As the impact of COVID-19 continues to escalate, we consider how this may be affecting the protection and enforcement of intellectual property rights.
In a period of global economic uncertainty, intellectual property (“IP”) may not be at the forefront of many minds. Understandably, the focus and resources of many businesses will lie elsewhere in an attempt to overcome the social and economic hurdles posed by the COVID-19 pandemic. With that said, many brands are having to adapt to new ways of doing business, with the more traditional “bricks and mortar” businesses having to immerse themselves into the online world more than ever to maintain revenue streams. This can create both opportunity and risk from an IP perspective, particularly as brands look for ways to gain a commercial advantage over competitors.
We set out below some tips for businesses and organisations to help: (i) ensure that the protection of valuable IP is maintained; and (ii) avoid the pitfalls of IP infringement in a growing online ecosystem:
- Content sharing and confidentiality: Whilst resources such as Zoom have enabled a certain degree of business continuity, there will inevitably be a greater need to create and share proprietary content outside the four walls of the office. Monitoring how such content is used and safeguarded by employees will be increasingly challenging in a remote working environment, with more and more company IP being accessed and printed outside the office. Without careful measures being implemented to enable secure remote sharing of proprietary and confidential information within the organisation, valuable ideas and associated IP could therefore be at greater risk of misappropriation. To help mitigate some of these risks, businesses might consider:
- Password protecting documents containing valuable IP and sensitive information, limiting access to small groups of employees and reducing widespread sharing.
- Using secure electronic document sharing platforms.
- Issuing guidance notes to employees to emphasise the need for careful dissemination of company information and IP, both internally and externally. This might involve discouraging widespread use of e-mail communications to discuss the development of valuable new IP and promoting the use of remote collaborative meetings through Zoom and similar platforms.
- Collaboration: There is an increasing trend of collaboration and free sharing of IP in order to help tackle the COVID-19 pandemic, particularly in the technology and pharmaceutical sectors. Tech titans Google and Apple recently announced a partnership to develop COVID-19 contact tracing technology, in a joint effort to help governments reduce the spread of the virus. This loosening of competitive barriers certainly needs to be applauded and underpins the need for a collective global effort to overcome the crisis. However, for those looking to freely share IP in the COVID-19 fight (and particularly smaller start-ups), care needs to be taken to avoid relinquishing future rights that might be of significant value to the business and exploited in different fields. Key considerations include:
- Ensuring appropriate confidentiality agreements are put in place, particularly where disclosing novel ideas without restrictions could risk losing the opportunity to obtain a patent.
- Limiting the scope of any such IP licences or assignments to an appropriate field of use, ensuring that (where appropriate) the business retains the ability to exploit the IP for its own products and services in the future. This is particularly relevant for software and technology inventions, which might have various future applications beyond combatting COVID-19.
- Is it necessary to grant exclusive use of the technology to the partner? Many licences are granted on a sole or non-exclusive basis, to retain the ability to collaborate with other partners that might be better placed to help exploit certain elements of the technology.
- Avoiding Infringement in the online environment: As businesses and other organisations look to be more creative in order to maintain their services during the pandemic (e.g. through videos, sound recordings and other digital resources), the delivery of such content can create challenges from an IP perspective. For instance, educational establishments, musicians and performers that traditionally distribute their content to students in a classroom or to live physical audiences are now exploring ways to deliver such content digitally, in a more tangible format than before. Whilst the copyright legislation will offer a shield to permit certain reproductions of copyright works (e.g. fair dealing of works, public interest and education defences, parody exceptions) and many rights holders have temporarily offered free access to certain works, care still needs to be taken to stay on the right side of the line. For example:
- If third party copyright works (e.g. music, film extracts, photographs, sound recordings) are being reproduced and distributed by more tangible electronic means, have the necessary permissions been secured to use the content in this way? Using works such as music and video clips in the course of delivering live classes/presentations is more likely to fall within the permitted uses, but creating and distributing electronic copies of those works may not.
- Particular care should be taken where the content is at risk of being disseminated widely outside of the intended audience (e.g. via social media), where the owners of such works are more likely to object to widespread use. Implementing access controls to such works (e.g. password protections, only keeping the content available for as long as necessary) may help to reduce such risks.
- Brand protection and reputation: There may be an increasing temptation for certain businesses to take inspiration from what competitors are doing successfully in a time of crisis. Ensuring that the company has a strong portfolio of registered IP rights can help to gain a competitive edge in these difficult times and protect against undue exploitation of IP. Strategies might include:
- Reviewing the company’s trade mark registrations, ensuring that key brand and product names are protected in the relevant jurisdictions. Beyond the more traditional words and logos, it is also possible to register shapes, colours, motions and even sounds. Businesses which are creative in their filing strategies will have much greater control in stopping copycat brands.
- Considering whether novel new product designs might be registrable, either at UK international level, through the registered design system. Again, in a time where competition among retailers is fierce, this will give more armoury to stop competitors releasing knock-off products.
- Beyond the ability to take enforcement action, having such IP can also add significant value to the business in the current climate, both in terms of increasing licensing revenue and attracting outside investment.
In a time where the world is facing unprecedented challenges and many businesses are pooling together to combat the crisis, taking rigorous IP enforcement action may not always be the right solution. It could also result in adverse media attention and reputational issues if such action has the potential to prevent or slow down the development of technology or pharmaceutical products directed at the COVID-19 pandemic.
Nevertheless, it is important that businesses do not lose sight of the need to safeguard their wider IP and to avoid relinquishing full control of rights that may be of significant future value beyond the pandemic. Once normality is restored, having a strong brand with robust IP protection will be as important as ever.
Tom Collins