November 7th, 2012
By Judge Colin Birss
For small and medium sized enterprises, protecting their intellectual property can be a real problem, but it is something which every business can and should think about.
Here are some examples.
Every business has at least one brand: their trading name.
No-one wants to see a trade rival hijacking the goodwill in a trade name which has taken time and real effort to build up.
Many businesses are founded on the design of an innovative product. The last thing they want to see is lower priced, lower quality rip off copies being made available, wrecking the market and making creative product design all but pointless.
Many businesses are based on the internet and depend on the copyright in their creative content but the unlicensed use of copyright material, which ought to have been paid for, makes it harder for artists to make a living.
One reason why SMEs neglect their IP rights is because they believe these legal rights are useless. Some think that there is no point in having a right to stop someone copying your design if the copyist knows you will never take them to court. Given the notorious slowness and high cost of legal proceedings, is this justification for neglecting IP a reasonable one?
The answer is no. The Patents County Court (PCC) is a forum which was specially set up to provide access to justice for SMEs in IP matters. It has existed for a long time but in 2010 it was reformed to really focus on ways of helping SMEs enforce their IP in a timely and cost effective manner.
Despite its name, the PCC handles all kinds of IP cases, not only patents. An injunction to stop infringements can be ordered and damages of up to £500,000 are available if appropriate. The legal costs are capped at no more than £50,000 and are often much less. Many trials take no more than a single day and there is a limit of two days in most cases. The court makes it possible and affordable for SMEs to defend their IP in circumstances where it used to make no economic sense to do so.
Since 2010 the court has heard cases involving all kinds of things from fashion and photography to seed planting gadgets, contact lens cleaners and medical devices; from the trade name of a tree surgery business to a trade marks for fishing tackle, skin care products and kebab shops. The parties in these cases have been the kinds of smaller enterprise who may have been put off from taking a case to court in the past because of the time and cost involved. A further development will take place in October 2012, aimed at the very smallest SMEs. A small claims track is being introduced for IP cases worth no more than £5,000. For cases on that track the court will make no costs orders at all.
So if a court exists which makes IP worth having for SMEs, what should be done about it?
IP is an important asset for many businesses but it is often neglected. The law can be complicated but there are some simple practical steps to take which do not cost much and which can save a lot of trouble in the long run. Don’t ignore IP until a problem arises, think about it in advance. When considering launching something new, review the IP implications. If it is a new invention, the patent application needs to be made before the product is made available to the public. If it is a new brand or logo, should you register a trade mark? Registration is not expensive. Even if a new product design is not worth patenting, you should always consider registering the design. Design registration is not expensive.
Registration of trade marks and designs for the UK can be done via the UK Intellectual Property Office (UKIPO). For EU wide protection, the option of Community registrations is also available from the oddly named Office for the Harmonization of the Internal Market (OHIM). If product design is important to your business, join ACID. “ACID” stands for Anti-Copying in Design and is a membership organization set up by designers for designers. It is dedicated to raising IP awareness and aims to provide an accessible, practical framework for those who believe that their IP rights have been infringed. If nothing else, at least visit the website of the UK Intellectual Property Office. The site has a lot of accessible and useful information on it. Finally, taking professional advice is not always prohibitively expensive. Consider contacting a local trade mark or patent attorney. They will be able to help with a full range of IP matters.
The real message is simply this. IP is a valuable and protectable business asset, even for an SME. Don’t wait to be copied before thinking about it.
His Honour Judge Colin Birss QC is a Judge of the Patents County Court based in the Rolls Building in London.