Does the thought of navigating the world of intellectual Property (IP) fill you with dread? Do you have a niggling worry about cease-and-desist letters dropping through the door? Are you making the most of the commercial opportunities of IP?
IP can seem overwhelming, but by taking control and being proactive it can offer creative and tech businesses real opportunities.
We caught up with Graeme Murray and Caitlin Morris from leading international intellectual property firm Marks & Clerk to get the inside track on IP.
For anyone new to IP, how would you sum it up in a couple of lines?
Graeme:Intellectual Property (IP) is essentially a creation of the mind that is used in commerce, such as an invention, a literary or artistic work, a symbol, a name, an image, or a design. The most common and well-known forms of IP are patents, which protect innovation, trademarks, which protect brands, designs, which protect the appearance of products, and copyright, which protects a broad range of literary and artistic works.
Caitlin:Intellectual Property can be used to protect ideas you have devised, or knowledge you have gained and allows you to make sure you have the best opportunity to maximise the value from the knowledge that you've generated.
Why is IP so important for businesses in the creative and tech sector?
Graeme: It's an intrinsic part of everything that a business in the sector offers to its customers. IP can extend to things like your product or business name, your logos, the way your product or service differs from your competitors, the way that your product looks, or content you produce for your website. Anything that makes a brand or product stand out will be protected by IP law.
Caitlin: I think there’s a bit of a misconception, especially in the tech sector and start-ups, that there’s little point in pursuing IP protection including patents because asserting your IP in court would be too expensive. But in reality, few cases end up in court and IP is valuable for numerous other reasons.
Patents and other IP act as a deterrent, but they can also generate licence revenue and add value to your company when you're looking at investment or to sell your business.
Graeme: If you have registered IP then you will be in a better position to generate revenue streams from that IP and to prevent third parties from infringing your IP.
How can an IP Attorney help?
Graeme: I’m a trade mark attorney, so I advise clients on the selection, protection and enforcement of their brands. I help clients implement a strategy for the protection of that IP by identifying what they can protect, how they can protect it, and where they should protect it. Once protection is in place, I also help clients to prevent third parties from using and registering conflicting brands.
I also advise people how they can protect the way that their products look, via design registration – something I really enjoy but not everyone realises this is something a trademark attorney does.
Caitlin:I’m a patent attorney, so I work with people to protect their inventions. My background is physics so I mostly work in the software and electronic space, though we have patent attorneys who work in all different areas of technology from energy to film. I’ll meet inventors, help them identify their invention and discuss the most important features they want protection for. I’ll help them develop a strategy for protection, and draft a patent that fully articulates what their invention is – making sure it has suitable legal scope and provides a broad protection that covers their product, future development, and any potential copycats. It’s an incredibly satisfying process as we form close partnerships with our clients, often for many years.
What kind of IP challenges do you help people with?
Graeme: We help people at all points in the lifecycle of a brand or product.. The most common are at launch when I help with searches of trade mark registers to assess whether their proposed product name is available to use. I also advise businesses how and where to protect the new brand via trade mark registration. Finally, I may be approached by a business in the sector that wants to prevent someone from using their trade mark, or has received a cease and desist letter from a third party. Approaching my work from a position of both protection and defence means I’m constantly working ahead of the curve!
Caitlin: The challenges – and the rewards - patents are similar. Someone who has invented and is launching a product might need to check if it infringes on an existing patent, they might need to file their own patent, or make sure they have the right IP in terms of getting ready for investment or launch. We also help people defend their patent if it’s being opposed.
We can help devise a strategy that enables protection in the most commercially important countries, whilst minimising and spreading costs. There are strict rules on when you can file patent and designs in different territories. When you file an application in one country, you've only got a set time frame to file other applications for the same invention in different countries.
People might not understand the importance or IP – or even try to find a workaround – but what can the consequences of this be?
Graeme: From my perspective, I regularly receive new enquiries from businesses that have not conducted clearance searches before using their trade marks. These businesses have received letters from third parties that own trade mark registrations that have been infringed by that use. This can be extremely detrimental to a business, as they may be forced to rebrand, recall products, or even pay damages to the earlier rights holder, which can be costly. It’s incredibly sad to see so much hard work go to waste. All of this can be prevented by getting the right advice and doing the right searches before you launch a new brand.
Caitlin: It’s so important that you get all your ducks in a row before you get too far down the line in development. You could spend years researching and developing a product and then come to launch and find out you're infringing someone else’s patent and you may have to abandon your product entirely. Similarly if you haven’t got the correct patent protection in place and a competitor launches a similar product the week before you, there’s very little you can do.
Are there any important IP considerations around pitching for new business?
Graeme: If you have a concept or an innovation and you are presenting it to a third party to win work or investment, the third party should sign an NDA. If you are creating materials to use as part of a pitch, add the copyright symbol © to those materials, in order to reflect that you own the copyright in those materials.
Caitlin:IP is such a valuable asset and it’s vital to make sure it's all sorted before a pitch. If you watch Dragons Den you’ll see that questions around patents and IP are often where things start to go wrong!
Are there any golden rules of IP you think people leading a business should keep at the front of mind?
Graeme: There are a few for me! Number one – always conduct searches before using a new brand. Number two – ensure your brand is distinctive, it’s hard to protect brands that describe their product or service or simply claim they are the best. Number three – look ahead and protect for growth. Number four – keep good records, even if you’re not registering your IP unregistered rights can be acquired in certain circumstances but dated evidence is key. Number five - if you think something has value or is different to what your competitors are doing, get some legal advice from an IP professional as soon as possible.
Caitlin: When it comes to patents the rules are a little more rigid. In at least the UK and Europe, once your invention has been disclosed outside a confidential setting, then you can't then get a patent for it. However, if you have disclosed, you may still be able to get protection in some other countries. Before you put anything on your website or show your idea to anyone in a non-confidential setting, it’s important to ensure you have protected your invention.
It can be very difficult to change the language or add content to a patent application once it's been filed, so it’s important to make sure it accurately describes your invention. If you’ve ever read a patent, you’ll see the language can be quite complex – getting advice from a patent attorney at the start can help you make sure you've covered all bases.
Is there any new IP legislation, changes in law or trends that people need to be aware of?
Graeme: The relationship between IP and the metaverse is a hot topic at the moment. There is scope for brand owners’ rights to be infringed in a digital environment now, addition to the sale of physical products. For example, a clothing company may see third parties selling infringing NFTs, or using the clothing brand on virtual assets. It is important that businesses are aware that they can protect their brands for these virtual assets too, in addition to physical products.
It has been great to see financial support being put in place for the creative sector as well as tax related benefits around innovation and IP e.g. The Patent Box allows businesses to apply a reduced rate of corporation tax to profits linked to patented inventions. R&D tax credits are also available to companies that are seeking to recoup investment they have made in research and development around innovation.
Caitlin: Software is a rapidly changing area of tech, and the law is always evolving to keep up with new technologies. There used to be a perception that software couldn’t be patented, but provided that certain conditions are met software can often be patented. We would recommend obtaining expert advice to discuss whether your software invention is patentable.
There’s lots of conversations around 3D printing and how to futureproof IP given the increased risk of counterfeiting 3D printing presents. Many of the IP rules and regulations for 3D printing are still being written!
On a practical level, the Unitary Patent and the Unified Patent Court will provide a new system for granting and litigating patents in Europe. The Unified Patent Court is planned to open on 1 April 2023.
You’re about to take some space in Liverpool – where can people find you?
Graeme:We’re really excited to be taking space in November at The Spine in the Knowledge Quarter. To be surrounded by businesses driving innovation in the north west was too good an opportunity to miss!
Caitlin and I are also holding a coffee morning with Start Up Grind at Chapters of Us on 23rd November. If anyone wants to meet us or find out more about what we do, we’d love to see you there!