How to protect an idea or innovation
Published 01.09.08 at 10:30
It is essential that you protect all your IP rights, in so far as you are able, before and during your negotiations with third parties. There are numerous mechanisms by which your idea or innovation might be protected. The appropriate mechanism will depend upon the nature of your idea or innovation; for example:
If you are at the early ideas stage of a project there are ways in which you can protect those ideas. As a starting point you need to make sure your idea and all discussions relating to it are kept confidential. You can do this by obliging the other party to sign a confidentiality (or non-disclosure) agreement before you enter into discussions with them. This is also relevant to an idea for the format of a television show which is not protected by copyright law.
When you approach third parties to discuss a project, you should ensure that it is clear you are discussing matters with them in confidence. The most effective way to do this is to ensure they sign up to a confidentiality agreement. This, when signed, will allow you to discuss confidential information with other parties safe in the knowledge that, should the third party discuss or use your idea in a non-confidential environment, they will be liable for breach of contract. The agreement legally binds the parties to keep information confidential and not to use it for unauthorised purposes or disclose it to unauthorised third parties. Confidentiality agreements ought to be considered, for example, when discussing a project with prospective partners, or other third parties such as manufacturers, commissioning editors or producers, etc.
If your idea or innovation has an industrial application then you may wish to consider applying for a patent. A patent affords monopoly protection to an invention that is new, involves an inventive step, is capable of industrial application and is not specifically excluded from patentability (eg as a pure discovery or scientific theory). A patent gives the holder a monopoly for up to 20 years (subject to payment of the required fees).
An inventor may apply for a UK patent either through the UK Intellectual Property Office (UK IPO), or at the same time as applying for patents in other jurisdictions, by filing an application at the European Patent Office (pursuant to the European Patents Convention) or the International Bureau (pursuant to the Patent Co-operation Treaty, and designating the UK as one of the territories in which patent protection is sought. This process does not result in the grant of a 'European' or 'International' patent, since a patent is a territorial right limited to a particular country, but rather a bundle of individual national patents in the countries designated.
If you think your idea may be eligible for patent protection, it is vital that you do not disclose it to anyone, other than in confidence (see above) before a patent application has been made. If you make such a disclosure, your idea is likely to lose its novelty and will not be patentable.
Design rights and registered designs
If your idea is in the form of a design, that design may be protected by a 'design right'. Design rights arise automatically upon creation of the design and gives the designer the right to prevent someone from copying their design. To benefit from design right protection a design must be original and recorded in a design document or article. The designer must also be a 'qualifying person' under the relevant legislation (essentially, a UK resident) or the design's first marketing must take place in the UK. Design right can last for up to 15 years.
However, if you are the designer and consider your design to be marketable, you may wish to apply to register your design with the Designs Registry in either the UK or with OHIM (the European equivalent). The design must be new and make a different overall impression on the informed user of the relevant product than any prior design. A successful application will benefit from protection as a registered design. Registered design protection can last for up to 25 years and gives the designer the exclusive right to make and market articles to the registered design.
Copyright protects literary (which can include databases), dramatic, musical and artistic works and provides the copyright holder with the right to prevent anyone copying their work. Copyright also arises automatically upon creation of the work and, in most cases (although not all), affords protection for the life of the author plus 70 years, and always for at least 25 years after creation. It is a good idea to retain all development material in order to be able to demonstrate your independent creation of the copyright material. See: How do I copyright my work?
It may also be possible to register a logo or a name as a trade mark to protect your brand. This does not protect any aspect of the products themselves but rather your commercial uniqueness and identity. A successful brand can be used to market a range of products (think of Nike or Apple for example). The best brands are made-up words or distinctive logos, which will stand out from other business dealing in similar products. See: How do I protect my company or brand name?
Please note that this article discusses the legal position in the UK at the time of publication. It provides general information only but is not to be regarded as legal advice. You must take advice from a specialist lawyer in relation to your specific circumstances. Further, you should seek additional legal advice when dealing with parties based in other parts of the world or works originating from other parts of the world as the legal position may vary.