As a partner in Ellisons’ corporate and commercial law team specialising in mergers and acquisitions and private equity, I am regularly asked to advise on issues relating to intellectual property (IP) and how it can be protected in order to maximise the value of the business on sale or make it more attractive to potential funders.
Crucially, there is rarely any protection against someone copying an idea, a concept or a proposal unless a formal Non-Disclosure Agreement (NDA) has been entered into. In order to obtain recourse under Intellectual Property law it is usually necessary for an expression of the idea to have been written down or otherwise recorded.
There are three main categories of IP from a legal perspective;
1. Copyright and design rights: Written materials / drawings / photos / sound recordings / physical designs and product design etc.
2. Trademarks: Protecting a brand or logo / business name / product name. Even unregistered trademarks can provide some protection, but for full legal protection trademarks should be registered where possible.
3. Patents: A formal registration process which effectively gives “monopoly” protection against copying a new invention or process for a specific period of time. You will need specialist advice from a patent attorney, but it’s also worth bearing in mind that if you disclose any information before an NDA is put in place, and before the patent application is made, you could lose your right to protect the invention.
Beyond those categories, IP can potentially include other items such as confidential information or know-how, goodwill and trade secrets. So, before your big pitch remember to:
- Mark any material you are presenting with its creation date and confirmation that it is protected by copyright.
- Conduct searches of trademark and patent registries (in all territories where you plan to trade) – simple internet searches can help avoid infringement of someone else’s IP.
- Identify your IP and consult with a specialised IP lawyer on how you can protect it.
- Consider filing patent and trademark applications before pitching to investors or launching your brand.
- If you are sharing confidential information and know-how, you should get the other parties to sign an NDA, but be realistic and mindful of the customer / investor perspective. They won’t want to put themselves in a position where they might be liable for accidental breaches.
- Don’t mark everything as confidential indiscriminately. Reserve this for information that is actually confidential.
- Go to a lawyer to put together terms and conditions for your business which deal with licensing and protection of IP. To select the most appropriate solicitor, look at those that have experience and a good track record in this area.
For more information, contact Jon Bloor.