1. Be as discreet as possible
While in the process of creating your designs, be cautious about who you share information, concepts and draft designs with. Limit the sharing of this information to people you trust, and who need to know.
If you are seeking investment from a private backer, or from a crowdfunding platform such as Kickstarter, be careful not to make public anything that would risk the confidentiality of your unique design.
You may want to consider asking collaborators to sign Non-Disclosure Agreements to further protect your innovations at this crucial stage.
2. Keep records
During the process of creating your design you are likely to go through several iterations as you develop and refine your concept.
Having detailed records of drafts, internal notes and conversations within your business isn’t in itself a robust legal protection. However, these records can be very useful if you are challenged later.
It’s good practice to keep an organised and detailed catalogue of the process and any associated documents or images, so that you are prepared if it becomes necessary to demonstrate that a concept originated with your business.
3. Know your rights
Innovative designs can be protectable by four different kinds of intellectual property rights. Briefly, these are:
- Registered designs. This can protect both 2D and 3D designs as long as they are new – no identical or very similar design can have been disclosed anywhere in the world more than 12 months prior to the date of application. Other conditions and exclusions apply. Protection is granted for 5-year periods, up to 25 years, and registration is relatively quick and cheap.
- Unregistered designs. This protects an original shape or configuration of a purely functional product – for example, agricultural tools. It lasts for the lesser of 10 years from first marketing or 15 years from creation of the relevant design and is subject to licences of right in the final five years of the term. There are complex provisions and exceptions which an intellectual property specialist can advise upon.
- Copyright. Copyright may subsist in a work of artistic craftsmanship as well as in design drawings and maquettes. However, not all articles will necessarily count as works of artistic craftsmanship – it is a question of artistic purpose rather than artistic merit. Copyright expires after 25 years and can be hard to enforce – it is often not enough protection on its own.
- Patents. If your design embodies a new and inventive feature, you may be successful in applying for a patent from the UK Intellectual Property Office. This right usually lasts for 20 years from the date of application and can enable you to take legal action against others who use your invention without permission. Patents are usually awarded for inventions such as a product, manufacturing process or piece of equipment – they do not apply to artistic works.
4. Be clear on ownership
Having established legal protection for your design, you will want to be clear about who owns it. Usually, this will be the author or creator – except when they were acting in the course of their employment, in which case the employer will generally own the right. In the case of copyright and UK unregistered design right, the author or creator can also transfer the rights to another.
Note that an independent contractor is not an employee and will be the first owner of IP in any work he or she creates. He or she may agree by contract that the IP will be transferred to the party for which he or she is contracting, but this requires specific agreement and action and is not automatic. It is always sensible to agree express provisions as to the ownership of IP rather than leaving matters to the default position imposed by law.
5. Stay up-to-date
As detailed in this guide, the various protections have different expiry timescales, so it’s important to keep track of when they end. If you don’t renew registerable rights with the relevant authority, you will lose your rights.
There are varying fees for renewal and these depend on the type of intellectual property. You will not always receive a notification that renewal is due so the onus will be on you to make sure this happens in time. If a deadline is missed it may not be possible to restore your rights – and even if it is possible, this can be costly and time consuming.
Would you like to know more?
Thrings Intellectual Property Team helps businesses thrive by providing practical business advice from commercial specialists.
