Protecting Your Idea
The following document briefly outlines the various means of protecting an idea. The document is intended only to give a general review of the law. There are numerous exceptions and complications to the principles outlined here. Always seek professional advice on any legal matter. Consultants Online accepts no liability for loss incurred through reliance on information given in this website.
A new idea can be protected in various ways, e.g by a patent, a registered design, copyright, design right or a trade mark. All these ways are generally referred to as Intellectual Property.
Some protection, such as copyright and design right, generally comes into force automatically when a new idea is created. Stronger protection, involving a patent or a registered design has to be applied and paid for. In some cases, more than one form of protection may be appropriate, for example to protect both the working of a new idea and its appearance.
When putting an idea on the market, it is important to make sure that someone else's protection is not being infringed by this action. Anyone can check whether an invention has already been patented by paying for a computer search of existing patents at the British Library or at regional patent offices with on-line facilities. A patent attorney will also carry out this search.
It is possible to take out insurance, both against being taken to court for infringement and against the costs incurred in taking action against someone plagiarising one's own idea. The holding of such insurance can in itself be a deterrent against plagiarism.
Copyright - 2 Dimensional Designs
Copyright is relevant to all original two dimensional works such as drawings, paintings, engravings, photographs, posters, graphic works or other such artistic works. Copyright only protects what is shown on the drawing etc. and it does not protect the general principle of the idea. This means that it would not be an infringement for someone else to use the same idea as long as the form in which the idea was expressed was not copied. Copyright protects only against copying of a work and not against the independent creation of the same work by another person.
Copyright confers on the owner the right to control the exploitation of the original work. The right covers copying or reproducing, adapting, publishing, performing and broadcasting of the work or a substantial part of it.
When the work is created, copyright arises automatically and so does not have to be registered or paid for. The copyright exists but it can be very difficult to prove in a court of law the date on which that copyright was created. It is therefore good practice for any inventor to keep an invention diary which details all the steps taken in the development of their ideas. Also the inventor should regularly sign and date original drawings, photographs of models and any other similar information and then have these witnessed and dated by someone a court would accept as independent and reliable. This witness should be someone the inventor trusts and who can be relied on to maintain the secrecy of those documents. The witnessed originals should then be deposited in a safe place and treated as valuable.
Copyright can be licensed or assigned outright to third parties, inherited and dealt with like any other piece of property. Generally, copyright lasts for the lifetime of the 'author' plus 70 years. There are certain exceptions and, as in all areas of intellectual property rights, professional guidance should be obtained if the inventor/author is in any doubt.
Copyright is extended automatically to all Berne Copyright Convention countries. Copyright protection is also extended automatically to all Universal Copyright Convention countries provided that the standard UCC copyright notice is placed on the article or design. The notice should consist of three elements, namely, the symbol © which is the capital letter C contained within a circle, the name of the copyright owner and then the year of first publication of the work (e.g. © Fred Bloggs 2002).
The owner of copyright is usually the author of the work, but if the author is an employee employed to create the copyright work in the course of his or her duties, the employer will normally own it. Generally a freelance artist retains the copyright even in a commissioned work, though there are exceptions to this rule.
Design Right - 3 Dimensional Designs
For three dimensional designs such as a new teapot shape, then Design Right replaces copyright for the protection.
Design right allows the owner to control the exploitation of his or her original design. The right covers making articles to the same or substantially the same design, and dealing in them. As with copyright it protects an author only against copying of the design and not against the independent creation of the same design by another person.
The period of protection for design right is 15 years from the embodiment of the design in a design document or prototype, or 10 years from first marketing of the design, whichever is the shorter period. After the first 5 years from the start of marketing, licences to reproduce the design must be granted to anyone prepared to pay a reasonable royalty.
Design right comes into force automatically and a similar procedure as described in the section on copyright above can be used for establishing ownership.
There are no marking requirements but preferably a mark similar to that used for copyright should be adopted, e.g. Design Right Fred Bloggs 2002. The design right can also be licensed in the same way as a copyright.
Unlike the situation with copyright, freelance designers lose their design right to the person commissioning a design from them.
Design Registration - 2 & 3 Dimensional Designs
This form of protection is available in aesthetically appealing designs which are either two dimensional or three dimensional. It applies to features of shape, configuration, pattern or ornament which appeal to the eye.
Protection is excluded for purely functional products and there is no protection for features whose shape is dictated by the need to match or fit other articles. In order for a design to be registered, it should be new at the date of application for registration.
Registered designs give the owner the right to control the exploitation of the design. It is not necessary to prove copying.
Registered designs last for 25 years if renewed fees are paid. The renewal fees are payable every 5 years.
Applications for design registration in the UK should be filed at the Designs Registry within the Patent Office in London or Newport. The applicant may be the author of the design or the person who, as employer or as the commissioner of the design, acquired ownership of it, or someone to whom right in the design has been assigned. An application fee is required.
An applicant can also apply to register a corresponding design in a large number of foreign countries. These foreign design applications are backdated to the UK application date (known as the priority date) if they are filed within six months from the date of filing the application in the UK. If application is made beyond this period, it is very unlikely that the foreign design applications will be successful.
Patents
A patent protects a new invention i.e. a technical development. An invention is patentable if it is novel, if it involves an inventive step, and it is capable of industrial application.
Certain things may not be patented. These include a scientific theory and a mathematical method.
To be novel, an invention must never have been disclosed publicly in any way, anywhere, before the date on which the application for patent is filed. If the invention has been disclosed, it will not be possible to obtain patent protection for it.
An invention must also be regarded as involving an inventive step. This means that the idea would not have been obvious to a person skilled in the field.
For an invention to be capable of industrial application, it must be possible to make or use it. This means that the invention must be at least theoretically usable in some form of apparatus or device, product, material or substance, or be an industrial process or method of operation.
The owner of the invention is the inventor or the person who as employer of the inventor acquired ownership of it, or someone to whom the inventor has assigned the right in the invention.
Applications for patents in the UK should be filed at the Patent Office in London or Newport. It is possible for anyone to apply for a patent by supplying a description of the invention, but professional advice should always be sought where possible, particularly if filing a complicated patent application. The extra expenditure involved in using a patent attorney is almost essential, mainly because the protection obtained depends on the wording used to describe the invention. The initial application can be a description accompanied by drawings. Claims which define in legal terms the invention for which legal monopoly protection is sought, can be filed within 12 months from the filing of the initial application.
When the patent application has been filed, the Patent Office gives the application a date and number. No further action is required by the inventor for up to one year but this should be an extremely active year. If the application is to go ahead, then the next step is to request a search by the Patent Office Examiner. This request for a search must be filed within the above mentioned 12 months. The results of this search are sent to the applicant.
Eighteen months after the application is first filed, the Patent Office publishes the invention. A further payment, for an examination stage, must be made within 6 months of the publication if the inventor wants to continue, having considered the Examiner's search report. The Examiner will then consider all the details of the application and decide whether to grant a patent or not. If the patent is granted, there will be no more to pay until annual renewal fees are required from the end of the fourth year after the date of filing. The UK patent lasts for a maximum of 20 years from the date of filing.
An applicant can also apply to register a corresponding patent in a large number of foreign countries. These foreign patent applications are backdated to the UK application date (known as the priority date) if they are filed within 12 months of the first application in the UK. It is usually not possible to file in foreign countries if this time scale is missed.
Filing the patent in other countries is expensive; it could cost upwards of £2,000 per country. However, the 12 months 'breathing space' after filing the initial UK application gives the inventor time to decide whether this expenditure is worthwhile.
Foreign patent applications can be applied for under schemes known as the European Patent Convention (EPC) and the Patent Co-operation Treaty (PCT). Both these schemes allow an inventor to apply, in one country, for national patents in other countries. The EPC covers European countries and is operated by the European Patent Office. The PCT covers many more countries world-wide. If there is a requirement to gain patent coverage in other countries as well as the UK, it may be that the EPC or PCT route may be more efficient. A patent attorney will be able to advise you on this matter.
Trade Marks
A trade mark is an identifying mark used by a person, company or other organisation to distinguish their goods or services from those of other traders in similar fields.
The owner of the mark can apply to have the trade mark entered on the Register of the Trade Marks Registry. This can be done either before starting to use that particular mark or afterwards. There are 45 classes in the Trade Marks Register and an applicant needs to be able to identify which class or classes are appropriate.
A trade mark is registerable if it is a distinctive means of identification of the goods or services claimed, for example, a newly invented word, or a new symbol or design. Marks can also become distinctive if they have been used for a long time in relation to the goods or services. Marks which consist of geographical names, or common surnames, or words which are purely descriptive of the goods or the character of the goods in question, are not usually registerable, at least not without evidence of distinctiveness through use of the trade mark.
The owner of a registered mark can sue for trade mark infringement anyone who uses the same or a very similar mark in relation to the goods or services for which the owner's mark is registered. Marks can be assigned and licensed to third parties.
A trade mark is initially granted for 10 years and is then renewable every 10 years. The registration can be kept in force for an indefinite period provided that renewal fees are paid, but may be removed if the trademark is not used for a continuous period of five years.
Applications for trade mark registration in the UK should be filed at the Trade Mark Registry at the Patent Office in London or Newport.
Under the terms of an international convention, an applicant can also apply to register a corresponding trade mark in a large number of foreign countries. These foreign trade mark applications are backdated to the UK application date if they are filed within six months of the first application in the UK. Unlike Patents and Registered Design, trade marks can still be registered in foreign countries after this six month period. There are several different routes for obtaining foreign trade mark protection. A patent attorney will be able to advise you on this matter.
Passing Off
The law of Passing 0ff is aimed against a person or company misleading or deceiving the consumer as to the origin of the goods, products or services by offering them in a very similar get up or design to one that is already on the market and has an established and considerable reputation.
Confidentiality
Prior to the publication of an invention, design or other work it is possible to protect it by the law of confidentiality. Put simply, if the work is submitted to a person by its owner and that person is made aware that the work is being shown in confidence, that person may not use or disclose the work without the consent of the owner for so long as it remains unpublished. Once the work has been published by or with the consent of the owner, or has come into the public domain without disclosure by the person to whom it was shown, that person cannot be restrained from disclosing it or using it unless a copyright or other Intellectual Property Right can be relied on by the owner.
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