Four key questions to ask to ensure your strategy
protects your valuable intellectual property.
A strategy for protecting your intellectual property
(ideas/patents, products/designs and brand/trade mark) should be a
crucial part of your business strategy, as it can be a key asset of
a successful business.
In particular, the following questions should be asked.
1. Is someone already using your name?
It is vital to do a trade mark search and check whether the name
of your product or service is the same or similar to someone
else's. Failure to do this may lead you into costly battles
defending your rights. Or you may find that your successful
business gets confused with another poorly regarded business with a
similar name, which may result in loss of reputation.
Get a professional to do a trade mark search for you in each of
your key markets, and do regular checks, as each country has
different rules around what is a "similar" mark, what
rights exist in a registered or unregistered trade mark, and how
you should search the relevant registers.
2. Has it been done before?
It is also important to check whether the concept behind your
product or services will infringe anyone else's IP rights. This
typically requires a patent novelty search. This exercise has the
added benefit of showing whether there are any expired patents that
you can use, or existing patents for which you should obtain a
licence, so you spend your time, money and effort on developing
something novel that you can sell or licence others to use.
3. Do you own your name / idea?
If you have a fast moving product, such as gaming software, then
sometimes its best to focus your money on registering your brand as
a trade mark. However, if you have designed a product that has a
distinctive appearance, other options such as a design registration
may be the stepping stone to securing ongoing exclusive rights to
make, use, sell or licence your core product.
Ensure you get a patent attorney to help you with the best
strategy for ensuring you own your intellectual property, and to
help you with drafting the necessary confidentiality and employment
agreements so there is no ambiguity as to who owns what.
4. Where do you want to go?
With the exception of copyright, intellectual property rights
are territorial – that is, a registered trade mark, design or
patent only provides the owner with exclusive rights in the country
of grant. It is therefore important to have a good strategy in
place in order to ensure you own your brand and ideas in all your
markets of interest, and a filing strategy in place so that you can
spread the costs for obtaining protection as the revenue comes
It is also important to note that the international nature of a
website means that you may be offering to sell products overseas.
This may lead to infringement of another person's IP rights;
again, it is best to do an appropriate IP search first.
In summary, make sure you do a search first and have a patent
attorney involved at the start of your brainstorming process, as
not doing so could lead to an exercise in failure before you even
get to put your business strategy into play.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
James & Wells Intellectual Property, three time winner
of the New Zealand Intellectual Property Laws Award and first IP
firm in the world to achieve CEMARS® certification.
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