Patents vs Trade Secrets: Choosing the right path for intellectual property protection
In the complex landscape of IP, the choice between patents and trade secrets depends on various factors such as…
Intellectual property rights are a crucial part of any business strategy, allowing businesses to protect their creative and innovative works as well as controlling the use of their brands. While many people are familiar with well-known intellectual property rights such as patents, registered trade marks, registered designs and copyright, there are several other rights available to businesses in the UK. These can be useful and should be considered as part of any intellectual property strategy. In this article, we will discuss five which are likely to be relevant to a range of businesses.
Trade secrets cover any confidential information that gives a business a competitive advantage. This can include anything from a secret recipe to a customer list to a manufacturing process. Unlike patents, trademarks or registered designs, trade secrets do not require registration and can be protected indefinitely as long as they remain secret.
To be a trade secret, the information must be confidential and have commercial value. The owner must also take reasonable steps to keep the information secret, such as using non-disclosure agreements and restricting access to the information. When they become made available without an obligation of confidentiality on the recipient of the information, the trade secret ceases to exist.
Trade secrets are also tricky to enforce as the owner will need to show that the person accessed the information unlawfully, such as via a breach of confidentiality. So, they cannot be enforced against a person who independently arrived at the trade secret.
Nevertheless, trade secrets can be very valuable for important commercial information, and especially for technical confidential information and inventions that might otherwise be unsuitable for protection via a patent for various reasons.
Registered and unregistered design rights protect the appearance of the whole or parts of a product or object. While registered design rights require an application to be filed with the UK Intellectual Property Office (UKIPO), unregistered design rights arise automatically when a qualifying design is created.
In the UK, they provide protection for up to 15 years from the date of creation. While this is less than the 25 year term of a registered design, unregistered designs do not need to be renewed.
Unregistered designs are also more limited in scope than registered design rights. For example, unregistered design rights only protect against copying the design and so are less likely to be enforceable against non-identical similar designs.
However, unlike registered designs, in the UK an unregistered design can protect a feature whose appearance is dictated by a technical function. This can mean that unregistered design protection is available for some products where a registered design is not suitable.
To summarise, unregistered designs are valuable additional rights as they are created automatically in a similar way to copyright and do not need to be renewed. However, due to more limited protection provided, they should be treated as a supplemental right to a corresponding registered design for all new product designs created by a business rather than a replacement.
Geographical indications (GIs) are a form of intellectual property that protect products that are associated with a particular geographic region and have a reputation or characteristics that are attributable to that region. Examples of protected GIs in the UK include Cornish clotted cream, Scotch whisky, and Melton Mowbray pork pies.
To be eligible for GI protection in the UK, the product must be produced, processed, or prepared in the specified geographic region, and must have a reputation or characteristics that are attributable to that region. GIs can be protected by registration with the UKIPO or the European Union Intellectual Property Office (EUIPO). The UK also recognises the protection of rights equivalent to GIs from other countries, such as Bourbon whisky from the USA and coffee varieties from Colombia.
GIs are an important right to be aware of, for example when deciding on the name of a product it is always useful to search the register to check that the name will not be at risk of infringing a GI. The register can be searched here.
Database rights protect the investment made in compiling a database. This can include anything from a simple address book to a complex customer relationship management system. The rights allow the owner to prevent others from copying, extracting, or reusing substantial parts of the database without permission.
A database will be eligible for database rights in the UK if it is original and the owner can show a substantial investment in its creation, such as the time, effort, and resources put into compiling and organizing the data. The rights last for up to 15 years from the date of creation, however, if the owner makes a substantial new investment to update the contents of the database, the protection starts again for the updated database’s contents.
Given the increasing use of artificial intelligence and computerised business methods, database rights are therefore likely to become increasingly relevant as these systems will only work if they have good data to work from.
Semiconductor topography rights protect the layout designs of integrated circuits, also known as computer chips. To be eligible for semiconductor topography rights in the UK, the layout must be original and not commonplace. The rights last for up to 10 years from the date of creation, and the owner has the exclusive right to use and license the layout.
Semiconductor topography rights can therefore be valuable because they arise automatically and provide exclusive rights to the owner. This means that unlike unregistered designs or copyright, they are enforceable against anyone who uses the same topography irrespective of it the third party copied it from the right owner or not.
Given semiconductor topography can be crucial to the performance of a chip, then these rights can be very important. However, it is important to remember they do not protect the function of the chip itself.
These rights all have the potential to add significant value to a business given they often do not have registration fees or renewal fees to pay to maintain them. However, in general, they are not a suitable replacement for the more well-known rights as they typically provide a narrower scope of protection that is harder to enforce.
We would recommend that all businesses review how lesser-known rights might affect them and ensure they are included in the business’ ongoing intellectual property strategy.
At Wilson Gunn, we help businesses to protect their valuable intellectual property. For further information about obtaining intellectual property, please get in touch to speak to one of our attorneys.