Protect your Big Idea and Know-How with Trademarks, Patents and Confidentiality

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.

A Kit-Kat, Oury!

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.

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

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.

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.

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.

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...

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

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?

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.

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.

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

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.

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.

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.

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.

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!