We often meet companies and individuals that have run into problems that could have been avoided if the right steps had been taken. Here are the top five causes of IP problems:
1. Not performing any trademark clearance searching
Many people come up with great names for their businesses or products – memorable, inventive and guaranteed to attract business. Unfortunately good names for trademarks have often been thought of before.
Every business and product needs a name and choosing the right one is extremely important. If you choose a name that infringes a registered trademark or infringes unregistered common law rights you could be forced to change the name months or even years later -all your hard work in building the brand will be destroyed, and in the worst case scenario you could be sued for damages or an account of profits made from trading under the mark.
Free UK/EU trademark searching can be done here: http://www.ipo.gov.uk/t-find.htm
2. Not registering their trademarks
Not all business and product names can be registered as trademarks (e.g. if they are descriptive of the goods/services provided). However, those that are registrable should be registered for two main reasons.
Firstly, a registration can be used to stop third parties registering the same/similar name and demanding that you re-brand – that can be an expensive and unpleasant dispute.
Secondly, the application process acts as a clearance search for problematic earlier trademark registrations so if you obtain a registration you can be fairly certain that you won’t infringe any third-party registered trademark rights.
3. Not performing any patent searching
If your new product or process is protected by a third-party patent you might waste a lot of time and money in development and branding only to find that you can’t launch your new product without running the risk of being sued for patent infringement or taking a license from one or more patent owners.
Information obtained from patent searching can also help you develop your new products and processes as often other parties have solved the same or similar problems in the past.
Free patent searching can be done here: http://www.epo.org/searching/free/espacenet.html
4. Disclosing their invention without filing a patent application
The rules on patentability in the UK/EU (and most of the world) are strict in the sense that an application must be filed before any non-confidential disclosure of an invention.
For example, putting details of your new product (soon to be launched) on your website counts as a non-confidential disclosure.
File a patent application for any new invention that you want to protect before disclosing it. Otherwise you lose out on the chance of obtaining protection.
5. Ignoring IP ownership issues with commissioned works
IP in commissioned works is often owned by the person that actually does the work, not the commissioning party. Thus, if you pay someone to design a logo for your new company the designer will own the copyright. Similarly, if you hire a prototyping company to make your product then any invention they come up with to make the product work will be owned by them.
It’s important to ensure that all rights in commissioned works are assigned to the commissioning party. The best way to do this is to have a suitable contract in place before any work commences.
The main problems that start-up businesses encounter come from ignoring third-party IP and not protecting their own IP at the right time. However, there are also other complications and pitfalls that an IP professional will be able to help you avoid.