Who really owns your IP?

Often when you start a new business, you’re focused on building your audience and product, on making, creating and selling. And sometimes, in your rush, the paperwork can get a little bit lost. Unfortunately, this can make life a lot more difficult in a few years time when you want to sell your company, license the product for someone else to make, or when trying to get investment.

Finding out what you’ve built and created isn’t actually owned by your company, but by a contractor or disgruntled former co-founder can slow things down or destroy deals altogether. This is especially important in relation to copyright, which relies on proving chain of title to prove ownership, but can become an issue with registering IP rights too.

So, how do you get things right from the beginning?

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Apple uses design registrations, do you?

It’s well-known that Apple has ongoing litigation against Samsung in multiple jurisdictions, all over the world. What isn’t generally as well known is that a lot of these cases are fought over design registrations (or design patents as they’re called in the USA).

Design registrations are different to patents in that they only cover what something looks like, not how it functions. For a more in-depth analysis of Apple vs Samsung and their use of design registrations, NZ patent attorney firm AJ Park has a good article.

Registering your product’s design in consumer goods can be a very good way to get protection for your product. As a bonus, it’s often far faster, easier and cheaper than a standard patent of invention.

As an international company, Apple’s design registrations aren’t just filed in the USA. There are a quite a few registered at the New Zealand Intellectual Property Office (IPONZ) too. While there’s been no court cases against Samsung in New Zealand (yet), they do serve as a potential way to stop cheap imports and allow a way to stop third party ripoffs causing problems like the recently publicised issue of iPhone 5 chargers blowing up.

In celebration of design registrations, today’s search pictures of the day are:

New Zealand design registrations

Apple is a prolific company, that uses design registrations alongside traditional patents. In New Zealand this year they have filed for multiple design registrations, including ones for their new “Earpods”. A company probably can’t get a patent for a a new type of headphone (if the change is only in the way it looks using existing technology), but they can still get some protection using a design registration.

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Four rules for effective intellectual property management

I recently read an Idealog article on improving your patent spend. It contains some useful advice (ask about the lifetime cost) and some things I can’t imagine any company having enough resource to do.

Knowing how to find attorneys in multiple countries and manage all of the information coming in from them? The only companies I know that do that on a regular basis are university commercialisation companies with skilled staff – Auckland Uniservices has two patent attorneys working as their IP managers to manage their portfolio – and they still use patent attorney firms to help them.

So, if you’ve only got one or two patents, or are just starting, what do you do?

Here, I present my four rules for improving your patent (and trade mark) spend – and to give you the best possible protection. If you spend money on it, make sure it’s worth it!

1. Do research

The biggest mistake companies usually make is to run off to a patent attorney the first time they have an idea or new product. They are not sure why, or might think a patent is a magic bullet that will stop their competitors chasing them.

Unfortunately, a patent can only protect the part of their product that is considered an invention, i.e. the part that is new and inventive (not an obvious improvement). This rush in the “idea-stage” leaves the patent attorney with two options: offer to do preliminary searching for you at a cost of thousands of dollars, or guess and hope for the best.

A better idea is for you to spend a few hours doing your own research, so you can confidently discuss with the attorney how your invention is different than previous innovations. You will also be confident that if this difference is only minor, it will still be worthwhile to protect from a business perspective. Spending years and money obtaining a patent only to find that a competitor can easily design around it can be heartbreaking.

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Putting the house in order

When selling, tidy up.

When you’re selling your house, you tidy up, clean everything, put out flowers and try to show the potential for the new owner. You have the title ready for them to see, and allow the buyers to bring in their own building assessors to ensure the piles aren’t crumbling.

In the months before you put your house on the market, you often do those little jobs, such as painting the windowsills, or fixing the broken door, that only take a few days but can add a lot to the sale price.

When you’re selling your company, in whole or in part (raising investment), why is it so often people seem surprised that investors would also prefer a tidy house?

Fixing up the little things: creating a contract register and ensuring all your employees have contracts, ensuring all your foundation IP is in the name of your company, creating a list of all your trade secrets and your competitive advantage, having all your accounts in order and easy to read, having a clear list of all your customers and cash flows.

Get all your papers in order so you can show buyers around and show them the potential. No-one wants to have to dig through piles of rubbish under the house to be able to check on the foundations.

What would you recommend a start-up has in their “information for potential investors” file?

Koha – how is that registered?

Julie’s thoughts on trade mark law.

Disclaimer: I’m not a trade mark dispute specialist. My interest is strategy, or why you’d want to do something. Find out more.

There was an uproar on Twitter last Thursday about IPONZ (the Intellectual Property Office of NZ) accepting a trade mark application for the word “Koha” in relation to software.

The back story is basically Koha is an open source computing product for libraries. It was developed in New Zealand, and then around the world for ages. Then, a splinter group decided to make their own offshoot product. And stopped “sharing” with the community. Then started commercialising their product. Then they were sold. So the Koha community doesn’t like them much, as they had a collaborative, open, sharing community and a group “forked” away and did their own thing. Making money. Off the first guy’s effort. No wonder they don’t like them.

Then the company did what any good company would do, they applied for a trade mark on their name. But, they didn’t create a new name, rather ran with the name of the project, Koha.


So, now the name Koha has been trade marked in the US and Australia, and has just been accepted in New Zealand.

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