Top 3 IP Issues that Startups Should Not Overlook
Most of the time start-up founders work relentlessly towards their goals, from perfecting the products, building the right team, raising funds…… the list goes on (salute to that!). Due to the busy schedule, intellectual property may have been unintentionally overlooked from the to-do list.
However, there are 3 important IP issues that should not be omitted.
IP Clearance Search & Analysis
Regardless whether you plan to protect your IP (which you should), it’s advisable to at least ensure that you are clear from potential IP infringement suit. You certainly do not wish to be suddenly served with a Court summons during one of your busy days in the office.
Every start-up has a trademark, do a trademark search to ensure that it has not been registered by others. Not appearing on Google does not mean it is not registered with the Government’s Trademark Office.
If you have invented a new technology, conduct a patent search to analyse if it infringes any patented technologies. You could also use this opportunity to evaluate whether your technology is novel, involves inventive steps and industrially applicable, so that you could register a patent.
Registration of IP
The fundamental purpose of registering your IP is to ensure exclusive use of your IP, so that you could stop others from using your IP without your consent. To do this, it is important to devise a strategy to register your IP stage by stage. It’s certainly not as simple as just filing a form.
In summary, there are 4 popular IPs that are always sought to be protected, ie. trademark, patent, copyright and industrial design. They are different from each other and could protect your business from different aspect, and should not confuse them from each other. For example, it is a misconception that “I want to patent my trademark”.
The basic should always start from your trademark. It is the identity of your business. Upon successful registration, you will be conferred exclusive use on the trademark in respect of the registered goods and services for 10 years and can be renewed for further 10 years perpetually. A trademark does not mean logo only, it also covers word, name logo, slogan, sound and many more.
If you have developed a new invention, register it as patent. Upon registration, you will be granted exclusive right on your invention for 20 years, subject to annual renewal.
On the other hand, if you have an eye-appealing products, for example a bottle with sleek design, you may register it as industrial design to protect its exterior appearance. A registered industrial design will be given 25 years of exclusive protection subject to renewal of every 5 years.
Lastly, if your products are books, drawings, software, songs or videos, they are protected as copyright. Copyright is much straight forward compared with other type of IP. Registration of copyright is not compulsory. The exclusive protection is automatically conferred as long as sufficient effort has been expended to make the work original in character, and the work has been written down, recorded or otherwise reduced to material form.
It should be pointed out that the above IPs are protected on territorial basis. While you should register them in each country separately for comprehensive protection, it is not necessary to get over ambitious and register at all countries at once. You may choose the relevant markets first and register them step by step. This would assist you in planning the cash flow ahead.
Last but not least, registered IP is another selling point when you are pitching for investments!
Clarity on IP Ownership
Sometimes the relationships between founders, employees, and 3rd party developers are being built based on trust and vision instead of solid legal framework. An IP can be owned by the company, individual or jointly owned by co-founders. However, it is important to lay down the legal foundation from the beginning to determine the ownership of IP to prevent future dispute. For example, if an IP is jointly owned by co-founders, it is advisable to sign a joint-ownership agreement to determine the rights and obligation of the respectively owners toward the IP. On the other hand, a clear understanding should be made between the company and 3rd party developer, whether the IP of a product should be owned by the company or being withheld by the 3rd party developer.
While there are many other IP issues should be concerned, the abovementioned would directly affect the foundation of a company and therefore should be given top priority.
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP
Advocate & Solicitor (Non-Practising)
Disclaimer: The above information is merely for general sharing and does not constitute any legal advice. Readers are advised to seek individual advice from the professionals.
Copyright reserved 2021 © IP Gennesis Sdn Bhd