Intellectual property: a guide for start-ups

What is intellectual property?

Intellectual property (“IP”) is a term which is used to describe a range of legal rights surrounding the protection of ideas and forms of expression. This article intends to provide a high level guide to the key forms of IP that may be important to start-ups.

Copyright

Copyright protects forms of expression of ideas, such as literary works or sound recordings, but they don't protect the ideas themselves. You don't need to register your copyright, as the right arises automatically upon the creation of an original work when the work is recorded (such as in writing or a digital file). The definition of a “work” is broad and would include product descriptions and text on a website to the extent that it is original.

To qualify for copyright protection under UK law, a work must:

• be original – in that the author created the work through their own skill, judgment and effort rather than copying another work
• fall into one of the protected categories of work (eg literary works)
• qualify for protection under UK law (this usually depends on the nationality of the author or place of first publication)

The first owner of copyright is the author of the works, unless it is created within the course of employment, where the employer will be the owner. When a work is protected, it shall last for a period of 70 years after the death of the author of the work. 

Trade marks

A trade mark refers to a sign which is used by a trader to differentiate their goods/services from others. Unlike copyright, a trade mark can be registered, and can exist over a wide range of marks, including words, designs or the shape of goods.

In order to register a trade mark, you need to provide details of the mark to the Intellectual Property Office and specify which classes of goods/services you want your mark protected under. There are 45 classes, each of which covers a different good/service. A key tip for registering a mark is to plan ahead and consider every industry that you plan to use this mark in, whether you currently operate there or not. There is, however, an additional cost per class.

The person/company who is shown on the trade mark register as being the owner owns the mark and can prevent others from using identical or confusingly similar marks for the same or similar goods/services. Provided that the trade mark is renewed every 10 years, it may be owned indefinitely.

If you don't register a trade mark, it might still be protected under what is known as the law of passing off. However, that is a complex area and enforcement of a registered trade mark is much more straightforward. 

Patents

A patent protects inventions and innovations. When a product or process is patented, the inventor gets a limited monopoly over their inventions for the period that the patent is in force – initially 5 years, and up to 20 years from filing date. After this expires, the inventions will be available to the public.
A patent may only be granted for an invention if it fulfils all the following criteria:

• It is new
• It involves an inventive step
• It is capable of industrial application
• It is not specifically excluded from protection as a patent

The definition of ‘new’ is key here. Where you have an invention that you wish to patent, you must not discuss the invention with anybody unless there is a suitable confidentiality agreement in place, as revealing this information to a third party could be seen as revealing the invention to the public. This would make it part of the ‘state of the art’ at the time of application for the patent, and so will no longer be seen as ‘new’.

Design rights

There are two different forms of design rights: registered and unregistered.

Unregistered designs

Similar to copyright above, an unregistered design right will arise automatically on the creation of a design, provided that key requirements are met, and protect from copying rather than provide a monopoly. To be protected, a design must:

• comprise the shape or configuration (whether internal or external) of the whole or part of an article that is purely functional in nature
• be original within the relevant country you are seeking protection
• qualify for protection by reference to:
  •  the designer (or their employer) being resident, or
  • the person by whom articles made to the design were first marketed, and in which country
• be recorded in a design document or be the subject of an article made to the design

The designer is the first owner of the design right in their work. Where the design is created in the course of employment, the employer is the owner of the right. Design rights last for the lesser of:

• 15 years from the end of the calendar year when the design was first recorded in a design document or (if earlier) from when an article was first made to the design
• 10 years from the end of the calendar year when articles made to the design were first made available for sale or hire

Registered designs

A registered design right protects the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product itself or its ornamentation. This can include packaging, get-up, graphic symbols and typographic typefaces. Registered design rights can be used in addition to trade mark registrations for things like logos, or as an alternative where the logo is not yet sufficiently distinctive for trade mark registration.

To qualify for protection, a design must be new and have individual character, and the design must be aesthetic rather than purely functional.

As with patents, you must be careful when disclosing your design to others to ensure that it remains ‘new’. However, here there is a grace period of 12 months available after you disclose your design to the public.

The owner of this right will be the individual who registers it, and a registered design can subsist for 25 years from the date of registration, subject to the payment of five-yearly renewal fees.

Enforcing your rights

Once you own a form of IP right, you may use it yourself, licence it, or sell (assign) it.

The general rule is that any right you are granted as owner of the IP may only be exercised by you. Any third party who attempts to use the right without your permission will be in breach of your IP. You'll then have a range of enforcement actions available to prevent them from carrying out further activities and receive damages if you have suffered any.

Top tips for start-ups

• IP is a valuable asset to your business, so ensure to stay on top of what you own and what you want to register
• Start early with registration. You don't want to risk others registering rights before you, meaning you can no longer use it
• When entering into agreements with others, always be sure to consider the ownership of any IP that may be created and ensure you safeguard your current IP
• Should you wish to permit a third party to use your IP, the most flexible option available to you will be to licence the IP as there are multiple ways for licensing to be structured.