New Zealand: Is IP a key part of your business strategy?

Four key questions to ask to ensure your strategy protects your valuable intellectual property.

A strategy for protecting your intellectual property¹ (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 IP² rights. This typically requires a patent³ novelty⁴ 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 licence⁵, so you spend your time, money and effort on developing something novel⁶ 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 owner⁷ 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 infringement⁸ 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.

Footnotes

¹Refers to the ownership of an intangible thing - the innovative idea behind a new technology, product, process, design or plant variety, and other intangibles such as trade secrets, goodwill and reputation, and trade marks. Although intangible, the law recognises intellectual property as a form of property which can be sold, licensed, damaged or trespassed upon. Intellectual property encompasses patents, designs, trade marks and copyright.

²Refers to the ownership of an intangible thing - the innovative idea behind a new technology, product, process, design or plant variety, and other intangibles such as trade secrets, goodwill and reputation, and trade marks. Although intangible, the law recognises intellectual property as a form of property which can be sold, licensed, damaged or trespassed upon. Intellectual property encompasses patents, designs, trade marks and copyright.

³A proprietary right in an invention which provides the owner with an exclusive right for up to 20 years to make, sell, use or import the invention. In exchange for this monopoly the patent is published so that others can see how the invention works and build on that knowledge. The patented invention may also be used by the public once the patent lapses.

⁴One of the requirements for patentability and the first part of the test for inventive step. In patent law "novel" simply means new or not previously known. New Zealand currently has a "local novelty" requirement for patentability. This means that the subject invention will not be novel (and therefore will not be patentable) if it was known or used in New Zealand before the date on which the application for a patent was filed. There is a proposal to amend our legislation in late 2010 to move to an "absolute novelty" standard. This means that the subject matter must not be known or used anywhere in the world before the date of application in New Zealand. If the subject matter is known or used before the date of application, this is known as "anticipation".

⁵A legal document granting another party permission to use an invention that is the subject of a granted patent. The details of a licence depend on the arrangement agreed by the parties, but normally a licence fee and/or royalties will be payable.

⁶One of the requirements for patentability and the first part of the test for inventive step. In patent law "novel" simply means new or not previously known. New Zealand currently has a "local novelty" requirement for patentability. This means that the subject invention will not be novel (and therefore will not be patentable) if it was known or used in New Zealand before the date on which the application for a patent was filed. There is a proposal to amend our legislation in late 2010 to move to an "absolute novelty" standard. This means that the subject matter must not be known or used anywhere in the world before the date of application in New Zealand. If the subject matter is known or used before the date of application, this is known as "anticipation".

⁷A legal term to describe a person entitled to make an application for a patent. In New Zealand this includes any person claiming to be the true and first inventor, the assignee of the inventor, or the legal representative of a deceased inventor or his/her assignee.

⁸Refers to the commission of a prohibited act with respect to a patented invention without permission from the patentee. In New Zealand, the Deed of Letters Patent confers on the patentee a monopoly to make, use, vend or exercise the invention in New Zealand. Performing any of these acts without the permission of the patentee will amount to an infringement if the patent is current and in force. Permission will typically be granted in the form of a license. Remedies for infringement can include an injunction to restrain further infringement, payment of damages suffered by the patentee as a consequence of the infringement or payment by the infringer of any profit he/she/it made by virtue of the infringement, and legal costs.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

James & Wells Intellectual Property, three time winner of the New Zealand Intellectual Property Laws Award and first IP firm in the world to achieve CEMARS® certification.