1 Prepare for the long game
You can’t see or touch your IP, but it’s still an asset. That applies to ground-breaking products and designs, but equally to a distinctive brand name.
Patents protect new inventions; design registration covers the visual appearance of a product; and trade marks can protect the name of a brand, product or service. They can be effective individually or in tandem, says Robert Games, a patent and trade mark attorney and Managing Director of Albright IP.
“If you have a product you might register a brand name, seek a design registration for its shape and a patent for its technical function. These in combination should give you powerful rights,” he says.
A useful starting-point is to work out how much time you would need to create your assets from scratch, or how much a competitor would pay for them. Then you can create an IP strategy, setting out how you will enforce your rights.
If you have a product you might register a brand name, seek a design registration for its shape and a patent for its technical function. These in combination should give you powerful rights.Robert Games, Managing Director, Albright IP
2 Make your branding stick
You find the perfect name for your business. You produce a website, signage, marketing materials. Then a lawyer’s letter arrives on behalf of another firm that has already registered your chosen name as a trade mark.
Legal disputes and wasted investment can be avoided at the outset, says Robert Games. But he knows at first hand how hard that can be.
“The markets are getting more crowded,” he admits. “When we set up our product design consultancy, we spent two days trying to find a brand name that was free to use and that we were happy with.
“Finding an available name, then seeking trade mark protection for it, is an early cost for a business – but it puts you on the right footing. It ensures your brand marketing investment is going to add value.”
3 Gain while you wait
The UK Patent Office, like many of its counterparts around the world, has a long backlog. UK applicants currently wait around five years to have patent applications examined, says Robert Games.
However, protection starts from the moment of filing, allowing you to start selling the product. You can ask for your application to be accelerated if there are sound commercial reasons – but according to Games, there are advantages to waiting.
“You can’t change a granted patent, but you can make changes while your application is in the system,” he points out. “So unless you’re faced with a challenge, such as a potential infringement, it can be useful to have an application pending.”
Innovative businesses can gain a valuable windfall from their patents. Since 2013, UK companies have benefited from the Patent Box scheme, a tax incentive to promote research and development. Tech companies can save nearly 50% of their corporation tax bill.
4 Protect in every market
IP protection is territorial, so if you plan to trade overseas you need to file in every territory you plan to operate in.
In many countries, international conventions allow you to claim protection from the date you filed in the UK. However, you need to do so within 12 months of your UK patent filing, and within six months of a UK filing for designs and trademarks. And if you file for registration, you need to start using the mark to keep it alive.
Even big names get caught out when taking their brands overseas. Earlier this year McDonald’s lost its right to use the Big Mac trade mark across Europe after a challenge from an Irish fast food chain¹.
Games believes IP advice has often been overlooked as UK companies are encouraged to seek new markets beyond Europe after Brexit.
“If you’re going to invest significant sums into a new market, you need to be sure you are free to operate there with some security of knowledge that you won’t suddenly be bumped out by a third party making a bad-faith filing,” he warns.
5 Be prepared in China
China has been striving to improve its reputation on intellectual property. This year the country’s Supreme Court began handling IP appeals, a move widely seen as a response to the US trade dispute².
Nevertheless, Games says UK companies should be cautious about disclosing new product information to their Chinese manufacturers, intentionally or not, because they may file local design registrations.
“In many cases the filings in China might be invalid – but the cost to revoke them is significant,” he says.
“The principles of operating in China are the same as everywhere else, but the reality is that you have to be sharper in the way you file things. If you manufacture there, you absolutely have to protect there.”
At home or abroad, IP protection should form part of any firm’s business planning. “You have to be in it for the long game, and plan to take the right steps at the right time,” Games concludes.