Protecting Business Ideas in the United Kingdom
By Leigh Ellis
The starting point in evaluating whether an idea is protectable is to understand that there is no abstract right in law to prevent competition, or to protect an idea. The courts and governments of the day for centuries have supported competition between rival traders and have been reluctant develop laws encroach on a freedom to compete. Ideas may be protected to the extent that they fall under the relevant areas of law, the primary area being intellectual property law.
Confidential information is a well established area of law that that protects ideas and information regardless of its form (whether spoken, or in a recorded form such as electronically or on paper), provided that the confidentiality of the information is maintained. The law of confidentiality plays a part in other areas of law. For instance, that a disclosure of particular information at a relevant time completely dissolves the right to obtain patent protection.
There are traps for the unwary when dealing with business ideas. When entrepreneurs are looking to disclose sensitive information, they should enter into a non-disclosure agreement prior to any disclosure to at least enshrine the terms of the disclosure in writing. To be legally enforceable, the agreement must be properly drafted and ideally lay out some background to the circumstances of the disclosure, so that if worse comes to worst there is some documentary evidence of the disclosure and what it related to. This does not mean that the information itself should be disclosed in the non-disclosure agreement, but rather the circumstances and general subject matter of the disclosure. If the company or person to whom the idea is to be disclosed is reluctant to enter into a non-disclosure agreement, then the business idea should probably not be disclosed to them in the first place. It would not be the first time that a company says after the disclosure that they are "already working on something" similar. A well drafted NDA will cater for this contingency.
When a business idea has been implemented and trading commenced, it will of course lose its confidentiality and fall into the public domain. At this point (and in keeping with our comments about rival traders at the outset of this brochure) there is nothing preventing any other company from copying the essence of business idea and altering it or improving it and by doing so creating a competing product or service – subject to the following. If parts of the business idea can be protected by intellectual property rights, then competitors will not be able to copy the business idea to the extent that the intellectual property rights protect the idea.
Overview of intellectual property rights
Each of the different intellectual property rights serves a different purpose. They all apply independently – if subject matter qualifies for protection under more than one type of intellectual property protection, then the rights associated with the particular intellectual property right may be enforced independently of the others. No one IP rights serves all purposes, and the best right depends on what the business idea is and how the business wants to use it.
Loosely speaking, copyright protects written and recorded material from copying; registered trade mark law protects business names and logos from being used by other businesses; patent law protects truly innovative products and processes from being copied or offered for sale; the law of passing off protects established reputation in a business from being exploited by others; the law of confidential information and that of trade secrets protect information from disclosure or misuse provided it remains secret. Lastly, designs law primarily protects the aesthetic features of a design as it is applied to a product. There are different tests for infringement in each case.
So, if a logo is created that is intended to be used to identify a business, it may qualify for trade mark protection. It will also qualify for protection from passing off. If the logo is an artistic work, it will also qualify for copyright protection and protection as a registered design. Likewise, if a design has been created it may be registered as a design, the unregistered design right may also protect it, and if it is to be used as a trade mark, it may qualify for registered trade mark protection as a shape, and protection from passing off if it has accrued the requisite goodwill for the business.
It is important to realise the intellectual property rights are territorial. For instance, there is no such thing as a worldwide patent or trade mark. A reference to a worldwide patent usually means that registered patent protection has been obtained in many individual countries or ‘territories’. With trade marks, there is an important exception where a single trade mark may be obtained covering all of the countries in Europe (except Switzerland) with a single application.
Individual Areas of Intellectual Property Protection to Business Ideas
Copyright Law This area of Copyright law is said to protect the fine arts, whereas patent law protects the industrial arts. Copyright protects materials in their recorded form whether it be art, photographs, graphic works, music as a embodiment of a business idea. Copyright will not against someone reading the written work, extracting the concepts from it and implementing their own version of it, provided they do not copy the way it is expressed. It will protect against someone copying the materials that they read word for word. It does not protect against someone extracting the ideas from the document and using them for their own purposes.
Patent Protection and Business Ideas Some people say that patents protect ideas. They say this on the basis that at the time the patent application is filed you do not need an existing invention, because the patent invention only needs to be produced when the application proceeds to examination, about 9 months after the application is made. Strictly speaking, patents do not protect ideas – it protects products and processes that have been invented, that has not been seen before and contains an advance over what existed in the market at the date of the application.
The UK and Europe do not allow protection for pure business methods (amongst others). This contrasts with US patent protection that does allow for protection of methods of doing business. A good example is the “One-Click” purchasing method used at amazon.com – it is patentable in the US, but not in Europe.
Design Rights Design protects the appearance of a product brought about by its shape, contours, ornamentation and surface decoration. There are exceptions to these rules. Nevertheless if the design is new and has an individual character, it may be registered for protection. The unregistered design right applies automatically in the same way as copyright and has some similar characteristics.
Trade Marks If the business idea is the name of a business or a logo, it may be registered as a trade mark. A trade mark is simply a name or symbol that indicates that goods or services originate from a source associated with the trade mark. For instance, if Google were to produce a mobile telephone with word ‘Google’ applied to it, you know that the Google, Inc had a hand in producing it. Trade marks do play a role in the promotion of a business idea, because it allows the business to associate the business idea when it goes to market with a distinctive name, which is readily differentiated in the market.
Contracts Contracts, when properly prepared, are simply agreements in a legally binding form. Contracts may be verbal or they may be written. In a commercial context, there is real difficulty in proving what the terms of a verbal agreement are. It is commonly said that contracts are not required unless things go wrong. The problem with this approach is that when a value judgment is made at the outset of transaction that all will go well, there is no decisive written record of what was actually agreed, which makes enforcement of the contract more difficult and in our opinion, for most cases too risky to try.
When dealing with intellectual property rights, some transactions dealing with intellectual property must be in writing, such as transfers of ownership and grants of exclusive licenses.
Furthermore, contracts with employees may be drafted with a view to preventing competition from employees and freelancers when they leave finish their engagement with their employer.
The focus of this article has been the application of intellectual property rights and contracts may used to protect a business idea and their limitations. Intellectual property rights and contracts may be tailored to maximise the level of protection that is available by law for a particular business idea in the circumstances that it is intended to be used. The way this is done for any particular business idea relies on the nature of the business idea and its origins.
By not taking measures at the outset, you run the risk of losing rights that may otherwise have been enforceable and in the process, compromising or losing a powerful negotiating position in the event of infringement of legal rights that you otherwise might have had.
Leigh Ellis is a business solicitor and contract lawyer providing legal advice on litigation & intellectual property disputes. He prepares contracts dealing with intellectual property, and advises his clients on protection of business ideas, contracts and intellectual property disputes.