Intellectual Property Guide

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Introducing Fred Lupton – Intellectual Property (IP) Attorney

I met Fred recently and started talking about the complexities and uncertainties of protecting IP for SME owners.

We are all busy and is this the best use of our time?

When should you consult an expert, What does it cost? What Guarantees are there? What are the downsides of non action?

Fred has kindly produced the Document below. Well worth a read.

I friend of mine registered the Goldfish Brand and when it was used as a Goldfish Card, he was happy with the payment he recieved.

Fred’s Article

SMEs and the world of IP – a disconnect?

There have been articles in the press of late regarding the high cost of maintaining Intellectual Property (IP) rights (http://www.telegraph.co.uk/finance/yourbusiness/11646391/Protecting-ideas-and-inventions-too-costly-and-complex-for-small-firms.html ): “Some 32pc of small-to-medium-sized businesses (SMEs) have spent money on securing IP rights in the past five years, and 22pc have invested more than £5,000. Meanwhile, 44pc do not feel that the money spent on IP was a worthwhile use of investment.”

The TRUNKI Design case (of Dragon’s Den fame), the subject of the article, has generated a lot of heat both in legal circles and business circles. The Court of Appeal in a controversial decision has overruled the High Court and found in favour of Kiddee, a look-alike Chinese import. The Supreme Court has been persuaded to review the decision of the Court of Appeal, and their views are awaited with interest. Margaret Briffa, head of the law firm managing Trunki’s case states “Trunki’s fate is now in the hands of the Supreme Court. The question is political as well as legal as the UK is very slow to uphold rights to the same extent as other courts in the EC, putting our domestic design businesses at a competitive disadvantage when we are supposed to have a level playing field”.

The Trunki case highlights the fact that the securing of IP rights is no guarantee of protection by the Legal system. However an SME that takes the view that the securing IP rights is a waste of time and money, should bear in mind that having no rights definitely means the SME can’t do anything at all in the face of a potentially catastrophic situation.It appears cost may be the major factor inhibiting British SMEs from getting to grips with IP. The Federation of Small Businesses has a list of recommendations for future reform. But for the foreseeable future at least, we have to live with the existing system, and where litigants with deep pockets may avail themselves of the High Court, Court of Appeal, and Supreme Court procedures. Legal costs and lawyer’s fees are very high, but the UK is not an exception in the Western World. Would the SME who (understandably) ignores IP in view of costs refuse to pay fire insurance premiums on its premises? Who to turn to when the prospect of IP litigation shows its head?

Somewhat paradoxically, at the high end of the IP business, Britons are doing very well and are awarded high honours, for example Luke Alphey of Oxitech was recently named by the European Patent Office as European Top Inventor of the Year: http://realbusiness.co.uk/article/30433-europes-top-inventor-accolade-for-british-innovator-luke-alphey.Dids Macdonald, who founded Anti Copying in Design (ACID),has been honoured with as an OBE in this year’s Birthday Honours List. And of course there is the example of Sir Jonathan Ive, who was recently made Chief Designer of Apple.

Apple is a case in point. Now one of the largest businesses world–wide, it was founded by Steve Jobs in his parent’s garage. So how did it transform from that start up into a hugely profitable business? There are of course many reasons, but one very significant reason in my view is the extremely scrupulous attention paid to IP, see the legal section of the Apple website, and witness the recent billion dollar law suits between Apple and Samsung. It may be easy to dismiss Apple’s example as a US phenomenon, where there are cultures of innovation and litigation. However similar principles apply to the UK.The question is how do we get from the current perhaps negative climate for investing in new ideas and products, to the very favourable situation that exists in the USA and other countries?

In my view small businesses, in order to control costs and time expenditure,should develop a degree of awareness of IP and make long term provision for IP within their existing business models and structures. .There are at least three areas where a business can make some long-term provision for ensuring that IP issues are properly considered and dealt with. The first is that there should be a person within the business who is familiar with IP matters, Patents, Trade Marks, Copyright, Designs, Know–how, Confidential Information. If there is not such a person, then either hire a suitable candidate, or detail someone to make him/herself knowledgeable. There is a huge amount of information available on the Internet see for example the Government IPO website https://www.gov.uk/government/organisations/intellectual-property-office . As part of this knowledge building exercise, that person should get to know, and build links with, the IP law firms in the district. There is a large number of IP firms operating within Hertfordshire, and of course we are close to the City of London, and the Holborn legal area: http://www.cipa.org.uk/pages/home. Many firms will offer free initial consultations for half an hour or so. Hopefully, the SME will find advisors that they feel comfortable with, and who will offer useful advice at reasonable costs.

A second area, where a business can make provision for IP matters, is internal housekeeping, administration and control. There is really a great deal than can and ought to be done, without involving external professionals. Record keeping of new designs, software, developing new products, improved methods for running the business. All of this is Company property, and may attract specific protection under the various IP laws. When developing a new product, it is important to record and archive all drawings, software documents and code, prototypes, minutes of important meetings etc. Drawings and software have copyright protection and should be dated and marked ©. The law loves a properly recorded paper trail, if matters ever came to litigation. All this information will be Company Confidential, and should be treated as such. Employees’ contracts of employment and day to day supervision should ensure that they respect the confidentiality of company property, and that they should only have access to product development information on a need-to-know basis. Problems often arise when an employee leave a company, taking with him important information.

A third area which a business may or may not get involved with, is that of obtaining from the Authorities monopoly rights (patents, designs, trade marks) for significant aspects of new products. This is done by employing IP professionals. Larger companies may employ in-house Attorneys, but smaller companies will have to contract an external firm of Attorneys to obtain the rights.   This can be a difficult business, because it is necessary to get matters in place at an early stage (Trade Marks may be an exception), and in the case of patents, before there has been publication of the new product to the world in general. There will therefore be significant expenditure on obtaining IP rights before market potential is confirmed. A lot can be said about techniques here for cost control, but the company that has had the foresight to develop an awareness of IP matters, will be in a much better position to exert cost control.

Fred Lupton is an independent Patent Attorney based in Hertfordshire. He may be contacted at fred.lupton@clara.co.uk .

 

 

 

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