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Spring / Summer 2019 Enterprise Articles

Director's Toolbox: Protecting your Intellectual Property

Protecting your Intellectual Property

One of the things that brings us business success and provides us with competitive advantage are our ideas and creative approach to the work we do. But, all too often to win the work, you must divulge that difference to the prospective client.

So, whether you are a photographer, graphic designer, architect, or a budding entrepreneur with a unique product or service, you will all be wondering how you can protect yourself from the more insalubrious operators out there who wouldn’t give a second thought to copying and making money out of something you have put all your thought and effort behind, without giving you credit or the fee.

So, what constitutes intellectual property (IP) and how do you walk the tightrope, balancing not upsetting the client and precluding yourself from winning the work, to protecting yourself and your ideas?

First, let’s be clear what counts as IP. It’s something unique. That you, physically, create. An idea alone is not IP. So, the idea for a book doesn’t count. The words you’ve written, do. Your design idea is not your IP. Your plans, drawings – even simple sketches – are.

Jon Bloor is Partner at Ellisons Solicitors. He is clear about the legal view of what constitutes IP and what you can protect. “Crucially, there isn’t usually any protection against someone copying an idea, a concept or an intangible proposal. It’s difficult to get recourse unless there is direct copying of an expression of the idea which has been written down or otherwise recorded.

“From a legal perspective, fundamentally there are three categories of IP:

•  Copyright and design rights: Written materials / drawings / photos / sound recordings / physical designs and product design etc.

•  Trade marks: Protecting a brand or logo / business name / product name. Even unregistered trade marks can provide some protection, but for full legal protection trade marks should be registered where possible.

•  Patents: A very formal registration process which effectively gives “monopoly” protection against copying a new invention or product for a specific period. You will need specialist advice from a patent attorney, but it’s also worth bearing in mind that if you disclose any information without having a non-disclosure agreement in place before the patent application is made, you could lose any subsequent legal fight if the invention is copied.

Outside of this, other IP could include confidential information or know-how, goodwill and trade secrets.”

The other perspective

There is another risk of infringing IP and that could be that you have won the work and you are forwarded information from the client such as a photo, image or design, and you don’t realise there is a copyright attached to the collateral. The result is that you are now being pursued by the originator for infringement.

“To avoid the reputational damage and financial loss of this happening, it is important to be proactive.” Jon continues. “Therefore, before starting work for a new client, ensure that your contract terms state that your client is responsible for ensuring that any material they provide for your use does not infringe the IP of third parties and that they will indemnify you against any losses if this happens.”

Take cover

Fundamentally, the trouble is that pursuing IP thieves takes time and money. A recent survey found many companies whose IP had been stolen couldn’t take legal action as they simply couldn’t afford it.

However, in some cases, if you’ve got insurance, you can. PolicyBee is an independent, digital broker providing specialist professional indemnity and business insurance. Kerri-Ann Hockley is Head of Customer Service and is convinced that it’s worth the investment.

“Taking insurance cover doesn’t just protect your cashflow by taking care of the legal costs – it also protects a valuable asset of your business.”

Surely, it’s a no-brainer then! As a business owner, you protect your other assets with insurance. From buildings, to equipment, to your staff. It seems silly to forget to protect, what could be argued as, your firm’s most valuable asset, its IP.

However, before you rush out and purchase a Professional Indemnity insurance policy, you should ask your broker precisely what’s covered.

“PolicyBee’s Professional Indemnity policies include cover for legal expenses if the policy holder is accused of infringing someone’s IP.” Kerri-Ann continues.

“Certain professional indemnity policies we offer (but not all) will also provide cover for you to pursue someone for stealing your intellectual property. You must however always check with your broker to find out exactly what is and what isn’t covered, as there may be limits and/or exclusions within the policy.”

“But, if your business is heavily reliant on your ideas and your potential exposure is large, a dedicated Intellectual Property insurance policy would be recommended. It’s therefore important that you speak to a reputable business insurance broker for the cover you want, or refer to The British Insurance Broker Association’s ‘find insurance’ page at www.biba.org.uk”.

So, here’s your tips / checklist for protecting your IP

Before the pitch or presentation

•  Always write on the document, photo or design that it is subject to copyright and the date on which it was created.

•  Get the client to sign to agree that the information is only for use in the pitch process and any use outside of this will be an infringement.

•  Do your homework: Searches of trade mark and patent registries (in all territories where you plan to trade) and simple internet searches can help avoid infringement of someone else’s IP.

•  Identify your IP and protect it: Take out insurance and consult a specialised IP lawyer if you have to. It’s not as expensive as you may think and a lot cheaper than court action. Agree an estimate before work starts.

•  Protect your confidential information: Where appropriate, consider filing patent and trade mark applications before pitching to investors or launching your brand.

•  If you are imparting or sharing confidential information and know-how, you should get the other parties to sign a non-disclosure agreement. However, be realistic as there may be an issue with whether this is practical, and the customer / investor perspective will be that they won’t want to put themselves in a position where they might be liable for accidental breaches.

•  Therefore, don’t mark everything ‘willy-nilly’ as confidential, as this will water everything down. Just mark the information that is confidential, ‘CONFIDENTIAL’.

•  Go to a lawyer to put together terms and conditions for your business. To select the most appropriate solicitor, look at those that have experience and a good track record in this area.

When you’ve got the job

•  Terms of engagement: Avoid a future dispute by agreeing terms with a client from the start. And put them in writing. Spell out what the client can do with your IP, e.g. if they can alter it, if they can use it multiple times, or just once and when their right to use it ends.

•  Make sure you sign an agreement / contract with the client that states that the client is responsible for ensuring that any material they provide for your use does not infringe the IP of third parties and that they will indemnify you against any losses if this happens.

•  Look at sub-contractors, joint ventures and employees and make sure you contract with them, so that the ownership of the IP they produce is with you.

If you notice that your IP has been copied

•  Initially, try a soft approach. If you know you are on firm ground, then be prepared to negotiate a fee for the potential rights to use your IP collateral.

•  If you see your photo / image / idea on social media and you haven’t given permission, it may be easier to contact the platform and ask them to take it down as it is a copyright infringement for which they can potentially be liable once they are placed on notice.

If legal action has to be taken

•  Be aware, that unless you have insurance, the legal costs of pursuing someone through the courts is expensive. They will usually have to pay an amount towards your costs if you win, although this may not be the full amount you have incurred. However, you will have to bear the costs until the case is settled and you will need to have the funds in place to enable you to progress the action.

•  AND, check before you start the process that the person / business you are suing can pay your costs if they lose, as whatever the result the costs will need to be paid by someone.

•  Have all the bits and pieces in place, so you are a credible threat from the outset.

•  Make sure there is an audit trail so you can prove you created the IP and you own it.

Further information on protecting your IP can be found by visiting the Intellectual Property Office (IPO) website at
gov.uk/government/organisations/intellectual-property-office. For further information on insurance visit the British Insurance Brokers’ Association at biba.org.uk.

Sue Wilcock