|IP can make more trouble than the Lincoln imp (see The Legend Visit Lincoln)|
Reproduction licensed by the author
For the last twenty years I and countless others have been telling business owners in this region the positive case for learning about intellectual property ("IP"). There is a very powerful one. It can help businesses to establish themselves in a market by shielding them from competition. That is because the bundle of laws that we refer to as IP grants those who devise new products or processes monopolies of their inventions known as patents and a right to those who compose music or create games to prevent others from broadcasting, performing, publishing or otherwise exploiting their work known as copyright.
Too often my presentations in this vein are met with polite applause and the occasional question or discussion after the talk which probably explains why the UK, the country of Newton, Faraday, Watt and the first industrial revolution has trailed consistently not just Germany and France with similar populations and GDP in the number of European patent applications but even the Netherlands with one third of our population and Switzerland with an eighth.
So now I am going to try a different tack. One of fear. Those same monopolies and exclusive rights that can leverage your company's investment in branding, design, technology and creative output could threaten the very existence of your company and cost you plenty?
"How so?" you ask.
Well those same IP laws can grant monopolies to your competitors and impose restrictions on what you can make or sell and the name or style under which you carry on business that can be infringed quite inadvertently. If you are found to have infringed someone's IP right you could be injuncted (ordered by the court to do or refrain from doing something on pain of imprisonment for disobedience) and made to pay damages (compensation) or account for and surrender any profits that you have made from your wrongdoing and contribute substantially to the other side's legal fees and other costs. Some IP infringements are also criminal offences so in an extreme case you could be prosecuted and even fined or sent to prison if convicted.
"I understand that I could get into trouble if I copied someone's product or brand name," you say, "but all our research work, design and branding is done in-house and we are very careful not to copy anyone else's."
Unfortunately, that may not be enough for a monopoly can be infringed quite unintentionally. You may import a product made quite lawfully in China or some other country which falls within the claims of a patent granted by the Intellectual Property Office in Newport or the European Patent Office in Munich. If you did not know of the patent you should have done because nearly every British and European patent and patent application is published on the Espacenet, Google and other patent databases and all you have to do is look.
Easier said than done, of course, because patent searching is a skill that takes time to learn but there are plenty of people who will help you including Ged Doonan of Leeds Business and IP Centre on 0113 247 8266. You should also keep your ear to the ground and keep abreast of the technical literature.
Patents are not the only monopoly rights of which you should be aware. Businesses that register names and other words or logos as trade marks in relation to specified goods or services have the exclusive right to use their marks in relation to such goods and may sue anyone who used the same or similar sign in relation to the same or similar goods or services. The fact that you not have known of the registration is no defence. You should have made a proper search. If the registration or application would have shown up on a search you have only yourself to blame if you are injuncted and mulcted in damages and costs by the High Court.
There is also a registration system for designs in the UK and across the EU. Registration gives the person who registered the design "the exclusive right to use the design and any design which does not produce on the informed user a different overall impression" in "making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied" or "stocking such a product for those purposes." It is up to you to check whether the product that you make or sell falls within someone else's design registration. Again, the Leeds Business and IP Centre should be able to help.
You should review the patent, trade mark or design registers regularly and preferably use a "watch service" (a service that monitors patent, trade mark and registered design applications and warns of any that may may affect their client). Yet again, Ged may be able to help.
You will probably find that any legal indemnity insurance that you may have taken out specifically excludes intellectual property claims but you can get such cover from specialist brokers such as Sybaris Legal and IP or Safeguard IP.
There may be grounds upon which you can retaliate. Sometimes it is possible to apply for the revocation of a patent or trade mark or seek the invalidation of a trade mark or design registration either in the IPO or to counterclaim for such relief in any infringement proceedings that may be lunched against you. It is also actionable to threaten patent, trade mark or registered design infringement proceedings without justification.
So where to get more information about IP? Well the IP, the Chartered Institute of Patent Attorneys and the World Intellectual Property Organization has made some useful animations which I discussed in Animated Advice on 18 March 2016 4-5 IP. The only Business and IP Centre in the East Midlands is Northampton Central Library (see Northampton Business and IP Centre 28 July 2015 and there is nothing to stop your consulting the resources in Birmingham, Hull and Sheffield.
If you think that you may have a problem in relation to someone else's IP rights or you simply want to discuss this article, give me a ring during office hours on 020 7404 5252 or message me through my contact form. Over the next few months I hold on-line and person to person seminars on this topic around the region in conjunction with local stakeholders. If you are interested in coming do let me know.