Forms of IPR
Confidential information and non-disclosure agreements (NDAs)
Confidential information and non-disclosure agreements (NDAs)
Although not covered by any statutory IPRs, confidential information is closely related to, and often regarded as, intellectual property.
The most common form of protection for confidential information is a non-disclosure agreement (NDA). An NDA can protect you by documenting someone's promise not to use or pass on information about your idea. Anyone who breaks the terms of an NDA risks legal action.
NDAs can help to protect you at every stage of the development of your idea - no matter what other forms of IPR you have, and even long after your invention is on the market.
You can find many free examples of NDAs on the internet. It may however be wise to seek the advice of a patent attorney when constructing your own version.
Your main problem is likely to be persuading other people to sign your NDA. Many large companies take the view that NDAs only have a use when they are seriously interested in an idea. That can only be after they know what it is! (To overcome this problem, train yourself to communicate the business benefits of your idea without disclosing its novel aspects.)
NDAs are widely used in all forms of business, so you should certainly consider using them yourself. But remember that they are binding legal agreements, and use them only when both parties accept that significant disclosure is necessary.
In addition, NDAs can only restrain others from disclosing or exploiting specific and unique secrets which they get only from you. Any information that is already general knowledge is free for anyone to continue using, regardless of the NDA. Similarly, if the confidential information covered by the NDA later becomes public knowledge by some other means, then the original parties to the NDA will no longer be bound by it.
Know-how is undocumented information known only to you. It is similar to trade secrets. Without your know-how, others may find it difficult or unrewarding to exploit your idea. For example, you may know how to reduce production costs significantly by using conventional equipment in an unconventional way.
Know-how can be commercially valuable, and can be included in licensing agreements. However, genuinely valuable know-how is rare. There is also no way of registering it and its theft - usually by employees or associates - can be hard to establish.
Furthermore, if your know-how is information that ought to be included in a patent, you may risk invalidating the patent by leaving it out. You should always seek the advice of a patent attorney when considering what to treat as know-how.
Copyright protects for many years against the unauthorised copying or adapting of drawn, written or photographic descriptions of your idea. It does not protect the idea itself, but in some cases - for example computer code - may be the only effective way of protecting your IP.
Copyright arises automatically and is free. It is important because it can easily establish dates of origin of an idea, or of changes to an idea. However, it gives you no protection against someone who independently comes up with the same or a similar idea. A competitor may say that their idea is similar to yours by coincidence, or that your idea is a copy of theirs. How can your prove that your idea was the original?
The following steps may help you to prove that you are the copyright owner in a later dispute:
- Make written descriptions, drawings, photos etc of your idea and print them out or perhaps burn them to a CD or DVD.
- Place your documents or disc in a securely sealed envelope bearing a signed and dated statement from an independent witness, certifying that the envelope was sealed on the date when he or she examined it.
- Send the envelope by registered mail to yourself or a place of safe keeping, and keep the clearly dated postage receipt.
- The envelope must remain unopened until required by a court of law. (It may be advisable to have more than one envelope, in case your copyright claim is tested more than once. An opened envelope is no longer valid as proof of copyright.)
Unregistered design right (UDR)
Unregistered design right (UDR)
In the EU, unregistered design right (UDR) protects the outward appearance of a product, including its shape, pattern, texture and decorations. In some national UDR laws (for example, the UK) internal configurations may be protected even if these are invisible to the user.
UDR is similar to copyright in that it is free and gives you a right to prevent unauthorised copying for a number of years. However, there is no official design right register and so it can be difficult for others to know of your design.
UDR may protect those features of the design which are new, have an individual character, and which come from a ‘freedom' of design. It may not protect copied or routine designs; those which are immediately suggestive of other designs; and those parts of a design which are dictated by functional needs to fit or match with other components. For example, a novel wing tea pot can be shaped in many different ways, and so can be protected because the designer has exercised his or her design ‘freedom'. But a vehicle brake pad can only have one shape if it is to fit in the brake callipers. It therefore has no design ‘freedom' and so no protection.
UDR arises automatically when the design is created, but you should follow the same ‘sealed envelope' procedure described above for copyright to provide yourself with evidence of a priority date. This is because you can only take legal action against someone when you can prove that they must have copied your design, rather than made something similar by coincidence.
Though often useful as part of an IPR strategy, UDR on its own will not protect most inventions.
More robust protection for designs comes through formal registration, which can last up to 25 years. Applications can be made to most national IP offices, or to the European Union Intellectual Property Office (EUIPO) where a single application can be registered for the whole of the European Community.
The same criteria apply as for UDR: to be validly registered the design must be new, have ‘individual character' and be the result of a ‘freedom' of design. A single registration may protect patterns, ornaments, decorations and logos which are suitable for application across a range of articles (for example, a floral design applied to table linen, bedding, curtains, crockery etc).
You can take action against anyone who makes, sells, uses or imports articles which look like the article registered. Unlike UDR, there is no need to prove that another design was copied from yours - you only need to prove that it looks similar. Even designs which are similar by accident can be challenged by the owner of a registered design.
The application process is fast and relatively cheap, but design registration usually only makes sense if the outward appearance of your invention is going to be a strong selling feature.
A trade mark can be a word, slogan, logo or combination that distinguishes your product or business from others. Trade marks can be valid indefinitely if correctly used and maintained, so a trade mark associated with a popular brand name can be of enormous value to its owner.
The granting and registration of trade marks is administered by national IP offices, to whom you apply. For multinational cover you can make a single application for either an International Trade Mark under the Madrid system at the World Intellectual Property Organization (WIPO), or a Community Trade Mark (for protection in the EU) at the EUIPO. To avoid problems, you will probably need help from a trade mark attorney. (Many patent attorneys are also trade mark attorneys.)
Trade marks do not protect ideas, or products per se. But if you want to market your own invention, a trade mark could be a very worthwhile long-term investment. It might eventually become your most valuable form of IPR.
Patent systems exist in most countries and their purpose is to encourage the development of new technologies. A patent is a form of legal monopoly - the right to say: ‘This is mine and you cannot use it without paying me' - which governments grant in return for public disclosure of ideas. And that is all it is.
It is important to understand what a patent can and cannot do. Patenting your idea will not necessarily increase its commercial value. If no one wants your invention, a patent is unlikely to make any difference. But if your invention has commercial potential, a patent may be your only way of ensuring that you can benefit financially from it. Many inventors of commercially successful products acknowledge that they owe their financial rewards almost entirely to strong patent protection.
The cost and complexity of patenting can be a problem for many inventors. Therefore, a decision to apply for a patent should never be taken without careful consideration of several factors (see later). You should ideally seek the advice of a patent attorney before making your decision.
If you decide to go ahead, you should let a patent attorney represent you during the lengthy, complicated and rigorous application process. If you do not use a patent attorney, you run a large risk of making mistakes which could leave you with no effective patent protection. There may then be little prospect of ever benefiting from your invention.
In general, patents last for 20 years but only if annual renewal fees are paid.
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