Margaret Arnott, partner at Mathys & Squire, discusses the importance of maintaining an IP portfolio in an ever evolving digital climate.
Now that we are in March 2017, most New Year’s resolutions have been forgotten, exercise equipment is starting to build dust in the corners of spare bedrooms across the country and dry January is a distant memory. Businesses may also have had commercial resolutions for 2017, which have already fallen by the wayside.
The best intentions can often be overlooked when budgetary constraints are brought into the picture; one of the most common of these is protecting and maintaining intellectual property rights (IP). This may become more common as the political and economic landscape takes an uncertain turn with Brexit, general elections take place in a number of European countries, and the Trump administration shakes things up on the other side of the Atlantic.
Whilst IP rights, such as trade marks, patents and designs are intangible, they can be invaluable to a business. They encapsulate the brand, ideas and innovation of a business and its employees. In the ‘digital age’ technology is developing and progressing at a dramatic pace; so protecting these ideas is vital. However, these protections may be futile without ensuring there is a strong and well managed brand available to make sure the ideas can be marked in a profitable way.
As we head further into 2017 it is essential that businesses ensure they have some basic IP checks and balances in place. If IP is managed properly and all disputes are handled well, maintaining an IP portfolio can be cost effective and instrumental in the future success of a business.
As with your car, a regular health check of your IP rights can assist in avoiding unnecessary and expensive issues down the road. Electronic databases now allow for bespoke and efficient reporting. These health checks ensure that IP portfolios develop alongside an evolving brand and product range, as new technologies develop. Effective health checks are impossible without an accurate, up to date list of all IP assets, including trademarks, patents, designs, copyright, domain names, as well as drawings and drafts. This can be maintained internally, or by your representatives.
If 2017 is panning out to be the year for your business to launch new brands or products, keep in mind the risk of infringing others’ IP rights. Quick searches can be completed to determine whether proposed trade marks are available in relation to your business’ goods and services, or if others already have registered rights. If such checks aren’t completed, you could be facing significant and costly legal issues down the line.
To safeguard your business from infringement it is also important to monitor the risk of infringement with formal watch services. These watches can be implemented on a regional or worldwide basis and will highlight if there are any applications for identical or similar trademarks. It is also important to periodically police your own IP through online searches and potentially to nominate employees to undertake this task. In order to limit the risk of infringement, it is helpful to display the well known symbols © and ® as appropriate or alternatively to try to display registration numbers when advertising brands or products with related IP registrations.
It is important that businesses educate employees on the value of IP assets and how to take steps to protect these assets. However, an area often neglected when considering IP protection is with employment contracts, licences and consultant documents. Disputes over the ownership of inventions or ideas developed in the course of employment can be a source of expensive litigation. It is therefore important to precisely establish IP ownership at a contractual stage. As 2017 progresses, consider reviewing precedent contracts and licences and whether the contractual position is sufficiently clear and protective.
If, having taken all of the appropriate steps, a dispute still arises, take expert advice and tackle the issues raised as quickly as possible. IP disputes are almost unique in UK law in relation to the possibility of making unjustified threats of infringement. It is therefore important to take advice, as soon a dispute is beginning to emerge, as it can save significant future costs of a retaliatory claim for unjustified threats.
It is also crucial to remember that it is now rare for disputes to end in long court battles, only a fraction of cases proceed to a trial. This is largely because there are other less expensive avenues used to settle disputes, termed alternative dispute resolution (ADR). ADR includes mediations, which have a high success rate in resolving disputes – allegedly around 80% settle on or immediately following a mediation. Settlement through compromise and negotiation creates a level of certainty for both parties, which cannot be guaranteed if a judge decides the outcome of the case. Therefore, if a dispute progresses, it is important to decide at an early stage what an agreeable settlement would look like. This enables you and your advisers to work towards a clear and acceptable outcome; and can save time and costs.
Sometimes, however, pursuing a dispute through the courts is inevitable. If there are numerous risks of allowing infringing activity to continue, court action can show that you are not scared of enforcing your legal rights. In the long run, this could save the business money and put off future infringers.
In conclusion, get to know your IP portfolio well and ensure that it is safeguarded to the maximum; after all it can make all the difference to the success, or failure, of your business venture.