UK: All Businesses have Intellectual Property: Part 3

Last Updated: 16 September 2004
Article by Emma Lambert
This article is part of a series: Click All Businesses have Intellectual Property: Part 2 for the previous article.

In the last of her three part series, Emma Lambert looks at inventions and know-how. She will help you to decide whether you or your business owns these intellectual property rights and if so, suggests ways you can protect them – some of which are free and easy to put in place.

Inventions - Patents

  • What is a Patent?

A patent is a monopoly right given to an inventor to protect their invention in specified territories. Patent protection is available for products or methods of doing things that are new; not an obvious step on from what is already known and has industrial application. Patents can be for such things as chemical compounds, products or discrete elements of a product; such as an electrical connection.

Business methodologies, medical treatments and scientific discoveries cannot be patented however. Governments do not consider it to be in the public interest to grant monopoly rights, which effectively prevent access, over medical or scientific advances.

  • Who owns a Patent?

The general rule is that the owner of the patent will be the person who invented the subject of the patent and successfully applied and obtained its grant. However, inventions arising through employment, employer will own the patent, if he applies for it. Nevertheless, the inventor will be identified on the application and the published details of the patent. Of course, in some circumstances employers will have arrangements with their employees whereby they have joint ownership, or allow the employee an interest in the patent. If you are employed in an environment where you invent things you may wish to consider such ownership when you are negotiating your employment contract.

  • How do you protect an Invention?

You can protect an invention in two ways. The first is to keep it secret – particularly until you have made a patent application. If you fail to keep the details of your invention secret it becomes public and it can lose its novelty – which is one of the fundamental requirements of a patent. Further, someone else could make a patent application and obtain the benefit of the monopoly.

So, if you have an invention, file a patent application as soon as possible. The process of patent application is a specialist area and is best carried out by qualified patent attorneys. Patent attorneys are obliged to provide new clients with a free 30 minute consultation so the cost of the initial steps should not deter you from exploring patent protection. We work closely with various patent attorneys and can provide contact details of our preferred provider and of other reputable providers local to you.

The process of obtaining patents is complicated and if you require international protection it can be strategically demanding. Your patent attorney will be able to guide you through the application.

Part of the patent application is a stage of examination when other applications, patents and documents are searched to check that the invention is not already published. Therefore it is not possible for your legal representative or a patent attorney to tell you whether you will obtain a patent before the examination report has been reviewed.

One of the jobs of a legal representative regarding patents is to help their clients identify the best way for them to protect their intellectual property rights – recognising that the invention is/could be patentable.

Your legal adviser will also help you keep your invention confidential when you are meeting third parties to discuss manufacturing, funding etc… They can also help you if you run into complications such as a change in the ownership of the patent – drafting assignments if necessary. They will also advise you about the exploitation of your invention – negotiating manufacturing agreements and licences for example.

The main thing to remember when it comes to inventions and obtaining patent protection is to keep it secret and obtain advice about protection as soon as possible.

Know-how

  • What is Know-how?

Know–how is an underestimated intellectual property right that sits at the core of every business. It is the information that, through experience, you and your employees gather as a result of working in your business and the field generally.

It is the way that you do things, the procedures that you go through to get your particular results. It may include your development projects or recipes.

Know-how can be so important that it becomes a trade secret. A famous example is the secret recipe for Coca Cola. It can be important to differentiate between a trade secret and Know-how.

  • Who owns Know-how?

Ownership of know-how is a complicated area. The rule of thumb is that your business should own the know-how if it has been created by an employee, which they could not done had they not been working for you - your client lists for example. Of course, an employee may bring know-how to your business because of their experience in the field. This cannot be regulated, however you can prevent ex-employees using your trade secrets.

  • How do you protect Know-how?

There are various ways to protect know-how. If the information is highly confidential make sure only employees who need to be privy to the details are exposed to them. Make sure you have confidentiality agreements in place – either supplementary to their employment contracts or as a part of it. It is a good idea to have confidentiality clauses in all of your employee contracts; not just those of your employees who have access to sensitive information.

If your know-how is a method of doing something, your business structure, a recipe, something you can document - write it down and send it to your legal adviser to date stamp and hold in their deeds safe for you.

A good way to capture know-how is to have details of how it is developed. If your business is very good at delivering a service or making a product, document each of the stages of the service. Try to capture the essence of the production process that singles your business out from the rest. This is generally good practice, as by doing this you have clear records in the event that there is a dispute over creation and ownership of your intellectual property rights.

Your employees hold a substantial amount of the know-how of your business so make sure you keep talking to them; find out what they are doing on a daily basis. Ensure that if an employee leaves you have captured the information they may have gathered – if it is only in their head and not recorded, they can leave with it. If you have implemented a policy of documenting development of products, designs etc… do spot checks to ensure that the policy is being adhered to. The documentation process needs to become part of the daily routine. This can be as basic as recording clients’ contact details onto a database. It may sound ridiculous to suggest that employers should speak to their employees and find out what they are doing but often businesses overlook the expertise of their employees, missing valuable opportunities to capture intellectual property and exploit it.

The pervading message is to keep information concerning your business ideas, inventions, designs and new products confidential until you have suitable protection in place. If you think you have intellectual property you should speak to your legal adviser to get advice about identification and protection. Once you have your intellectual property suitably protected, you can then start to exploit it without the risk of losing it or it being hijacked by someone else.

If you are unsure about the intellectual property you have, invite your legal adviser to your business premises to carry out an audit. Frequently we can identify intellectual property assets that businesses are unaware of. Why give your competitors a helping hand when you can ask them for a licence fee?

©Pictons 2004. First published in Pictons’ "In the Know" email newsletter.

Pictons Solicitors LLP is regulated by the Law Society. The information in this article is correct at the time of publication in July 2004. Every care is taken in the preparation of this Article. However, no responsibility can be accepted to any person who acts on the basis of information contained in it. You are recommended to obtain specific advice in respect of individual cases.

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This article is part of a series: Click All Businesses have Intellectual Property: Part 2 for the previous article.
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