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Don’t allow your Big Idea to be lost on the high seas. Protect your intellectual property with Trademarks, Patents and Confidentiality.

Posted on: 24 Aug, 18

The key to protecting your Big Idea is to protect early, protect creatively and protect carefully.

Oury says...

Clark! I have an idea!

Great, Oury! I want to hear all about it but I know you have been working like crazy so come have a break, have four trapezoidal bars aligned on a rectangular base.

Clark says...
Oury says...

What are you talking about Clark?!

A Kit-Kat, Oury!

Clark says...
Oury says...

Well why didn’t you just say that?

Haven’t you heard? Some big-wigs at the European Court of Justice recently threw out Kit-Kat’s claim that they owned the four-fingered wafer shape and so it could lose its EU Trademark.

Clark says...
Oury says...

What is the world coming to? First fake news and now the prospect of fake Kit-Kats! How am I going to protect my Big Idea if a massive company can’t even protect its most famous product? I might just give up now.

Don’t give up now because the key to protecting your Big Idea is to protect early, protect creatively and protect carefully.

Clark says...
Oury says...

But I’ve got so much to think about with my Big Idea. What with all the other costs and things on my mind can’t I just leave this whole protection thing until I’m up and running?

Ideally not. The problem is that if you do not protect your intellectual property proactively and early, you might have to protect it defensively later. That can be far more costly and problematic.

Clark says...
Oury says...

I thought that might be your answer… so what’s first?

It’s a good idea to trademark a name as early as possible. You don’t want to put time, money and effort into building the Big Idea brand only to discover that there is a pre-existing rights holder who could prevent you from using the name or obtaining a court order making you account for any profits made under the Big Idea brand.

Clark says...
Oury says...

Hmm…but don’t you think the name Big Idea might already be gone?

It might be, Oury, but if it is then it may be sensible to change your name, or indeed you could develop a graphic instead and register this as a trademark instead. From January 2019, new UK legislation will enable you to register marks such as sounds, holograms and possibly smells! From there you can begin to build a brand, an online presence, connections and move forward in confidence with your Big Idea.

Any mark that can distinguish goods and services of one business from another can be registered as a trademark.

Trademarks have the added benefit of a potentially unlimited period of protection with the exclusive right to use the mark.

To get the strongest monopoly rights on your brand you should aim for inherently distinctive and original marks.

Clark says...
Oury says...

I’ve put a heck of lot of work into this Big Idea you know, Clark. I mean I’m excited to make a hologram and all but I want to protect the Big Idea itself, and not just its name.

Patents can be a great way to protect your Big Idea but it isn’t the right solution for everyone. An application for a patent can be used to protect products that can be made...

Clark says...
Oury says...

Like a mechanical device used in construction, or chemical compounds used in pharmaceutical products?

Exactly. Or a process that is a means of making something or of achieving an end result…

Clark says...
Oury says...

Would dying fabrics or mixing compounds to create cosmetics count?

Sure. However, I should make clear that software and software processes are very rarely patentable.

A patent will give you a monopoly over the use and commercialisation of your Big Idea for 20 years … by which time you will be how old, Oury?

Clark says...
Oury says...

Careful now, Clark!

Careful, too, with patents. The monopoly you get comes at a price. In the process of applying for a patent you will have to disclose the details of your invention and these will be made publicly available. The patent application process can take many months to finalise and can be pretty costly, especially when professional fees are taken into account.

Clark says...
Oury says...

But at least my Big Idea will be protected worldwide if it is patented in the UK, right?

Not quite, Oury. There are different rules in different jurisdictions and so being granted patent rights in the UK does not guarantee protection elsewhere. In theory, your Big Idea may be protected in the UK but this does not stop someone taking the idea and copying it in the US. Unless of course you apply for patent protection in the US (or any other territory), which requires an application in each place.

If you have the commercial capabilities to reap the benefits of a patent, either directly or through licensing and assigning the technology, then you should take steps to apply for the patent in key jurisdictions as soon as possible. Although disclosure of the invention in journals, online or elsewhere could negatively impact a patent application.

Clark says...
Oury says...

Hmm, I am keen to get my Big Idea out there and making waves as soon as possible to be honest.

As you know, I’m focused on the detail and there are additional ways that will help you protect your Big Idea.

Clark says...
Oury says...

How so?

Know-how!

Clark says...
Oury says...

That’s what I’m asking you, Clark. I don’t know how.

Know-how is the secret recipe to the Big Idea: all the plans, procedures, formulae, and other proprietary knowledge that you want to keep out of anyone else’s hands.

Know-how can be protected under the law of confidentiality. Protecting know-how in this way is more immediate and less expensive than patents and trademarks as it doesn’t need to be registered but does have the limitation of being harder to enforce and is more reliant on people sticking to their promises.

So, it should be just one of the bricks in the wall used to protect your Big Idea.

Don’t forget the simple steps you can take to protect your information by password protecting documents and restricting access to certain information.

Clark says...
Oury says...

I will have to share the secret recipe with those helping to build my Big Idea won’t I?

Of course, which is why you should always include express confidentiality clauses in your commercial, employment and consultancy/contractor contracts if you want to enforce secrecy around your Big Idea.

Employees are bound by a duty of confidentiality during their employment. Express confidentiality clauses in contracts of employment help to reinforce obligations during employment and can bind individuals even when they leave your employment.
Added to that, any intellectual property created by employees during their employment automatically belongs to the business, except for where the IP relates to a patentable invention so it’s always best to include an express IP provision in an employment contract to ensure all bases are covered.

A duty of confidentiality is implied into contracts of employment but it is prudent to include express confidentiality clauses to broaden the scope of information that can be protected post-employment. This can be extended to protecting confidential information belonging to third parties.

Clark says...
Oury says...

And if you use contractors?

Any intellectual property created by the contractor belongs to the contractor. That’s why it’s absolutely essential that any consultancy/contractor agreement contains strict IP provisions that make clear any IP created automatically belongs to the business upon creation.

You must therefore ensure that strict confidentiality provisions are included in any consultancy/contractor agreements in order to protect your Big Idea.

Clark says...
Oury says...

Can’t your secrets still get out in the course of meetings with third parties who you don’t formally engage with?

It’s a possibility, but with the appropriate use of non-disclosure agreements (NDAs), which is just another form of confidentiality agreement, you can mitigate the risk.

Clark says...
Oury says...

It’s a scary prospect but for my Big Idea to grow I will need to share it with people for a whole host of reasons.

Remember, it’s better to be proactive rather than reactive. So protect your Big Idea as early as possible. That idea of yours can really be what makes or breaks you. If someone with more resources or with the ability to move the process on quicker than you gets hold of your idea then they could build up a commercial advantage that you may never be able to wrestle back….. and as I said, that could break you!

Clark says...
Oury says...

Talking of breaks…where did that four finger wafer shaped chocolate biscuit go?

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We are but two fictitious characters throwing out ideas and comment to stimulate debate and collect information. As professional service firms, we are open minded people and think independent thought and debate is essential to help understand, as well as navigate, complex problems. By joves – doing business across Europe (and the world) is set to become a whole lot more complex in light of recent seismic political events. As businesses - we provide information and hopefully some wisdom - and we see this blog and its caricatures merely as a much more fun, perhaps slightly controversial way, of stimulating debate and collecting ideas. We’re searching for some true pearls of wisdom, and as we find them, we’ll share them with you.

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