Steps to protect your intellectual property

By Ruvini Rendle, Senior Solicitor

First published in The Dominion Post & The Press, 3 March 2008

If you are in business, chances are that you will have at least one asset that is a form of intellectual property.

But many people neglect to take the necessary steps to protect these valuable assets. It may involve seeking registration, or it could simply be a matter of documenting the development of your idea to the finished product.

Securing rights to protect intellectual property, though, is only half the equation. Rights are only effective if they are enforced. You should know what your competitors are doing and take action to stop any infringement.

For example, take high-profile fashion designer Trelise Cooper, who claimed that Tamsin Cooper's trade mark for her range of fashion accessories was too close to Trelise Cooper’s own trade marks. Also close to home is the reported piracy of films such as Sione’s Wedding.

As these infringement cases show, intellectual property is an asset worth protecting. Here we look at the different forms of intellectual property you may need to consider.

Copyright

Copyright is literally ‘a right to copy’. If someone creates something original that requires a degree of effort and skill to produce, that person ought to have the right to control what happens to that work – to sell it, to copy it or to modify it, and to be known as its author. This is essentially what New Zealand copyright legislation prescribes. But there are some restrictions to these basic rights.

Copyright exists only for defined categories of ‘works’, which must be recorded in some way. For example, copyright cannot be claimed for the idea of a book (i.e. the plot), but there will be copyright protection when the book has been written. And copyright does not always belong to the author of the work. For example, if someone commissions you to produce a work (to take a photograph, for example), the person who commissioned you is the owner of the copyright by default. You can, of course, enter into a contract to ensure you retain copyright. Similarly, an employee will not normally own copyright in works s/he may produce.

Categories of ‘work’ that enjoy copyright protection include novels, paintings, photographs, musical scores, sound recordings and films – as you would expect. But you might be surprised to learn that the layout of a business form can also be subject to copyright (take for example your tax return!). Other works that are subject to copyright include computer programs, schematic plans and architectural plans.

Trade Marks

Trade marks help you distinguish between the goods or services of one source from those of another source. Take, for example, butter, which is predominantly packaged in 500g blocks. There are numerous companies manfacturing butter; many products are made in New Zealand, and a few are imported. The absence of the trade marks on the packaging could make it relatively time-consuming to work out who made the butter and which butter you liked or which butter you used last time. Clearly, trade marks serve an important purpose and are consequently a vital asset to most businesses.

Traditionally trade marks were names (such as EDMONDS for bakery goods) and logos or graphic images (such as the three diamonds for Mitsubishi). But they can take other forms – shapes (the curvy Coca Cola bottle), slogans (“Where everyone gets a bargain” – The Warehouse) – even colours and smells!

As a business’ reputation for a great product or excellent customer care is inextricably linked to its trade marks, it is vital that the trade marks are memorable in their own right and stand apart from others in the market. It is only natural to choose descriptive or laudatory words as trade marks, as a way to entice customers to buy your products ahead of your competition. But such trade marks can be difficult to register and, more importantly, difficult to enforce. Some of the most successful trade marks are often invented words, such as GOOGLE, or words that bear no relationship to the goods being sold, APPLE for computers, for example.

Patents

A Patent is a right granted to inventors who choose to share their technology and theories with the public. In recognition of their efforts and disclosure, the holder of the patent has the exclusive right to exploit their invention for 20 years. After that time, anyone is free to use the invention.

Medicines and machines are obvious forms of invention that could be patented, but patents can also be obtained for manufacturing processes, and improvements to existing processes or products.

To be entitled to patent protection, an invention must be original, useful and something that is not obvious to anyone trying to achieve the same purpose and who has knowledge in the subject area.

If an inventor is able to commercially exploit their invention while maintaining its secrecy, then patent protection may not be necessary. But there is a significant risk that competitors might obtain and copy an invention, which is why an inventor might seek a patent.

The critical piece of advice for inventors is to speak with a patent attorney before disclosing to anyone, or commercialising, their invention in any way. If the invention is disclosed or made public in anyway, they will not be eligible to obtain a patent.

As intellectual property has the potential to be a business' most valuable asset, conducting a review to identify your intellectual property is an important first step and could be the best investment you ever make.

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