7 ways to profit from your ideas

Protecting, Exploiting & Enforcing Your Intellectual Property (IP)

7 Ways To Profit From Your Ideas

Guides from Hillyer McKeown IP & Trade Mark Solicitors

www.hillyermckeown.co.uk

Hillyer McKeown IP Solicitors | 08444 177 177 | HillyerMcKeown.co.uk

IP lets businesses and individuals own the work they create arising out of ideas, innovation and creativity.

All businesses, whatever sector they operate in, own IP rights (IPRs). IPRs can be an important and extremely valuable business asset but are often inadvertently overlooked.

In this guide we look how you can protect your ideas, Trade Marks, Patents and Designs and importantly exploit them profitably for your business.

We adopt a pragmatic commercial approach to assist our clients to clearly identify, protect, exploit and enforce their IPRs with a view to turning ideas into profit.

1 Identify & Protect

Trade Marks (TMs) are symbols including words and logos (or a combination of both) that distinguish the goods and services of the owner from their competitors. To be capable of registration TMs must be distinctive for the goods and services to which they relate and be capable of graphical representation.

You can protect your TM through registration. A registered TM must be renewed every 10 years.

2 Exploit & Enforce

Once registered, you can exploit your TM in relation to goods and services which are included within the classes of registration and within the countries designated by the registration. You may also choose to sell the TM or licence others to use it.

You can enforce your rights in your TM by preventing others from using an identical or confusingly similar mark in relation to identical or similar goods and services without your permission.

Tip! You can put the ® symbol next to a registered TM to warn others against using it. However it is an offence to use this symbol for a trade mark that is not registered.

1. Trade MarksHow can you protect, exploit & enforce your Trade Mark



Even if you do not have a registered TM you may have a mark (brand name, logo or “get up” i.e. the look and feel) that you use to differentiate your goods and services from those of your competitors which is unregistered.

You can protect this unregistered mark if you can prove: • You have established a reputation /goodwill in

the use of the mark for the goods and services you provide;

• That a third party has made a misrepresentation that will lead to purchasers of such goods and services being confused about the source of the goods or services; and

• That you will (or are likely to) suffer loss and damage as a result.

2 Exploit & Enforce

You may still be able to exploit a brand which is not capable of registration but which third parties may still ask to purchase or licence in order to benefit from the goodwill attached to it.

You can enforce your rights in your unregistered trade marks via the law of passing off.

Tip! It is easier to take legal action against infringement of your registered TM, as opposed to an action for passing off which can be very difficult and expensive to establish.

2. Unregistered Trade MarksProtect, exploit & enforce your unregistered Trade Marks



Patents protect new inventions and cover how things work, what they do, how they do it, what they are made of and how they are made. To be patentable an invention must be:

• Novel

• Involve an inventive step i.e. not be obvious to the appropriate skilled person

• Be capable of industrial application

You can protect your inventions through registering a Patent. Once registered a Patent provides a monopoly right for a period of 5 years up to 20 years from application, provided it is renewed annually after the 5th year.

2 Exploit & Enforce

You can exploit your patent by selling or licensing it to a third party to use to generate an income stream.

You can enforce your rights in your patent and prevent others from making, using, importing or selling your invention without your permission.

Tip! Inventions must be kept confidential to be patentable. If you feel the need to speak to business partners about your invention prior to applying for a Patent make sure they sign an appropriate Confidentiality Agreement.

3. PatentsHow can you protect, exploit & enforce your Patents



UK Registered Design Rights protect the overall visual appearance of a product or part of a product but excludes features dictated by function. The design must be new and have individual character. It can extend to not only the lines, contours, colours, shape, texture or materials of a product but also to the ornamentation applied to a product.

You can protect your rights through registration. Applicants have a 12 month “grace period” from disclosure of a design in which to apply for registration. Protection is a monopoly and lasts from 5 years up to 25 years provided it is renewed every 5th year. Registration gives you protection for the visual appearance of the product but not for what it is made from or how it works.

2 Exploit & Enforce

You can exploit your Registered Design Right by selling it to others or granting them a licence to use it in order to generate income streams.

You can enforce your rights to stop others from creating designs which are too similar to your design.

Tip! If you register your Design there is no need to prove that your design was directly copied to enforce your rights.

4. DesignsHow can you protect, exploit & enforce your Designs



This right protects any aspect of the shape or configuration (whether internal or external) of the whole or part of an article for original designs that are not common place in the field of design in question. It does not apply to surface decoration, 2D designs or if it falls within the “must match” or “must fit” exceptions.

UK Design Right protection arises automatically with no requirement to register. It lasts for 15 years from the end of the calendar year in which the design was first created, or 10 years from being made available for sale or hire. A licence as of right is available within the last 5 years of registration.No right subsists unless the design is recorded in a document or an article has been made to the design.

2 Exploit & Enforce

Even if unregistered, third parties may still wish to purchase the rights in your design or use them under licence.

To enforce your rights you have to prove direct copying.

Remember: Different rules apply to EC Registered Design Rights and EC Unregistered Community Design. Please contact us if you require further information.

Tip! It is advisable to keep a note of when you first recorded the design and when articles made to the design were first made available for sale or hire and a trail of who has access to such designs. Information may be useful if someone challenges your rights in the design or if you believe someone is copying the design without your permission.

5. UK Design Right ProtectionProtect, exploit & enforce your Design Right



Copyright is a right to prevent copying. It protects:

• original literary, dramatic, musical or artistic works

• sound recordings, films or broadcasts

• typographical arrangements of published editions

Copyright does not protect ideas, just the form in which they are expressed.

Copyright protection arises automatically and cannot be protected through registration. The length of the protected period varies dependant upon the nature of the works and is generally for the life of the author plus a set period of time. More than one Intellectual Property Right may apply to a copyright work.

2 Exploit & Enforce

Once you have clearly expressed an idea, third parties may wish to buy your rights or use them under licence in the same or even in a different medium. :You can enforce your copyright by preventing others making copies or dealing in the copyright works without your permission.

Tip! To help protect your copyright work it is advisable to mark it with the © symbol, the name of the copyright owner and the year in which the work was created.

6. CopyrightHow to protect, exploit & enforce your Copyright



A Database is a collection of information which is organised in a particular way. Database Rights protect a collection of independent works, data or other materials which are arranged in a systemic or methodical way and are individually accessible by electronic or other means. There must have been a substantial investment in obtaining, verifying or presenting the contents of the database for the right to apply. The right covers both electronic and paper databases.

The right arises automatically with no requirement for registration and lasts for 15 years from the end of the calendar year in which the database was completed.

2 Exploit & Enforce

Your database can generate substantial revenue streams via sale or under licence to use to third parties who may wish to use the contents of your database.

You can enforce your Database Rights against people who extract or re-utilise all or a substantial part of the contents of your database without your consent.

Tip! Many databases are a collection of copyright works so when compiling a database you need to make sure you have permission from the copyright owners. People using databases need to be aware of the rights of the owners of underlying works as well as database right owners.

7. Database RightsProtect, exploit & enforce your Database Rights


Hillyer McKeown’s responsiveness, communication, guidance and cost control has been invaluable in supporting us in developing and implementing contracts in a foreign market. Based on our experience to date I would have no hesitation in recommending them as an excellent company to support the legal aspects of your Intellectual Property Portfolio

Dr David Rowles Chief Operating OfficerExcelsyn Molecular Development Ltd

“ “

Hillyer McKeown IP Expert Joanne Shelley

Joanne is a Partner and Head of Company Commercial at Hillyer

McKeown Solicitors and acts for a wide range of clients from

individuals, investors, OMBs, SMEs to PLCs and investors.

She regularly advises upon issues covering patents, trademarks

and passing off, copyright, design, defamation and confidential

information.

With substantial commercial expertise reviewing commercial

agreements and resolving disputes arising out of commercial

agreements, Joanne is able to provide pro-active commercial advice

before agreements are entered into, how to avoid common pitfalls

and the options available when things go wrong.

Joanne is also experienced in seeking and resisting injunctive

relief including search and seize orders and is one of the few court

appointed Supervising Solicitors for such orders in the North West.

Joanne Shelley

Partner & Head of Company Commercial

Tel: +44(0)1244 318131

DD: +44(0)1244 616 624

Mobile: +44(0)7090 692 776

Email: [email protected]

Joanne and her team have been excellent in supporting and guiding us through some testing times. Their speedy and efficient advice enabled us to enforce our IP rights to protect our position in the market place when potential infringers attempted to copy our market leading GERM WARFARE cleaning products. They have also helped us to fully exploit our IP rights by assisting us to identify and exploit these through robust commercial agreements which are already starting to make us money.

Paul WardManaging DirectorParagon PE Ltd

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Our IP Clients

7 ways to profit from your ideas

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