David Murray: Protecting ideas a patently good idea

ADVICE on intellectual property rights is a must in today's tough international markets, writes David Murray

Patent attorneys typically work with clients to determine how best to protect  and nurture  IP rights. Picture: Jakub Jirsak
Patent attorneys typically work with clients to determine how best to protect  and nurture  IP rights. Picture: Jakub Jirsak

This year, 2016, has been designated as Scotland’s Year of Innovation, Architecture and Design and is aimed at showcasing and celebrating the country’s innovative individuals and companies. A number of events throughout the year will honour the many inventions and designs that originated here and went on to change the world.

In my experience, Scotland remains one of the most innovative countries in the world, with its world-leading healthcare and electronics industries, not to mention the innovative companies in the energy supply chain. It is right to recognise this characteristic of our history, present and future. To ensure innovation retains its place in our economy, however, it is important to safeguard it and make sure that companies reap the rewards from their ingenuity, creativity and hard work. To do this, they need to successfully identify and capture the innovation they generate, then go on to protect it.

Both here and in many other countries, legal protection for innovation can be sought using intellectual property (IP) rights, including patents, registered designs and trade marks, amongst a range of other rights.

As the name suggests, registered designs provide protection for the appearance of new designs with individual character. Registered designs are a relatively quick and cost-effective way to capture non-functional product designs, design developments as well as novel two-dimensional and three-dimensional designs in all areas of technology, as diverse as construction products, tools and equipment, company logos and packaging and consumer products. Indeed, in some cases – provided a number of conditions are met – the registered design application process can be accelerated using a fast-track process. We have used this process with some clients to progress applications from filing to registration in less than a week. Even where conditions for fast-tracking an application are not met, it is often possible to obtain registered design protection in around 4-6 weeks from filing in an application.

In Europe, applications for registered design protection are administered by the Office for Harmonisation in the Internal Market (OHIM) which from March this year will be known as the European Union Intellectual Property Office (EU IPO), not to be confused with the European Patent Office (EPO), which, since the late 1970s has been responsible for examining applications for patents in Europe and other territories.

While registered designs are directed towards non-functional developments in the appearance of products, patents provide protection for new and non-obvious inventions and are directed to new products and processes. Once granted, a patent gives its holder the right to prevent others from exploiting an invention in a particular country.

In the case of both registered designs and patents, the term development is key. While many companies know to seek protection for their “next big thing”, protection may also be possible for more modest but nevertheless commercially useful iterations of existing designs, products and processes. This can sometimes be overlooked.

Patent attorneys typically work with clients – whether multi-nationals, SMEs or individuals – to determine how best to protect their IP, with a view to maximising the opportunities for useful protection. This may involve preparing and filing patent applications and registered design applications and liaising with the patent and IP offices around the world to progress applications to grant.

At a basic level, obtaining IP protection provides recognition for companies as well as individual designers and inventors within those companies. Just as important, however, IP protection provides a commercial tool for differentiating a company from their competitors and offering the opportunity to generate income through licensing.

A good plan would be to arrange an IP audit or review. Where there are patents, trade marks, or registered designs already in place, the review can establish whether they still cover your current activities and also whether there are any opportunities to strengthen or adapt your rights to put them on a better footing.

As part of the year of Year of Innovation, Architecture and Design, A number of free InnovationNation lectures are taking place in Edinburgh’s EICC, the first tomorrow focussing on architecture. The second, on 12 April, focuses on biotechnology.

• David Murray is a chartered (UK) and European patent attorney at Marks & Clerk