UK: An Introduction To IP Considerations For Technology-Based Business Ventures

Last Updated: 30 April 2018
Article by Dan Cooney and Dominic Forsythe


Inventors are often unaware of the potential variety of IP rights they could obtain to protect their technology, particularly design rights and how they can complement patents. This paper aims to assist new and developing businesses, by exploring key points in connection with patent and design protection, and suggests strategies for developing and managing an IP portfolio that can be used to protect and grow a business.

Overall Strategy

A strong IP portfolio has a mix of rights. Whilst it is possible for one patent to be critical to a particular technology, strong protection is more often achieved through several rights, perhaps of different types.

For example, potential competitors will consider their position carefully if a product is protected by both patents, directed to different technical features, and registered designs directed to aspects of the product's appearance. A strong IP portfolio discourages competitors from producing a competing product, or encourages them to seek licences.

Therefore, it is important to constantly review any technological or aesthetic developments of a product and to consider whether further IP protection can be obtained.


An important consideration in obtaining patent or registered design protection is the avoidance of self-anticipation. The subject-matter of a patent or registered design must at least be new compared to what is publicly available before the application is filed. As such, inventors should recognise that their own pre-filing disclosures could be detrimental to obtaining a granted right.

Although some territories provide 'grace periods' prior to the filing of an application, in which certain disclosures can be ignored, these vary around the world. Therefore, an entrepreneur with international ambitions for their business is well advised to file patent or design applications before disclosing their idea to the public.

In practice, it is often necessary to discuss an idea with investors or business partners before deciding to file an application. Such discussions can be conducted confidentially (with or without a non-disclosure agreement) without jeopardising a subsequent application, as long as that confidentiality is observed.


Patents are the best known form of protection for technological innovations. Some fields are excluded from protection, but this varies according to country. It should not be assumed that patent protection is unavailable without consulting a patent attorney, who can provide specific advice for your situation.

For example, in Europe it is commonly mistakenly assumed that protection cannot be obtained for a computer program. However, provided (as for all applications) there is technical innovation associated with the invention, patent protection can often be obtained. The computer program exclusion only really becomes problematic when the underlying innovation is itself in an excluded area (such as a business method or a method of playing a game), rather than being technical in nature. In these cases a patent attorney may still be able to advise you of an appropriate strategy to optimise your rights.

Timing of Filing an Application

For engineering and IT inventions, if it is clear how an idea would be put into practice, it is often possible to file a patent application before the invention has actually been implemented. For chemical or biotechnological inventions, it is usually necessary to have experimental data supporting an invention before an application is ready for filing.

In either case, an application should be filed as early as possible (once sufficient information is available) to minimise the prior art that can be cited against the application. To get the right information for your specific case, discuss this issue with your patent attorney.

Choosing Countries in which to Obtain Protection

It is a business reality that patent protection can be expensive if international protection is required. However, delays in the patent timeline can be exploited to ensure that costs are not incurred unnecessarily.

Filing a first patent application starts a one-year term in which corresponding applications may be filed in other countries and be treated as filed on the same date as the first application. This is known as claiming 'priority'.

A common strategy is to use the priority year to assess whether the invention is commercially viable. Meanwhile, the application's strength can be assessed using the results of a search performed by the patent office at which the application was filed.

Towards the end of the priority year, it can then be decided whether to continue with the application or whether it should be abandoned. If further applications are to be filed, the PCT (Patent Cooperation Treaty) system can be used to further postpone the costs of a wide-ranging filing strategy, and the final decision as to which countries to pursue protection in. Your patent attorney can discuss this in more detail with you.

Design Protection

Design protection is less well known than patent protection, but can be a valuable part of an IP portfolio. Design protection can be 'registered', meaning an application must be filed, or 'unregistered' meaning protection is automatic if certain criteria are fulfilled. Unregistered design protection has similarities to copyright, requiring proof of actual copying to show infringement.

Designs provide protection for an article's appearance. The look of a product can be critical to its success, irrespective of the underlying technology. As such design protection can be an integral part of an IP portfolio.

An advantage of registered designs is that they are typically much cheaper than patent applications, and are granted more quickly. It is not uncommon for design protection to be ten times cheaper than patent protection in a given jurisdiction, with the time until a granted right is issued being much more than ten times shorter. This can make it a highly desirable first right to obtain for a start-up company with plans to release a series of products.

The speed and cost differential relative to a patent is often due to a lack of examination of the validity of a design before it is granted. In that case, the design's validity is only tested when the right is enforced. It might seem that the uncertainty of the validity is a disadvantage to the right-holder. A similar criticism could be that it is difficult to establish the scope of protection offered by a registered design. However, any uncertainty is often advantageous to the right-holder because potential infringers are also faced with the same legal ambiguity. As such, registered designs can be a useful tool in discouraging competitors or when negotiating licences. Furthermore, securing any form of registered rights for your development may assist in securing vital investment.

Trade Marks

Trade marks are often overlooked when developing a new technology. However, trade marks are an important way to extend an IP portfolio and protect an invention. Furthermore, trade marks have the advantage that they offer a right that does not expire (in contrast to patents and designs, which have a limited lifetime). In particular, the development of a strong brand and associated marks whilst a product is covered by patent protection can build brand and product loyalty. Such loyalty can be exploited to maintain market dominance even after patent protection expires.

It is recommended to seek advice regarding trade marks as soon as any desired brand names and logos are being considered and before resources are committed to developing the brand identity. In particular, it is desirable to seek advice regarding whether you will be free to use a particular mark and whether there may be particular issues with obtaining trade mark protection to prevent others from using the mark or a similar mark.

Freedom to Operate Searches

A common misconception is that ownership of IP associated with a product gives an automatic right to make and sell that product. However, patents and registered designs are best viewed as 'negative' rights, which allow the owner to prevent other parties from using the invention or design. They do not provide an automatic right to perform the invention or use the design.

It is possible for pre-existing patents to be infringed by a new product, even if that product embodies a new invention covered by a new patent. In that case, it is necessary to seek licences to the pre-existing patents before the new product can be manufactured and sold. As such, licences to third party rights can form an equally valuable part of an IP portfolio as IP that is directly owned, as they permit a licensee to continue their business. Alternatively, the new product can be adapted to avoid falling within the scope of the prior patents.

It is normal for an inventor to be unaware of pre-existing rights. However, it is possible to perform a 'freedom to operate' search of existing rights, to find those that are potentially relevant.

Such searches should be integral to any technology strategy, to avoid unexpected allegations of infringement of other parties' rights. Continuous searches can be implemented, to find applications as they are published and so ensure that an inventor is always as well informed as possible about his competitors' IP position. Such information can also be helpful when seeking investors, who will want to know as much as possible about the IP landscape in which their potential investment will exist.


When managing an IP portfolio, a variety of rights provides the best protection for a growing business. In order to develop a strong portfolio, it is important to continuously evaluate not only new products, but changes to existing products and changes to manufacturing methods to ensure that all your innovations are well protected.

Originally published 5 June 2017

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Haseltine Lake LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Haseltine Lake LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions