By Dr Phil Merchant
Almost every innovator making the step to becoming an entrepreneur will have their eye on the prize – successfully commercialising their invention and maximising their own financial rewards. The wisest of these will leverage every tool at their disposal to increase the value of their company, including their Intellectual Property (IP).
What is IP?
Owning Intellectual Property gives you legal rights to prevent others from undertaking protected actions (e.g. making a product that you have patented)
IP can exist in multiple forms, including Patents, Trade Marks, Designs, Copyright and others. Each type of IP is appropriate to protect different elements of an invention:
Patents: protect an invention – i.e. a technical solution to a technical problem
Trade marks: protect branding – marks on a product that shows its origin
Designs: protect the outward appearance of a product – what makes a product aesthetic or appear different
Copyright: – protects creative works such as literature, music, or artwork
To take a communications satellite as an example, a patent might protect the structure of the satellite, its antenna and/or the technical functionality of the software it runs, a trade mark may protect the branding of the services provided by the satellite, a design might protect the outward appearance of the satellite, and copyright might protect the literal code of the software or any branding literature/videos.
Why is IP important?
The primary function of IP is protect your creations, including your invention and your brand, from others in the market. If you have spent years of work developing your invention and building up your reputation in the market, you do not want competitors taking advantage of your hard work or putting your branding on their own products.
Registered IP rights can also significantly boosting one’s chances of securing investment. A recent analysis by the EUIPO reports: “The filing of patent and trade mark applications in the seed or early growth stage is associated with a higher likelihood of subsequent VC funding. This effect is particularly important in the early stage, with a 4.3 times higher likelihood of funding for startups that filed for trade marks, and a 6.4 times higher likelihood of funding for startups that filed for patents”.
Thus, registered IP rights not only provide protection, but they significantly boost the value of your business, and give confidence to investors and potential commercial partners.
How do I get IP rights?
In some cases, intellectual property arises upon creation (for example, the moment you write and publish a piece of music, you will have UK copyright in that music). For others, including patents and registered trade marks, you need to file an application with an intellectual property office, such as the United Kingdom Intellectual Property Office. The application will set out details of what you’re trying to protect. For example, a patent application will include a specification explaining the technical details of your invention, and a trade mark application will include details on the mark you want to register.
The IP office, in most cases, will examine your application and decide if it is in a shape to be granted. It is often necessary to amend the application to pass examination, but once that happens you will be issued with a grant certificate for your very own piece of Intellectual Property.
Key considerations in building your IP portfolio
Filing an application and getting a grant certificate sounds simple enough, but there are some key points to note: the geographic limitations of IP; protection of multiple rights; registration requirements; and ownership.
The jurisdiction of a granted IP right is limited by geography – for example, a patent granted in the UK cannot be enforced in the US (and vice versa). To cover a wide geographic scope requires multiple patents be filed and granted. Complete territorial protection is an impractically expensive endeavour, so applicants typically limit their IP portfolio to their key markets (e.g. UK, USA and Japan).
Protection of multiple rights
A single IP right will typically protect a single element of your business. For example, a trade mark registration will protect one mark, so if you have multiple logos or brand names, multiple trade marks are required. Similarly, a patent will typically only protect one ‘invention’, so multiple patent applications would need to be filed if you wished to protect different elements of a product.
With some exceptions, IP offices around the world will examine applications for trade marks and for patents. For patents, this includes a consideration of whether the invention is new and ‘non-obvious’, and for trade marks this includes consideration of whether the mark is ‘distinctive’ and ‘non-descriptive’. Thus, it will not be possible to secure a patent for an invention that is already in the public domain (i.e. it lacks novelty). Importantly, this registration requirement will also apply to your own publications. So if you want to get a patent for an invention, its details must be kept secret until the patent is applied for.
Like other forms of property, IP will have an owner. Who this owner is will depend on who contributed to the invention/design, and whether or not that person did so under conditions or employment or other form of contract. It is therefore important to make sure that any IP your business generates belongs to you or your business.
IP rights in Space
If patents are territorial, it is only natural to ask “can I patent my invention if it is to be used in space”? The answer is (a qualified) yes.
While the invention is going to be deployed and used in space, there will still be some connection to actions taking place on Earth. In particular, the space-based invention will be manufactured somewhere on earth, as well as crossing national borders (import/export), be sold, and be kept. Patents and trade marks can be granted to protect these Earth-based activities.
For actions taking place in space, the situation is less clear, but there is potential for patent enforcement. For example, a granted patent could cover satellite operations based on actions taking place on Earth (e.g. operating a user terminal on Earth). In addition, based on international treaties, there is the potential for some countries to extend their patent law into outer space for objects registered with a local registry (for example, the US Patent Law contains some provisions along these lines).
So what do I do now?
The first step in protecting your IP is to put together an IP strategy. This strategy should include consideration of (a) which parts of your business are commercially valuable and should be protected; (b) what type, and scope, of IP right is appropriate for that part; (c) where the IP right(s) should be registered; and (d) who owns the IP.
It is tempting to put off or defer these decisions, but it is important to take these steps sooner rather than later. Early planning will allow you to get a handle on your budget, timescales, to know which elements of your business to keep confidential, and to make sure your contracts and assignment documents are up-to-date regarding IP.
Marks & Clerk LLP are a firm of specialist IP attorneys with a passion for space technology. If you need help regarding any of the above, please get in contact and we will be able to book you in for a free consultation with one of our attorneys.
Dr Phil Merchant | Principal
Chartered (UK) and European Patent Attorney | UPC Representative
for Marks & Clerk LLP
*Main image is AI generated