. Many IP rights operate on a first to file system or cannot be applied for once your product is on the market so it is important that you consider how you will protect your IP from the early design stages.