Innovations and new products – IP checklist
New products are likely to contain numerous types of intellectual property that can and should be registered if the Trust is to exploit it. A product could be a device, app, algorithm or document. As stated earlier, the broad idea for the product cannot usually be protected by a form of registration, however, the following steps should be considered to protect the idea as far as possible:
- Keep the idea confidential – including disclosing the idea only to those within the Trust who need to know about it. This may also include stipulating on emails and documents which contain the idea that the information contained within is confidential and is not to be shared;
- Consider the use of non-disclosure agreements for any third parties that work on the product or idea;
- Consider whether there are aspects of the product which can be registered, such as any names or terms used which may be registered as trademarks. Registration of these trademarks will help prevent others from exploiting the app for their own gains;
- Depending upon the purpose of the product, it may be considered to be a medical device. If so, it may need to be registered with or approved by the Medicines and Healthcare products Regulatory Agency (MHRA) prior to release which may increase any timelines involved; and
- In addition to considering what aspects of the product can be protected for the Trust’s benefit, consider whether there are any aspects of the product which use IP which belongs to other parties. Infringement of a third party’s IP could be detrimental to the development of the product and could have potential legal consequences for the Trust. Consider whether the owner of the third party IP would be willing to licence the use of their IP in your product.
Disclosure of Ideas
It is important to realise that broad ideas which create an intellectual property cannot themselves be protected by the methods discussed above. If an idea is shared with a third party, there are no legal restrictions on that third party using the idea to create intellectual property. The purpose of the legal protection is to protect those more specific ideas which have been developed sufficiently to create intellectual property; not to restrict a person’s ability to develop intellectual property.
- To avoid such a situation, steps should be taken prior to disclosure to third parties to ensure that:
- The idea contains no information that the disclosing party wishes to exploit;
- Disclosure of the idea will not harm the disclosing parties ability to exploit the idea in the future;
- If appropriate, the idea is patented; and
- If the idea consists of trademarks, that these are registered prior to the disclosure of the idea.