There are several reasons businesses proper. One of them is having a competitive advantage in form of unique ideas, innovations or superior creative prowess. This advantage can be infringed on if businesses do not take concrete steps to legally protect these ideas and inventions. The most common ways to protect your ideas are patents (which protect how something works); trademarks (which protect what something is called); design registration (which protects how something looks), and copyright (which protects work on paper, file, record or in electronic form).
Whatever activities you pursue, you will need mechanisms and procedures to ensure that the intangible assets are protected in the same way real assets are. The value of your intellectual property can be enormous. Even in a small non-manufacturing company, there will be valuable assets of this nature – including customer lists, procedures, promotional materials, the company’s name and a variety of other assets. More obvious examples of intellectual property that you may own include copyright and design rights in original designs, literature, inventions, a trademark or brand name and anything else that is novel, original and proprietary to the company.
Risk of Non-protection
The value of these assets cannot be underestimated, nor can the risks of failing to ensure that you have systems set up that will enable you to keep control of these assets and know when they are being threatened. The consequences of failing to do so may involve you in costly and time-consuming litigation to prevent infringement and preserve your assets, or the possibility of what is confidential and secret being revealed in the open market, thereby reducing its value.
Certain intellectual property rights are capable of being registered – potentially worldwide. The benefits of registration include a higher level of statutory protection; a more clearly defined rights than for unregistered common law rights; (you may also, particularly in the case of patents and trademarks), obtain the comfort of knowing that a search has been made into the validity of your claim, ensuring that you are not infringing someone else’s rights or lacking the necessary degree of novelty or originality to be capable of registration.
Rights that cannot be registered include copyrights, your customer and contact lists, and knowhow. The lack of registrability does not prevent you from putting good housekeeping practices in place but may mean that you will have to overcome a higher burden of proof to establish the existence of those rights and your ability to exploit them and prevent others from infringing them.
Trademarks may be either registered or not. If yours is not registered then you will be reliant on the laws of ‘passing off’ to protect your rights. The law of passing off prevents one person from misrepresenting his goods or services as that of another. A registered trademark is ‘any sign capable of being represented graphically which is capable of distinguishing goods or services from one undertaking from those of another undertaking. It may comprise words (including names), letters, numbers or even the shape of the goods or packaging. It may feature colours or may be three- dimensional. A trademark is capable of registration if it falls within the statutory definition.
Before applying for a registered trademark, it is compulsory to carry out a search of the Trade Marks Register to ensure that no one else is already using that mark and that you are not infringing someone else’s rights. The Trade Marks Registry, based in Abuja, has a number of informative leaflets which it readily makes available to individuals and companies who may be interested in applying for registration. It may be easier and more straightforward to instruct your solicitor or trademark agent to register the trademark on your behalf. Your solicitor or trademark agent should be professionally qualified and will be familiar with the rules and guidelines to be followed in obtaining a registered mark.
Whilst registration of a mark is relatively straightforward, there is always the possibility that someone may object to you registering that particular mark. If a formal objection is lodged then the Trade Marks Registry will listen to representations by both parties before making a decision.
The Trade Marks Register is divided into 42 different marks which cover a wide variety of goods and services. When you apply for and obtain a registered trademark, it will be in specific classes that cover the goods and services for which you use the mark. This means that an entirely unconnected party may also have a trademark for the same word or logo but in different classes. Both proprietors will be entitled to exploit their own mark exclusively in the classes for which they have protection. However, to own a mark exclusively, most companies register their mark in all the 42 classes.
A registered trademark has a potentially limitless duration. Once granted, the registration is effectively back-dated to the date of the application. The mark is then in force for a period of ten years from the date of application and is renewable for further periods of ten years.
The identity of a business and its brand name are important assets. When a business is sold, the fact that its name and any brand names it uses, are registered as trademarks, can be important to reassure the purchaser that these important assets are protected. Indeed, a valuable trademark and the rights under it can, in some cases, be sold as separate, identifiable assets.
A patent, once granted, is a government-backed monopoly right to exploit an invention, whether this be a product or a process. The patent lasts for a maximum of 20 years from the date of application and is renewed annually. The owner of a patent is able to prevent others from exploiting that product or process without his permission and also to grant license to manufacture the product. A patent can be transferred or jointly owned and may also be security for a loan. It is possible to register a charge over a patent at the Patent Office.
Application for patent is best done by a solicitor or patent agent who will be able to assist you in drafting your application in the correct technical language. This is absolutely essential as failure to draft the application correctly may result in a third party being able to challenge the validity or manufacture a product or exploit a process that is similar to yours but does not fall within the claims of the patent. Application should be submitted to the Parent Office in Abuja.
To obtain a patent, the invention must be novel, capable of industrial application and not contrary to certain public policy guidelines. To assess the novelty of your patent, your solicitor or agent and the Patent Office itself will search the patent register of previously granted patents and also make enquiries of other publicly available sources of information to check that there is no ‘prior out’ – which would mean that your invention is not in fact novel and consequently not capable of being patented.
The maximum period for which a patent can be maintained is 20 years from the date of application. It is renewed on an annual basis with an escalating fee, justified on the basis that if it is still being renewed 19 years after application, then, it must be worth protecting.
Virtually every country in the world has its own patent office which will grant protection within its own borders. A European patent extending the territory to certain designated countries within Europe can also be applied for after making an initial application in just one country. The Patent Co-operation Treaty will also enable you to extend the territory in a relatively straightforward way.
The patent must contain all the information needed to make or manufacture the invention. Once obtained, it becomes public knowledge and if not renewed may be exploited by competitors. You may therefore wish to consider the possibility of relying on confidentiality agreements to protect your invention for longer than 20 years. The grave danger of this is that it will be considerably more difficult to enforce your rights if someone copies it and licensing third parties is much harder to exploit effectively.
Copyright is perhaps the most common intellectual property right and the one with which people are most familiar. It will exist in original literary, dramatic, musical and artistic works, including computer programmes and computer-generated work. It cannot be registered and arises automatically. The owner of a copyright in a work has the right to stop others from reproducing that work without his or her permission. For a work to be copyright protected, it must be original. Though if two people produce an identical work simultaneously they will both own the copyright in their own work.
To best protect copyright in any work, certain good housekeeping practices need to be put into place. Ensure that any drawings are dated and signed. Keep records showing when lists are updated and who is responsible. Use the © copyright symbol on anything that is published, together with the company’s name and the year of creation. All these will help if you ever have to establish ownership of copyright in any work. Copyright typically lasts for the life of the author or creator plus seventy years. Copyright in computer-generated work will expire seventy years from the end of the calendar year in which the work was made.
Before you talk to any other organization about the possibility of entering into some sort of joint venture or licence regarding your intellectual property generally, it is essential that they have confirmed that any information you give them will be kept confidential and not disclosed to anyone else. They must also agree to return on request anything you have provided to them. The best way to ensure confidentiality is to prepare an agreement or letter to be signed by the other party and returned to you.
Any intellectual property created as a result of work carried out by an employee in the course of his or her employment will generally be the property of the employer. It is nevertheless a good idea to confirm that this is the case in contracts of employment. If an employee creates something after working on a project which is outside his or her normal duties, then the resulting intellectual property could be deemed to belong to the employee. If employees are to be encouraged to be creative, then you may wish to set up a formal scheme whereby successful ideas will be rewarded – and the company owns the rights.
These assets are valuable and setting up proper records and routines from the onset may save considerable problems later on. It is not necessary to keep every piece of paper with jottings on, but a trail of the creative process could be invaluable. Make sure your members of staff are aware of the potential value of the intellectual property and that confidentiality provisions are in place before you talk to another organization about an idea.
Godwin Amadi is the Lead Counsel at Semper Fidelis Attorneys and Solicitors- a full service law firm based in Ikoyi Lagos. You can reach him on 08035622578 or email email@example.com