Your 3 Most Common IP Issues: A Lawyer Responds

  • Fragments on Machines (still) - Emma Charles (Photography, 2013)

We are really lucky to be able to run regular one-on-one sessions with IP lawyers for Royal College of Art students and alumni, with lawyers from the City firm Stephenson Harwood. The last legal clinic was on 9 December, and the next one will be on 3 February 2014. In the meantime, you might find some answers here – we talked to Stephenson Harwood lawyer Mark Kramer, and he gave us his responses to RCA students' three most frequently asked questions

I’ve spoken to someone about commercialising my idea, and now I’m worried they might steal it, what should I do?

An issue that comes up frequently is students having sought manufacturers and then started to worry about the manufacturer going off and commercialising their design themselves. Quite often people have talked to somebody, and that third party manufacturer hasn’t decided to progress the project. The student has then worried that the third party will steal their design, or has evidence that that kind of thing is occurring.

 So the advice there is: don’t get into that situation! Make sure the manufacturer has signed a confidentiality agreement or a non-disclosure agreement (NDA) in advance. That’s a strong message to get across to students: that when they talk to people, they should make sure they have contractual safeguards in place.

The business world isn’t necessarily an evil world, so I think sometimes people do worry more than need be. However, they should still protect themselves.

People are sometimes uncomfortable with asking questions about confidentiality, as they don’t want to put off a prospective purchaser or manufacturer. I think that fear is misplaced; if you’re taking protecting your rights seriously, that’s a positive message for a potential business partner, not a negative one. [Note from Fuel: students should remember that while studying at the Royal College of Art the intellectual property in their RCA projects is owned by the College. Therefore they can explain to third parties that the RCA wants an NDA to be in place.]

Students should of course bear in mind that they’re not necessarily at the RCA to commercialise their ideas and make money out of them, they’re there to learn. We’re about giving the students the tools to make a considered decision – they might decide to take a risk and not push for contractual provisions, not put an NDA in place. As long as they’ve thought that through and made that decision, that’s fine. People doing the wrong thing because they don’t understand – that’s the issue.

Should I patent my invention? How do I do that?

If you have told anybody in the world about your invention, and there’s no confidentiality agreement in place, then your invention will not be registerable as a patent. The invention has to be completely new. If you come up with a great idea and you tell a friend, put it on Facebook, or put it in your exam, that could have a disastrous effect on your patent application and your ability to protect that idea later on.

If you’ve got something potentially patentable and commercial, InnovationRCA can help. You should already have gone to see them before the show. Once you’ve made the initial patent application you’ve protected yourself. The advice is to do that properly! We’ve had students come to the clinic who have filed a patent themselves, it’s not an easy thing to do and they haven’t done a good job.

It’s not a cheap thing to apply for a patent, it’s not something you can do on a whim. It’s a complicated area of law to decide if something is patentable or worth patenting. When a student approaches the college to say that they want assistance with a patent, they need to have their head screwed on and realise the RCA takes a financial risk in helping them. The college is looking at the invention, it’s looking at them, it’s wondering, will this make money? It’s an expensive process; don’t be ashamed to have a business-y approach to it.

You should always be thinking about how to protect your products with IP, but remember there are unregistered rights which arise automatically which may provide you with some protection.

I’m in a dispute with friends about who has the right to the profits from a joint project, what can I do? 

Just because you’re in business with your friends doesn’t mean that you shouldn’t take setting the terms of your relationship seriously. You only need to look at the relationship between old pop bands who have argued about these things in court to see that failing to set out your working relationship clearly can have very significant consequences.

Don’t be scared of the law and don’t be scared of lawyers. It’s better to have an exchange of emails with whoever it is you’re working with and make sure everyone knows who owns what, so at least you have something rather than ignore it all. English law usually doesn’t need paper or a lawyer for a contract. However, there is always the question of how to evidence what has been agreed, so it’s always better to have something in writing. It doesn’t need to be that you go and see a lawyer – that would be best, but if you can’t, try to at least have an exchange of emails that says for example, ‘I’m going to pay you to do this but I will own the rights to what you’ve done.’

A lot of litigation that we do is helping people unpick things that could have been avoided if they’d come to see us earlier. That’s true of large businesses as well as individuals.

I think quite often people know where they’re going with a project and they know very early on if there’s a commercial angle. They need to be open about that and work out they’re all on the same page. It doesn’t have to be a 24 page agreement drafted by a lawyer, just make sure everybody knows and agrees who will own what, so you’re protected against someone coming at it from a different point of view later down the line.

And finally…

The other thing is, to encourage students to take advantage of the support and advice that the college offers them. In short, if you want to succeed in business you need to understand IP.