Understanding Intellectual Property

Author:Ms Claire Baldock
Profession:Boult Wade Tennant

It is a fact of life these days that a company needs to hold solid intellectual property (IP) rights in order to attract investment. Most company chiefs appreciate the importance of IP to their business and the need to take action to protect it. However they can be baffled by the complexities. There are plenty of pitfalls for the unwary, so it is essential to take sound professional advice.

It is a common misconception that the holding of an intellectual property right gives the holder the right to commercially exploit the property owned. In fact there are other quite separate legal authorizations which may be needed, for example, a license for a gun or a marketing authorization for a drug. However, what the holder of the right can do, is assert it to stop others commercially exploiting the IP right without permission and of course, as a property right, IP can be bought, sold (assigned) or licensed as a useful source of revenue.

Another feature of IP which must be appreciated is that it is territorial. Thus, a patent obtained through the UK Patent Office can only be enforced against infringers in the UK. The patent holder will be powerless to prevent others commercially exploiting the same invention abroad. In the modern world this local protection is rarely sufficient, so it is necessary to extend the IP in foreign territories. Truly global protection is not really possible. Not only would the cost of obtaining it be prohibitive, but such rights are not necessarily available or enforceable everywhere. Nevertheless, the current possibilities for territorial extension are sufficiently large that small or medium-sized companies on a limited budget face some tough choices about seeking foreign rights. Generally protection is sought where there are the largest potential markets for the product which the IP covers (for example the EU, USA, Japan) and/or where the principal competitors are located or likely to be located.

Ownership is another area where companies often trip up. Applications for registered rights, i.e patents, designs, trade marks, should be made in the name of the party that owns it. Under UK law, this will be the inventor or designer themselves or, where they are employed in an inventive or creative capacity, it might be the employer. It is most important for businesses and organizations to be careful about ownership where there are people working with the organization for whom there is not a strict employer/employee...

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