James & Wells, December 2012

A strategy for protecting your intellectual property (ideas/patents, products/designs and brand/trade mark) should be a crucial part of your business strategy, as it can be a key asset of a successful business.

In particular, the following questions should be asked.

1. Is someone already using your name?
It is vital to do a trade mark search and check whether the name of your product or service is the same or similar to someone else’s. Failure to do this may lead you into costly battles defending your rights. Or you may find that your successful business gets confused with another poorly regarded business with a similar name, which may result in loss of reputation.

Get a professional to do a trade mark search for you in each of your key markets, and do regular checks, as each country has different rules around what is a “similar” mark, what rights exist in a registered or unregistered trade mark, and how you should search the relevant registers.

2. Has it been done before?
It is also important to check whether the concept behind your product or services will infringe anyone else’s IP rights. This typically requires a patent novelty search. This exercise has the added benefit of showing whether there are any expired patents that you can use, or existing patents for which you should obtain a licence, so you spend your time, money and effort on developing something novel that you can sell or licence others to use.

3. Do you own your name / idea?
If you have a fast moving product, such as gaming software, then sometimes its best to focus your money on registering your brand as a trade mark. However, if you have designed a product that has a distinctive appearance, other options such as a design registration may be the stepping stone to securing ongoing exclusive rights to make, use, sell or licence your core product.

Ensure you get a patent attorney to help you with the best strategy for ensuring you own your intellectual property, and to help you with drafting the necessary confidentiality and employment agreements so there is no ambiguity as to who owns what.

4. Where do you want to go?
With the exception of copyright, intellectual property rights are territorial – that is, a registered trade mark, design or patent only provides the owner with exclusive rights in the country of grant. It is therefore important to have a good strategy in place in order to ensure you own your brand and ideas in all your markets of interest, and a filing strategy in place so that you can spread the costs for obtaining protection as the revenue comes in.

It is also important to note that the international nature of a website means that you may be offering to sell products overseas. This may lead to infringement of another person’s IP rights; again, it is best to do an appropriate IP search first.

In summary, make sure you do a search first and have a patent attorney involved at the start of your brainstorming process, as not doing so could lead to an exercise in failure before you even get to put your business strategy into play.

For more information contact Gary Betteridge or Rachel Dawson at James & Wells on (03) 961 2460 or visit www.jaws.co.nz

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