The IBSA Podcasts
IBSA podcasts contain information from a global community of entrepreneurs and professional advisors dealing with international business structuring and regulatory compliance.
Hosted by Roy Saunders, who has over 50 years’ experience within the financial sector, these podcasts delve into enlightening conversations with a wide range of leading professionals aiming to demystify the complex world of business and provide invaluable insights to help listeners deal with various complex technical matters to best support their business and clients.
Disclaimer: We believe the information in this podcast to be correct at the time of recording. The information given is relevant at the time in line with governmental legislations. Competent counsel in the jurisdiction(s) whose laws are involved should be consulted. The podcast is made available by the IBSA for educational purposes only and to provide general information. The information should not be used or relied upon as a substitute for competent legal advice from a licensed professional in your jurisdiction.
The IBSA Podcasts
Catherine Jewell Examines Different Types of Intellectual Property, their Protection and the Prevention of their Infringement
Unlock the secrets to defending your creative genius on the global stage with Roy Saunders, the visionary behind IBSA, and Catherine Jewell of Beck Greener. Our riveting exchange lays bare the essentials of international IP rights, from the intricacies of territorial laws to the bold strategies for securing your intellectual property as an entrepreneur with global aspirations. We traverse the legal labyrinths in multiple jurisdictions, facing head-on the challenges of asserting ownership and enforcement. This episode is a treasure trove of insight for those looking to fortify their IP arsenal in the competitive arena of cross-border business.
As we scrutinize the high-stakes case of T-App UK Ltd, on the verge of liquidation, and their partnership with a Ukrainian company, Catherine Jewell's expertise shines, demystifying contractual complexities around IP ownership and rights transfer. Discover the pivotal differences between commissioned work and joint development ventures, and grasp the full implications for your IP rights in such collaborations. Our discussion is an essential guide for entrepreneurs and advisors alike, who seek to navigate the IP minefield with confidence and emerge victorious in protecting their most valuable assets.
This podcast explores a fictitious case study centred around an entrepreneur’s ambition to develop a task management software company. Click here to read the case study in full.
Catherine will be examining this in greater detail at our upcoming conference in May. Click here for full details of the conference and to book your ticket.
Hello and welcome to the IBSA podcast on the topic of intellectual property and cross-border entrepreneurial businesses. My name is Roy Saunders and I'm the founder and chairman of the IBSA, the International Business Structuring Association, which is a multidisciplinary global association of entrepreneurs and their professional advisors, dedicated to sharing their expertise with each other within a great networking platform. Now, today, I'm joined by Catherine Duel of IP Lawyers, beck Greiner, and I'm changing my identity to become Nicholas, the entrepreneur behind my fictitious case study, which formed the framework of our autumn workshops, in which we'll feature in the forthcoming annual IBSA conference. Our listeners might like to read the case study on the IBSA website, under the conference page at the IBSAorg, to fully understand what we'll be discussing today.
Speaker 1:So, catherine, regarding my own intellectual property that I've created, and as a reminder, let me just tell you, in 2012, through my IT startup in Vienna, which was Tash GameBaha, I developed a task management software product called Tash. In 2014, I moved to the US and started Tash Inc, and in 2021, I moved to the UK and eventually set up Tapp UK. So what can I do now to protect the creations that I've made from third-party imitators or, in fact, direct copying?
Speaker 2:Well, nicholas, there are various things you can still do at this stage. The protection of intellectual creations is done through the laws on intellectual property, and those intellectual property rights are territorial, by which I mean that they vary country by country. So this is something where you have to look separately at each country that is of interest, although there are some centralized systems to facilitate you with applications that cover more than one country. So the first thing we have to think about is what types of intellectual property are relevant to your situation. So what kinds of intellectual creations have you made? Which of those can we still do something to protect? So different kinds of intellectual property protect different aspects of creation, for example, the aesthetics of appearance, the origin of a brand, creative works such as books or musical choreography, and technical inventions, and those things are typically covered by copyrights or patents or registered designs or trademarks.
Speaker 2:So at this stage, let's think about whether there's anything that's arisen automatically through what you've created or that you can still apply for at this time, and we'll also have to think about who owned those works originally and has that changed.
Speaker 2:So what you can do now is going to depend on what rights are rising, your creations, what you might still be able to apply for and who owns those rights under the the laws of the relevant country.
Speaker 2:From what you've said to me about your, your situation and a little bit about the history of the company and so on, I think the relevant rights for you right now might be copyright, trademark registrations, possibly design registrations. So copyright, I think, is going to be relevant to you because this is something that in many countries will arise in the software code itself for your products. So software code itself is generally viewed as being a type of literary work and therefore would be protected in many countries under copyright. What that means is copyright will protect you only from direct copying of your product. So it's not what we call a monopoly right, which gives you protection against an independent development of a similar functioning product, but it would allow you to prevent someone actually looking at your code and taking sections of that code into their own product, significant sections of that code into their own product, ie directly copying it.
Speaker 1:Now, that's quite relevant actually, catherine, because I presumably own the copyright myself, but it's various companies that are coming to use it, so I could presumably stop those companies from using it if I wanted to, under the copyright laws.
Speaker 2:So it will depend a little on the countries in question, because the laws will change country to country. But in in terms of who owns the copyright, under UK copyright law, usually the author or creator of the work is the first owner. Did you write the code on your own? If you wrote the code with another author, then there might be a joint authorship and joint ownership or it could be co-authorship, depending on whether your contributions can be separated or whether they're sort of inextricably linked within that software code, whereas if you, let's say, you had commissioned someone to write that code for you or it was written by an employee of the company, then the first owner would usually be the commissioner or the employer. But it will always depend on the contract that you had with that person. That's what will really dictate who owns the copyright.
Speaker 2:So you can't enforce the copyright if you don't own it. I mean, that is a key issue that you've touched on there. And the other thing that is relevant about copyright is that there are some countries as I mentioned the UK where this will arise automatically and you don't have to do anything at all for your copyright to arise. But there are other countries where there is what's called a register of copyrights. So, for example, in the US or China, you might need to actually register your copyright. Now, I'm not a US or a Chinese attorney, so I can't tell you any more detail about that, but just to make you aware that that is a thing.
Speaker 1:So if I have to now apply to register these rights, sort of am I too late? What are the costs that I have to do to? Is it very expensive? Do I have to have multiple registrations in different countries, or can I have one legislation which covers lots of countries?
Speaker 2:Well, we'd have to separate that question by the kind of rights we're talking about. So for copyright because it's something that, again in the UK, arises automatically no, you don't need to apply for that. As soon as you create your work and it is fixed, then your copyright will arise. When we move on to, let's say, design rights. So let's say you wanted to register the appearance of your graphical user interface, that's something you could consider applying for a design registration. For that does have a requirement that your design is new. But most jurisdictions have a grace period, so you'd have to file within a certain period of time from when you made that user interface available to the public, from when you publicized it. So if you have newish user interfaces, then you could still apply to register those as designs if you're within that grace period, which is 12 months for the UK. If you are interested in trademark registrations, which would be about protecting the name of the company, the name under which you're trading, the logo under which you're trading and what you're doing with those is, you're really you're protecting those as a badge of origin, so an indication that allows the consumer to hopefully repeat their good experiences with you. That's the purpose of a trademark registration. For a trademark registration you can apply at any time. The question will be do any third parties already have earlier rights that might conflict with the marks that you want to register. So if you wanted to register TASH, say, as a trademark, the question will be is there already a TASH mark registered or is there a mark which is confusingly similar to that mark already registered? If there is, then there might be a conflict and you might have to think about a different mark. But you're not too late to do that.
Speaker 2:Costs for designs and design registrations and trademark registrations it's a bit. How long is the piece of string? Because you're talking about how many different rights that you're applying for in how many different countries. Those are the two major things. If you were to apply for a trademark registration in the UK, the official fees that you pay to the UK Intellectual Property Office are what I would call relatively low. So a couple of hundred quid for the official fees for one mark in one class of goods or services, because you have to specify goods or services for the trademark registration.
Speaker 2:But as you add more and more classes you pay more and more official fees to the UK office. So I think it's 50 pounds per additional class. So let's say you wanted to cover five or six different classes, you've added 300 pounds of official fees. In contrast, if you wanted to apply for a European Union trademark registration, the official fees are a lot higher, but that's because you're covering 27 countries in one registration, so you'd be looking at more like a thousand pounds around that sort of figure probably. And again class fees and so on. So it's a movable feast in terms of costs and it very much depends on how many countries you're trying to cover and for how many rights.
Speaker 1:Okay Well, I mean bringing you up to date. And, as I spoke to my colleague Vernon Dennis about this, the company TAP Limited which I created in the UK is having some cash flow difficulties. So really, this idea of who owns Intellectual Property, I mean I owned the, I started it off and I owned the Intellectual Property. I think I did commission an employee of mine in Austria to prepare things for me, but assuming I own it, or at least my Austrian company owns it, it then sort of sold it to the US company, which then licensed the UK company. So the UK company only has a license and I wonder, if the company goes into liquidation, for example with the Intellectual Property, would there be any any Intellectual Property within the company, or can I just take it and put it into a new company? Let's say, and not worry about who owns the or what the UK company owns.
Speaker 2:That's a very multifaceted question. If you're talking about registered Intellectual Property rights, like trademark registrations, design registrations, patents, where there is an official register kept by the UK property office, the ownership of the ownership of each of those rights will be on the register at the UK office publicly available. When you apply for those rights you have to name an applicant. The applicant should be the person who actually has ownership is entitled to apply for that right. So you go back to the beginning. When you formed your first company, the company employed someone to write the software code the company was trading under, whatever the mark was that we applied for. So if we applied for a trademark registration it would be in the name of the company. So the company owns that trademark registration.
Speaker 2:If you want to transfer ownership of that registration, you can do so, but you must do so in writing in a certain form, and you would then really need to record that transfer of ownership at the UK Intellectual Property Office. So the record, the public record on the official register should always be kept up to date and that is what tells you who owns which rights. So if the company then goes into liquidation, those rights are still technically assets of the company as far as I understand it. Bearing in mind liquidation is really not my area, but as I understand it, the company still owns those rights until the ownership is transferred by some valid mechanism. So if it's liquidated and you have someone assessing what the assets of the company are, they would look at those rights and see can they sell them, can they get value from them, and then they'd have to transfer the ownership and record it on the register. You as an individual don't have entitlement to those rights. It's the company that owns the rights on the register.
Speaker 1:Okay, so I mean the UK company has actually contracted with a Ukrainian company to develop the products further. So actually, although the Intellectual Property, as far as I can understand it, is owned by the US company at present, having bought it from the Austrian company and only licensed through to the UK company, so presumably the UK company, through its contract with the Ukrainian company, has got further rights to the apps and so on, or newly developed or on model two or something like that. So if we've done that, how can I make sure that I keep the ownership of the additions to the Intellectual Property that the Ukrainian company have created?
Speaker 2:So what you're saying is the UK company has licensed technology from the US company and then has gone into partnership or has contracted a Ukrainian company to make further developments. So a lot of this is going to be a question of what is in your contractual agreements. But those contractual agreements are also going to be subject to competition law, in whichever jurisdictions we're talking about. So if you have technology, let's say you have a patented product, because patents are what's relevant for technical invention. So let's say you have a patented software solution which gives you a technical effect and therefore you've been able to get a patent for it. Then let's say you make a deal with this Ukrainian company that they're going to make further developments on that.
Speaker 2:In your contract with this other company you have to be very careful what you try to require in terms of where the rights in any improvements will vest. You may be able to have a license back of any improvements they develop, but you're not going to be able to require that they transfer ownership of those to you unless you are commissioning them to produce a product for you. It's two different things and it all depends on what is in the contract and what are you actually contracting with them for them to do. But if they are developing a new product, a Model 2 product, you may be able to get a license back for that product, but you're not going to be able to require that they assign it to you. They're not going to be able to because it would be anti competitive. You have to be very careful in terms of competition law in that sense.
Speaker 1:I can't quite understand the difference between commissioning the Ukrainian company and asking them to develop further the product, if you like. On new apps.
Speaker 2:Because if you're commissioning them, as I understand it and again we're straying into contract law here, which is again not my specialism but as I understand it, if you are commissioning a party, you are paying them to produce for you a product and the terms of your agreement your agreement, therefore can encompass that the ownership of that product will reside with you, because you are paying them to make that product for you. But if you're not commissioning them in that sense, if you are saying, yes, you go away and develop this on your own, we're not going to pay you for developing this, you're going to develop this under your own steam then there's no quid pro quo there. You're not paying them to develop that, they're doing it themselves. So you cannot then require that they just give back to you what they've created.
Speaker 1:Okay, all right. No, I understand that Now. Software, I thought was only copyrightable, is it patentable as well?
Speaker 2:It is possible to get patents for software products. The software code per se is not patentable. That's where the copyright comes in. So the actual code, the textual product that is viewed as a literary work, and then you're looking at copyright. But the software product, if it has a technical effect or it solves a technical problem and it gives you some sort of advantage or benefit over existing systems, then it is possible to apply for a patent for a software solution.
Speaker 2:In that sense, I have colleagues who spend an awful lot of their time on this because it's a very fast moving technical area. But yes, it very much is possible. It's not always easy, but then it's not always easy to get patents for anything. You always going to have to show that the invention you want to use as a product is new and that it's not an obvious development from what's in the state of the art, essentially. But no, it's difficult but it's not impossible. And as technology moves forward, I think you will see more and more people trying to patent their software products because it's just such a fast developing area.
Speaker 1:Okay, and one of the things that's concerned me is how do I know that I'm not infringing anybody else's rights? Somebody else might have developed something similar, but not identical, if you like. And you said that if it's copyright, it's as long as I'm not copying somebody, I'm not infringing.
Speaker 2:So if we were talking about copyright because copyright only limits your indirect copying what you would need to be able to show essentially, is how you developed that product yourself. So it's very difficult to prove a negative. So it's going to be hard to say, to prove that you did not copy something. The best you can do is have a very clear pathway of how you came up with your product, how you wrote your code. So notebooks, different developmental stages, being able to really follow that journey through of how you, how you wrote your code, having all the different iterations. That would be quite a compelling case that you developed this yourself and there was no copying involved of any other products.
Speaker 2:When we come to registered rights, the beauty of these being registered is that you can search what's on the registers already, or you can, you can engage someone to do that, to do that searching for you, whether it's designs or trademarks or patterns. There are people who can help you to look at what's already on the registers and decide whether there's a risk that you're going to tread on someone's toes. Essentially and naturally, as a partner attorney, I'm going to say it's always worth doing that, but actually it is, because the last thing you want, when you just started trading, is to get a letter from somebody saying you need to stop what you're doing.
Speaker 1:And I mean if I have an idea, let's say if I obtain the idea from existing task management software programs. That's not itself a problem.
Speaker 2:It depends on what kind of rights we're talking about and what you develop, but an idea itself. Nobody can protect an idea, a thought that's in your head. Intellectual property rights are all about how that idea is then actually made real. So with copyrights, the work has to be fixed, so written down or actually painted or photographed. With patents, it's all about the functionality of your invention. Patents are probably the one where it's most difficult when you're talking about ideas, because if you have a process that is protected by a patent and you have an idea for something similar, it's possible that your idea might have enough of the features of that earlier process that it would fall within the scope of that third party's monopoly. But what you would be trying to do because what you would have to do to get a patent yourself anyway is show how you're different from that earlier process and why your process is not obvious in view of that earlier process. And while that might not save you from a falling foul of someone's existing patent and having a letter saying we think you're infringing our patent, what it would do is allow you possibly to negotiate a license, negotiate a cross license for your technology and so on.
Speaker 2:So there are two sides to intellectual property. One is what intellectual property have I created and how might I protect that through the systems that exist? And the second is can I actually go out and use my creation and do what I want to do without infringing on someone else's rights? So that's what we call use, and then protecting your own creations is what we call registration, and those are two sides of the same coin. So when we talk about registration, we're looking at what rights we can help you to obtain for what you've made, and when we talk about use, we're looking at is it? Are you free to operate, are you able to actually go out and sell your product without immediately getting a letter from a third party saying you're infringing my patent, you're infringing my trademark? I wouldn't say it, probably in those words, but that would be the message, and those two sides of the coin are both relevant, particularly for new businesses.
Speaker 1:A friend of mine actually has got, and I remember you saying he's got a great idea and he wants to try and put a prototype in place. But I remember you saying that once it becomes public knowledge, or once you go reach out to the make it public, then you can't patent it afterwards. So how does that work actually in practice? Because you do need people's help in order to be able to develop an idea.
Speaker 2:Yes, but you can put those people under non-disclosure agreement. You can make sure that you don't put photos of your creation all over the internet. You can make sure that where you do your experiments and you build your prototype is not visible to members of the public, so it's not in your back garden, for example. It's all about as soon as you make your invention available in the sense that someone else could make it work and understand how it works. Then it's no longer new in a patenting sense. So that doesn't exclude you from getting help from other people, but it means that you need to have something in writing that says that they understand it's confidential. So when we talk about making something available to the public, it's got to be somebody that's actually free then to use that and continue to make it public, whereas somebody who's under a non-disclosure agreement is not viewed as the public in that sense, because they're not free to just spread that information. You've limited them to keep it confidential.
Speaker 1:I mean talking to friends like me, for example, where I haven't got a non-disclosure agreement with them Unless there's an.
Speaker 2:is there an implied, is there an implied area of confidentiality? Do you understand from your conversation that he's thinking about patenting it and therefore you need to keep it secret? I mean, you're getting into fine detail there.
Speaker 1:Yeah, okay, oh, is there anything else I need to know about my task management software that we haven't covered? Do you think?
Speaker 2:I think we may have actually covered all the points that I had down.
Speaker 1:Okay, well, that's excellent, I mean. Thanks very much for joining me, Catherine. That was really interesting and I'm sure Nicholas would be extremely grateful for these insights. He may have some more questions for you when we all meet again on the 23rd of May at the IBSA annual conference.
Speaker 2:I'm sure there will be some questions.
Speaker 1:Details are all on our website at the IBSAorg. Anyway, I'm gonna change back again from Nicholas to Roy Saunders. Thank you again, Catherine. It's been excellent and I conclude this podcast by thanking our listeners for listening to this. Bye-bye.