Protect Your Idea - And Yourself

Rather like the title deeds for property, your IPR needs to make clear the precise limits of what you claim to own. Getting those boundaries in place takes real skill because it can often be very difficult to be precise about where an inventive step begins and ends.

Competitors who want to copy your idea will most likely argue that it isn’t original and that your IPR - in such cases usually a patent - is invalid. If they can produce enough evidence to convince a court, you may lose some or all of your IPR. To have a defence you need to ensure that the key features of your idea are fully and clearly described in your IPR.

Not necessarily you. If you’re in a job where you might contractually or reasonably be expected to contribute new ideas, the IP may belong legally to your employer. And if you’re a student developing an idea as part of your coursework, your university may lay claim to a share of the IP on the grounds that you’ve benefited from the use of their resources. If there’s any doubt about where you stand with an employer or academic institution, discuss it with them before doing any significant work on your idea - but first take the precaution of protecting the inventive step in your own name and seeking the advice of a patent attorney.

An independently recorded date of origin can be the clincher if one or more other inventors come up with very similar ideas to yours at roughly the same time. It’s therefore important to establish a date of origin and all other critical dates as you develop and improve your idea. Some of the free forms of IPR can do this better than the ‘paid for’ ones, especially in the USA. The earliest date on a patent, for example, is the date the application was received into the patent system. The inventive step itself may predate that by months or even years.

Also known as confidentiality agreement or confidential disclosure agreement (CDA). While not strictly speaking IPR, NDAs deserve a place of importance on your IPR menu because they have two powerful uses:

• As sole protection for an idea that isn’t much more than a thought - for example, a new way to market an existing product, or an idea for a TV series.

If you want to sell such an idea to someone capable of exploiting it, get an NDA signed before disclosing anything. This is because an idea that can’t be given any kind of uniquely identifiable two- or three-dimensional form is one of the hardest things to protect. Even if you write it down, copyright (see later) may not be much use as it only protects the words you write from being copied and doesn’t protect the thinking that lies behind them. But if someone signs your NDA and then uses your idea without permission or payment, you may be able to sue for breach of confidence.

• To protect any discussions or dealings concerning any idea at any stage, irrespective of what other forms of IPR you may also be using.

This is a good way - often the only way - to make progress with an idea in the early stages, when you’re still researching its potential and don’t yet know if more expensive protection is justified. Judicious use of NDAs can help to protect you at every stage - even long after your product is on the market.

In theory you can draft your own NDA for nothing, then discuss your idea in relative safety with anyone willing to sign it. (See Model non- disclosure agreement.) In practice it’s not easy to get companies to sign. Many large companies in particular won’t sign NDAs until there is, in their view, something confidential to talk about. That usually means after they know what your idea is. It’s actually a sensible attitude when you understand their reasoning.

First, few companies want the burden of storing and honouring for several years a multitude of non-beneficial NDAs. As a manager at one major company told us: ‘NDAs have a legitimate use, but not at a first meeting. I see a lot of inventors and usually know within seconds if an idea is going to be of any interest to us. Very few are, so there’s no point going through the rigmarole of an NDA if it’s all over a couple of minutes later. NDAs only start to make sense when we’re seriously interested in an idea.’ To get over this hump you need to learn how to communicate at first meetings the profit potential of your idea (the only thing that turns most companies on anyway) without disclosing your inventive step. That shouldn’t be any more difficult than describing the plot of a movie without giving away the ending.

Second, companies need to protect themselves. A big worry, justified by court cases, is that your inventive step may already be known to them, so they may want evidence of a patent application (the filing date and content of which are indisputable) to head off any risk that you might sue them later for using ‘your’ idea. They may refuse to discuss anything but a patent and may even insist on your signing a document stating that they won’t be bound to confidentiality.

Another of their worries is that they might find it difficult to discuss your idea without disclosing confidential information of their own, which without some precaution could result in industrial spies queuing at their door touting bogus inventions. Some companies may not only refuse to sign your NDA but will insist that you sign their NDA before any meeting. If this is acceptable, check their NDA carefully before you sign to make sure it doesn’t unreasonably restrict your own future activities. Ideally, get the opinion of a patent attorney or solicitor about the degree of risk you’ll be running.

(It may be worth mentioning our own practice here. When assessing ideas for inventors, we require them to agree to our own standard NDA - read it at Confidentiality - which binds us not to disclose for a minimum of five years. In our view it protects inventors adequately while sparing us from having to consider, store and abide by a large number of individual and different NDAs.)

NDAs are now a widely accepted tool for protecting information exchanges and business relationships so don’t be afraid to use them yourself. But despite their low cost and relative simplicity they’re still serious and long-lasting legal agreements, so don’t cheapen the currency by using them indiscriminately, especially for first meetings. Instead, train yourself to communicate skilfully without disclosing. That could well get you a lot further.

Advantages

• NDAs are cheap, or free if you draft your own or adapt our Model non-disclosure agreement (next page).
• They’re quite powerful.
• They’re well understood in the business world.
• More than other forms of protection they can be tailored to specific circumstances.

Limitations

• Many people and organisations - particularly large companies - will refuse to sign an NDA.
• If your NDA is breached you may either never know, or be unable to do much about it.

Strategic use
Use NDAs to protect you at every stage of your idea’s development, no matter what other forms of IPR you may have. They can be particularly useful for delaying the need to file a patent application (see Patent > Strategic use later). Do use NDAs with restraint though, as the message they give out is ‘I don’t entirely trust you’ and that may not be the best way to win people over. NDAs are rarely acceptable or necessary for first contacts or meetings, or for dealings with professionals who observe confidentiality as a matter of course (ask if in doubt). Ideally, restrict them to situations where both parties recognise and accept the need for a formal confidentiality agreement.

Competitors who want to copy your idea will most likely argue that it isn’t original and that your IPR - in such cases usually a patent - is invalid. If they can produce enough evidence to convince a court, you may lose some or all of your IPR. To have a defence you need to ensure that the key features of your idea are fully and clearly described in your IPR.

Copyright gives worthwhile protection against the unauthorised copying or adapting of drawn, written or photographic descriptions of your idea or inventive step.

It only protects the precise form of expression or description and not the idea itself, but in some cases - for example computer code - that may be adequate and may indeed be the only effective way of protecting what you’ve got.

As long as all the work is clearly your ownand not copied from someone else, copyright arises automatically, so in theory you needn’tdo anything special to get it. But it’s usually associated with published (and therefore disclosed) works such as novels and music, and in your case you may be a long way from public disclosure. You therefore need to carry out the following simple procedure to back up any claim of originality you may need to make. Even if you plan to use other forms of IPR, do it as early as possible and repeat it whenever you make a significant change to your idea. It’s risk-free and establishes an earlier date of origin than, for example, a patent application would give you. If a dispute ever arises about origin, this date could be invaluable.

1. Make sketches, drawings, photos or even a video of your idea, model or prototype. Write down any text that someone else would need to copy to make use of your idea - for example computer code, the stages of a process or the rules of a game. Then write your name and the date on each document. Additionally or alternatively, burn a CD of all your data. If your idea involves software, CAD etc, keep and burn to CD all back-ups.
2. Place all documents and CDs in an envelope sealed in a tamper-proof way. For example, cover the glued flaps at both ends of the envelope with strong parcel tape.
3. Then either get someone whose word is likely to carry weight in court (perhaps not a close relative) to certify on the envelope that it was sealed on the stated date when he or she examined it; and/or mail the envelope
4. to yourself by registered post, and keep the clearly dated Royal Mail or post office receipt. Keep both envelope and receipt in a safe place and don’t ever open the envelope.
5. To keep track of what’s in your sealed envelopes - you may amass a collection of them over time - it may help to keep each sealed envelope and receipt in an unsealed envelope or file along with an identical set of documents.
6. The point of doing all this is to establish a date at which the copyright material was known to exist. That date may help a court to reach a decision if you ever need to defend your IPR.

Advantages

• Copyright is recognised internationally, doesn’t need renewing and lasts (if this is of any interest to you) for up to 70 years after your death.
• It’s free and there are no application formalities.
• Anyone who without your permission copies or adapts your drawings or text, or handles such copies, infringes your copyright and can be taken to court.

Limitations

• Copyright on its own gives you no protection if someone can use your idea without having to copy it.
• It only protects against deliberate copying, and won’t necessarily protect you if someone else innocently comes up with a very similar idea.
• There is no official copyright register and so no possibility of carrying out a search as you can with other forms of IPR.

Strategic use
Use copyright routinely to establish dates of origin, both of the idea itself and of every significant later modification or improvement. If you’re ever challenged about dates of origin those humble sealed envelopes could do more to save your bacon than any number of expensive patents.

For an idea with significant commercial potential you’ll almost certainly need other forms of IPR as well, but copyright on its own may be sufficient protection if the income to anyone from your idea is likely to be small. Reasoning: if your idea isn’t worth protecting more expensively, it probably isn’t worth copying.

Design right protects the design of three- dimensional articles. It applies to the non- commonplace design of any aspect of the shape or configuration of an article: internal or external, in whole or in part.

Design right gives you a right to prevent copying. It lasts for 10 years after articles made to the design are first marketed, subject to a maximum of 15 years’ protection from the date you created the design. But during the last five years anyone will be entitled to a licence from you, with or without your co-operation, to make and sell articles copying the design.

Excluded from design right are so-called ‘must fit’ and ‘must match’ features, where parts of one article are determined by the design of another. This mainly affects the design of components which physically connect or interface with something else, such as a power tool attachment (‘must fit’), and components which must conform to an overall design, such as vehicle body panels (‘must match’).

Design right operates in many ways like copyright. It arises automatically when the design is created, but you should follow the same ‘sealed envelope’ procedure as for copyright to provide yourself with evidence of a priority date. (In terms of the action you need to take, copyright and design right are identical so you can put everything in the same envelope.)

Advantages

• It’s free, simple and lasts a decent length of time, so use it early and routinely.

Limitations

• It covers you in fewer countries than copyright, so may be of limited use for a product with international potential.
• As with copyright, there’s no official design right register so it’s difficult for others to know of your rights.

Strategic use
More or less the same as for copyright. Design right can help establish dates of origin so use it routinely for that purpose, but on its own it probably won’t be enough to protect a product with substantial market potential.

Design registration protects the visual appearance of an object. It's administered by the Designs Registry at the Intellectual Property Office, to whom you apply. A single 'Community' application can cover you throughout the EU. The application process is straightforward, fast, and cheap (currently £60 for a UK filing, £600 for a Community filing). Protection is for up to 25 years and the initial fee covers the first five.

In law there are four features of design:

• Shape and configuration (three-dimensional features).
• Pattern and ornament (two-dimensional features).
  

The main official test is for function and morality rather than novelty. Drawings, known as representations, are central to the application. Adequate protection depends on giving your design the broadest possible definition, and on making separate applications for its different elements. An application for an important feature, such as the distinctive shape of a drinks bottle, is then less likely to be jeopardized by the non- originality of a less important feature such as a decoration on the bottle.

Advantages

• You can take action against anyone who makes, sells, uses or imports articles which look the same as or similar to the design registered.
• Design registration is relatively cheap and the application procedure is within the scope of careful DIY. (However, getting a really useful registration in all relevant countries takes skill, so you may need the input of a patent attorney.)

Limitations

• If you’re in an industry, such as fashion, where illicit copying thrives globally, infringement may be hard to detect and even harder to prosecute.
• Any protection may in practice be worthless if you can’t afford to take an infringer to court or pursue them for redress even if you win.

Strategic use
Design registration usually only makes sense if the outward appearance of your invention or product is going to be a strong selling feature. Even so, on its own it may be of little use against experienced commercial pirates. It is not a cheap substitute for a patent.

If you intend to market your own product you’ll need a trade mark: a word, device or combination of the two that distinguishes your product from others. Trade marks can be valid indefinitely if correctly used and maintained, so their potential value can be enormous. They don’t however protect ideas, inventive steps or products as such, for which you’ll need additional forms of IPR.

In the UK, trade marks are granted by the Trade Mark Registry at the Intellectual Property Office, to whom you apply. The cost is relatively modest (currently £200 for registration in one class of goods or service, plus £50 for each additional class you want).

For cover elsewhere, you can make a single application for either an International Trade Mark or a Community Trade Mark (for protection in the EU). For more details, see the Intellectual Property Office website. The more countries you want cover in, the more problems you're likely to run into so you’ll probably need input from a patent attorney, perhaps particularly one who is a member of the Institute of Trade Mark Attorneys.

Your chosen trade mark must meet statutory criteria and must be available for use in all relevant countries, but just because it’s deemed registrable doesn’t necessarily mean it will appeal to potential customers. Coming up with
an apt name and an apt image to go with it isn’t easy, so put plenty of thought and research effort into developing a trade mark and brand identity appropriate to your product, your business and your market.

Advantages

• A well-known brand name can be a company’s most valuable asset, so registering a trade mark to protect your brand could be the best investment you ever make.
• Even if your product flops, if your trade mark is a good one in its own right and can be applied elsewhere by you or someone else, it might still be valuable IP.

Limitations

• The value of a trade mark depends on how well it sells the product, which registration can’t influence.
• A trade mark doesn’t protect the product itself.

Strategic use
A trade mark probably isn’t relevant if you intend to license your IPR to a company. But if you want to market your own product it could be extremely good long-term value for not much money, especially if you see your business expanding beyond your original invention. It’s not a form of IPR that occurs readily to most inventors but if you want to be an entrepreneur as well you may need to give it top billing when considering an IPR strategy.

Trying to explain patents is like trying to explain cricket. Include every last detail and eyes fog over before you’re even half done. Reduce it to a few bullet points and out go the subtle, cunning bits that win or lose matches. We’ve tried to strike a useful balance here, but be aware that there is more to it than this.

By now you should have seen enough patents in your prior art searches to know roughly what makes a patent tick. Let’s just repeat what we hope you’ve already taken on board - that the engine of a patent is its claims. The rest is mainly bodywork. Commercially valuable patents have claims equivalent to a rocket motor; at the other end of the scale, there are millions of 50cc mopeds.

A patent is a form of legal monopoly - the right to say: ‘This is mine and you can’t use it without my permission’ - granted by governments in return for public disclosure of new technology. And that’s all. Whether that monopoly has any commercial value, or is even enforceable, is an entirely different bag of worms that patent authorities don’t take any responsibility for.

Patent systems exist in most countries and their common intention is to encourage the commercial exploitation of new ideas. In general, patents last for 20 years but only if annual renewal fees are paid.

Advantages of a patent

• Applying for a patent (as opposed to getting one) gives you a freedom to disclose that can enable much faster development of your idea.
• The ability to refile an application can be used tactically to extend your protection without incurring major costs, as long as you don't disclose your invention in the meantime and you’re prepared to accept the risk that you may lose your priority to others.
• The combination of written descriptions, drawings and claims means that a patent can define your inventive step much more precisely - and thus more defensibly - than other forms of IPR.
• A patent is usually essential for an idea likely to be valuable enough to attract predators. It can also have a ‘burglar alarm’ effect by persuading opportunists to look for easier pickings elsewhere.
• Without a patent - and a strong one at that - it may be impossible to interest potential investors or licensees.
• A patent can be a product in its own right. Many companies and individuals make a good living solely by licensing their patents and other associated IPR.
• Rightly or wrongly, patents are regarded as A Good Thing by many stakeholders and funders, who see them as a form of insurance. (This runs counter to the view held by many companies. We know of one that considered letting its patents lapse because it didn’t really need them any more. Its bank said: ‘Your choice, but the day you scrap your patents is the day we’ll end all your borrowing facilities.’)

Limitations

• By far the biggest drawback for most private inventors and small companies is the cost, which can greatly increase the risk of an already risky venture. You may eventually get it all back from licensing or trading profits, but you’ll probably have to bear at least the first few years’ costs yourself.
• Multinational cover may present you with a serious chicken-and-egg problem. It’s so expensive that if there are no other stakeholders to help you out, you may only be able to consider it if cost recovery can be built into a licensing agreement - but you may need that multinational cover in the first place to interest companies, and it then typically takes years to reach a licensing agreement.
• The rigid timescales of the patenting process introduce an element of urgency that you could well do without.
• Because the whole process takes years, it’s difficult to predict how strong or commercially valuable your patent will be by the time you get it.
• The official fees you pay don’t actually buy you any protection. You have to police your own patent and tackle infringers at your own expense. Even if you license your patent to a company, they may insist that you pay the costs of defending it.
• A patent can be challenged by anyone at any time and will, if the challenge is successful, be at worst instantly void and at best reduced in value. And the more commercially valuable the patent, the more it will attract challenges.
• Speculative and even trivial challenges to patents are rife, especially in the USA and especially when a wealthy company judges that a much poorer patentee can’t afford the court costs.

Strategic use
For reasons which we hope are now loud and clear, only consider a patent if there is strong objective evidence (not just your own wishful thinking) that your inventive step is likely to be worth a lot of money. In terms of when to file, take advice from a patent attorney. There’s a balance to be struck between filing early to establish priority over others, and filing as late as possible to delay the onset of major patenting costs. Resist temptation or pressure to file prematurely simply because that suits someone else. File only when you judge the time and circumstances to be right - and if you’re in any doubt whatsoever, get advice from a patent attorney.