In Review – Lockdown Proofing Your IP

Following the lifting of the national lockdown in the UK and months of home working, businesses have faced numerous challenges, from how to effectively enable employees to work at home to developing new strategies for running their business in the face of change.

For many countries, including the UK, the possibility of a second national lockdown is very real. It has therefore been useful to review issues that clients have faced, should the UK enter lockdown for a second time. Of course, many of these issues will be relevant outside of a pandemic, particularly given that many businesses were allowing more flexibility and home working pre-covid;

1. Confidentiality – ensuring that client information and business data is protected is key. Businesses should ensure that online meetings are secure and password protected so that unwanted third parties cannot have access. Employees should be trained on disposing confidential information, including providing access to a confidential document disposal service (or if possible, shredders to employees working from home), to ensure that any documents that need to be thrown away are confidentially disposed of.

2. IP Ownership – it is a good idea to carry out an audit of employment contracts to ensure that any inventions / other IP created by employees during home working or furlough is covered. In this note prepared by HGF Trainee Patent Attorney Katherine Munro and Patent Director Richard Gover, it explores the law regarding furlough and inventions created while an employee is being furloughed. The conclusion is that employers should ensure that they own IP created by employees on furlough by requesting that they sign assignments of this IP.

3. Protect your IP now – in a May 2020 article, The Guardian reported that there has been an uptake in the demand for services from IP firms due to an increase in inventions created during lockdown. Some businesses may feel that ‘waiting until things open’ or not spending the money given the current economic uncertainty is appropriate, however, not protecting an idea created during lockdown may prove costly for a business in future. The UK Intellectual Property Office (UKIPO) is open and dealing with applications for patents on a daily basis, so there is really no need to delay filing an application even if your office is not currently open.

4. Defend your IP – as with the UKIPO, the courts in the UK are holding online hearings. This means that where your IP is being infringed, you can still bring a court action now, or even if the country locks down again. HGF have found that the court’s online systems have been fantastic to work with, so there are no barriers to bringing an action should this prove necessary. A note on our experiences can be found here.

5. Review your agreements – in light of the effects on manufacturing, supply chains and customers being affected, it is now essential to review any agreements you are currently in or will be entering into. Important questions include;

a) Should a licence for IP (where you are the licensee) include a force majeure clause in the event of another lockdown affecting supply or sales (particularly where you need to achieve sales targets)?

b) As above, agreements with contractors and providers of IP (e.g. – a graphic design company) should include terms that require them to get assignments from all employees, including but not limited to home workers to catch any situations where work is produced which could potentially fall outside of ownership via their status as an employee.

c) General contract terms will be affected, for example, should contracts with customers include longer delivery times to deal with methods of delivery such as the post being affected?

d) Think about provisions that may be relevant if foreign registries are affected, for example what will be the ramifications of a delay in renewing an IP right if a registry is closed or experiencing severe delay? Will this be grounds for terminating an agreement?

6. Electronically execute documents – how to execute documents digitally has been a question raised frequently by clients concerned with issues like social distancing. Many documents, such as contracts can be executed electronically which means that you do not have to wait for restrictions to ease in order to get a contract executed. Employees should be briefed on the position and a system should be implemented (for example, purchasing an electronic document signature and agreement manager like DocuSign) and ensuring that executed copies of the document are circulated to all parties who require the document. This could save valuable time, allowing documents to be executed where time is of the essence. HGF have previously prepared a note on the law on digital execution here.

7. Review and Consolidate – even if a business does not want to spend money filing new IP applications this could be a great opportunity to take stock of the intellectual property that you already have. For example, there may be an under-utilised patent owned by the company that could be monetised in the event of a change of direction for the business. This time could be used effectively to plan and prepare and evaluate your IP strengths and weaknesses in order to shore up your business in an uncertain economic climate.

This article was prepared by HGF Senior IP Solicitor Chris Robinson. If you would like further advice on this or any other matter, please contact Chris. Alternatively, you can contact your usual HGF representative or visit our Contact page to get in touch with your nearest HGF office.