What is clearance?
Starting a technology business is exciting and with the desire to pursue your idea it’s easy to forget third party intellectual property (IP) rights. Even disruptive technologies are not free from the risks posed by third party rights – for example, an existing patent right might claim the invention in-part, an earlier similar trade mark registration might be too similar, or you could be using content which is subject to copyright
Why is clearance important?
Any potential new offering should be cleared before launch. Expending time and effort in conducting clearance exercises from the start is an important and worthwhile investment as you will minimise the chance of costly and detrimental disputes in the future. Ignorance is not a defence to most types of IP infringement, and so it is not advisable to simply ignore the potential existence of prior.
An often-overlooked benefit of clearance is that it can help you to maximise your business’ potential from the outset - you may find that an existing successful company already provides something similar to your offering, so if you can tweak your offering or market early on you may find a niche which pays.
Clearance should not be viewed as a negative or a “necessary evil” but rather as an opportunity to prevent damage to your business and to find avenues for growth.
Types of clearance and how Brabners can help
Clearance can take many forms, and will depend on many factors such as timescale, territory, budget, and the nature of the proposed offering.
A quick internet search using a good search engine might reveal obvious conflicting third party rights. As this is simple, quick and free it is an obvious first step, but one which is sometimes overlooked in the quest to move to market quickly. A simple search on Companies House will tell you whether a third party has incorporated a company with the same company name, and it’s always worth checking what domain names are available as this may dictate your choice of branding.
However, many wrongly believe that the availability of a company name or a domain name proves that there are no conflicting third party rights, which can in fact only be revealed with an effective searching strategy. A trade mark search will flag the highest risk prior registered trade mark rights, and a common law search should reveal conflicting unregistered rights too. Brabners provides a range of types of clearance search, from identical-only searches through to full multi-territorial clearance. We also advise on various clearance strategies, which will take into account budget and timescales. For example, if you have a list of potential branding options you might opt to conduct an identical-only “knock-out” search as a way of quickly identifying those trade marks that are not worth pursuing. Trade mark clearance might also identify rights owned by modest entities who are willing to sell their rights to you, bringing the benefit of longevity.
Searching for patent rights is provided by specialist searching companies and can be extremely costly. For many companies the costs may be acceptable, but for technology and start-ups they are often not. It is possible to conduct simple clearance yourself which will at least go some way to identifying the biggest risks posed by third party rights. If you know your competitors you can often locate any published patent rights that they own, which may inform what technologies they are working on and what inventions they are claiming. Similarly, registered design rights can be searched if you know the owners’ name or the type of product.
Brabners can provide both patent and design right analysis advice regarding any rights which you consider may be problematic, including advice regarding the likelihood of infringement, the commercial risks posed, possible work-arounds, and options for litigation or negotiation. Earlier rights may also offer an opportunity for collaboration so they shouldn’t always be viewed as a barrier to progress.
Copyright arises automatically upon recording and in order for such rights to be enforced within the UK/EU there is no requirement for registration. As such, clearing third party rights in copyright work can be difficult. That being said, in order to show infringement, there is a requirement for copying to have taken place, so clearance is less of an issue for this type of right. Copyright protection will often complement other forms of protection, such as trade marks and design rights and so should be considered as part of these forms of clearance.
For more information on the topic, please contact Hayley Morgan or another member of the Commercial team.
In our next blog, we discuss, Intellectual Property - Protection, click the link to read more.
