“I know there is strength in the differences between us. I know there is comfort where we overlap.” — Ani DiFranco – singer/songwriter
Recognising that businesses and projects can have a multitude of intellectual property (IP) rights which can work together synergistically is a powerful concept – not only leading to robust protection, but also considerable efficiencies.
However, intellectual property is often dealt with in silos – with separate experts handling each type of IP that they specialise in. Likewise, IP portfolio managers often receive piecemeal advice in respect of individual rights in each country which do not consider the bigger picture.
The way rights overlap, expire, and vary from country to country can make or break a company’s competitive edge. In this article, we’ll briefly explore registered and unregistered IP rights and how to maximise their synergies.
IP rights – registered and unregistered
As a baseline, it is helpful to understand what the multiplicity of IP rights can cover.
Registered IP rights require formal application and approval from IP offices and can include the following:
Patents – Used to protect new inventions – whether technological advancements in the form of products, processes, or methods. They typically last 20 years, but once expired, anyone can use the technology.
Trade Mark Registrations – Protect words, logos, slogans, and even distinctive shapes or colours associated with a brand. Trade marks registrations can be renewed indefinitely.
Design Registrations – Also known as design patents in the US, cover the appearance of a product, including shapes, patterns, and ornamentation. Durations vary but design rights usually last 10–25 years depending on the country.
Plant Variety Rights (PVRs) – Also known as plant breeder rights, protect new plant varieties, often lasting 20–25 years.
Unregistered rights arise automatically but can still be enforced and can include:
Copyright – Protects original creative works such as books, music, art, and software. The duration of copyright rights varies widely but copyright often lasts 50–100 years after the creator’s death. In just a few countries (including New Zealand) copyright can also protect industrial works and can last for 3 – 16 years.
Trade Secrets – Maintaining something as secret is a common method of protecting confidential business information – such as formulas, algorithms, methods of operation, to name a few. Trade secrets last indefinitely if secrecy is maintained. maintaining the secrecy of information requires good processes, documentation and systems.
Common Law Trade Marks – In many countries (and especially common law countries), businesses can establish trade mark rights through use and acquired reputation in the mark, even without formal registration. This is not the case in many Asian countries.
Each of these rights is covered by separate legislation and general law – with only some referencing the other rights.
The Problem with a Fragmented Approach
One of the biggest hurdles in IP management is that it is often managed in compartmentalised disciplines.
Patent attorneys focus on inventions but may not consider branding strategy in parallel to obtaining patent protection, or if they do, it may not be to the same degree as a brand strategist.
Trade mark attorneys safeguard brand identity but may not be aware to the same degree as a specialist patent professional what technical features of the product itself could be owned and controlled.
Commercial IP lawyers typically focus on contracts, trade secrets, and copyright but may not have the depth of expertise necessary to identify and protect technologies, products and/or brands.
As a result, businesses can miss opportunities to combine and reinforce their IP protections. This disjointed approach can be costly—both financially and strategically.
Beyond IP – Barriers to Entry
IP rights are part of a greater business eco-system but function as only one form of a barrier to entry. Other barriers to entry should be considered which can give competitors “Cause to Pause”. Here are some common ones, along with potential challenges:
The ultimate challenge is to reconcile the considerable disparate barriers to entry, distinct IP rights, and how they are navigated.
A More Strategic Approach: Flipping the IP Conversation
One way to tackle this challenge is to have an IP advisor or IP portfolio management system which flips the conversation. Rather than talking about individual rights and barriers to entry, they should consider the product, service, project or organisation along with their particular intangible assets and how they can be own and controlled.
Consider the following:
Reputation and associated brands – can be protected by systems that maintain and enhance reputation along with trade mark registrations. Licences to external parties that use the brand can have tight controls around performance, quality and reputational guidelines. Internal guidelines can include brand guides that help reinforce brand consistency and identity, as well as reduce the chance of misappropriation and genericism.
Operations and information – can be protected by good internal systems including knowledge management systems that control and track access to sensitive information; copyright and confidentiality notices; controlling relationships with third parties through contracts. Key personnel and suppliers can have risk mitigation systems built around them.
Technology – can be protected through trade secrets and patents. The timing and scope of these can be dovetailed with other barriers to entry such as regulatory approval, and the likely time it would take for a well-resourced competitor to catch up. Publication protocols can be introduced to prevent early disclosures destroying patentability and trade secrets.
Designs – can be protected by copyright and design registrations dependent upon individual country laws. A distinctive product shape can also be registered as a trade mark if it acquires sufficient reputation.
Final Thoughts:
A product or project-based assessment of IP needs, along with an understanding of all IP rights and barriers to entry, offers a far more coordinated, efficient and cost-effective approach. Ongoing management of this process may require an intermediary who is across all fields at a high level, understands competitive positioning, and can communicate needs across the field of IP experts required.
By taking a bigger-picture approach, businesses can unlock the full potential of their IP assets—not just for protection, but as a strategic tool for long-term success.
