Legal protection for electronic designs
30 August 2010
In a global and competitive marketplace it has never been more important to protect ideas and designs from being copied by competitors. Tim Wilson looks at the importance of protecting your IP and the various ways of going about it.
Various forms of protection are available in law, collectively referred to as "intellectual property rights". These can prevent competitors benefiting, without permission, from your creative endeavours. They also establish a framework for licensing and selling ideas and designs to others. This area of law is complex and constantly evolving; however this article aims to provide a brief introduction to the subject for the electronics designer. Nonetheless it does not replace professional legal advice.
Background
Governments recognise the importance of stimulating investment in research and development. They therefore provide mechanisms for obtaining partial or full exclusivity in creative output, typically lasting for several years.
The main categories of protection relevant to the field of electronics are patents, designs and semiconductor topography rights.
Patents
Patents protect inventive ideas in science and technology. They must be applied for at government Patent Offices, and provide one of the strongest forms of protection. They give the patent holder an absolute monopoly on commercialisation of his idea for a period of up to twenty years. Since they cover a general idea, rather than just a particular product or implementation, they can be very difficult for a competitor to work around. In particular, circumvention by reverse engineering is not normally possible.
To be patentable, an idea must be new. Under the patent laws of most developed countries, this requirement is applied with worldwide extent, such that the idea must not have been known publicly anywhere in the world before the date the patent application was filed. The novelty of a patent application is checked by Patent Offices as part of the application process. They will search through earlier publications, such as other patents, journal articles, text books and conference proceedings, looking for disclosures which are similar to the idea described in the patent application. If an earlier example of the idea is found, the application will be refused.
The idea must also be considered inventive, or non-obvious. Exactly how this criterion is applied varies between countries, but it is generally the case that an idea will be considered inventive if it provides a technical advantage, or solves a technical problem, when compared with the closest technology previously known. A patentable invention could, for example, be a new design of heat-sink which provides surprisingly better performance than similar, known heat-sinks.
Inventiveness will be assessed by the Patent Offices, who will compare the patent application against earlier disclosures of related designs and products.
It is often imagined that patents are only available for highly-significant, fundamental breakthroughs in science or technology. In fact, the vast majority of patents are granted for incremental improvements to existing products. In the field of electronics, inventions can be found at all stages, from basic scientific advances to embedded software and communication protocols; from design tools and fabrication processes to semiconductor designs and circuit layouts. Wherever a designer has used his ingenuity to find a new solution to a problem, patent protection for the idea may be available. However, routine design work which provides no significant improvement over previous devices will be unlikely to contain patentable ideas.
There are also restrictions in many countries on the patentability of software per se. However these restrictions are not as limiting as might first be imagined. For example, patent protection may still be available to a software feature which improves the internal functioning of a device, such as a processor; for example, if it improves the efficiency with which a processor uses available memory.
The process of obtaining a patent starts with the identification of a clever idea, often by the designer or engineer himself. The services of a patent attorney are typically then engaged. Patent attorneys may be employed in-house by larger companies, but are more commonly external advisers. The patent attorney may perform a search to see if the idea is already known, and will work with the inventor to draft a patent application. The patent application is a legal document which introduces and defines the inventive concept. It must also describe, in detail, at least one way of putting the invention into practice.
A UK company will typically file a patent application in the UK first and then, a year later, file further applications to cover other countries of interest. Centralised search and examination procedures are available both internationally and within Europe, which can reduce up-front costs. Ultimately, however, separate patents are issued for each country in which protection is granted. The application process can last several years.
Designs
While patents protect how something works, design law protects its shape or appearance. Design protection is generally less powerful than patent protection, since a competitor may be able to avoid infringing by adopting a different design. However, it is more widely available and is cheaper to obtain.
The rules as to what designs can be protected and how differ between countries. In particular, some forms of design protection must be applied for, while other protection arises automatically when an item is first designed or manufactured.
In the UK, protection is available both for functional designs, by means of design rights which do not require any registration, and for aesthetic designs, for which registration is necessary if the maximum available protection is to be had.
In the UK, unregistered design rights prevent a competitor copying, directly or indirectly, any aspect of the shape or configuration of the whole or part of an article, both internally and externally, so long as its design is original (not copied or commonplace). For example, a lamp housing having an original shape would attract automatic protection. Unlike patents, no particular advantage need be associated with the design, so long as it is the result of the designer's labour and skill. In the UK, these unregistered design rights last between ten and fifteen years.
Both UK and European law also provide for the registration of aesthetic designs of the external appearance of the whole or part of a product. Such designs must be new and possess "individual character". This second condition is satisfied if the design produces a different overall impression on the informed user compared with similar earlier designs. The design of a new mobile telephone shell, for example, could be registered as a design. Protection can last for up to 25 years, preventing a competitor from producing an item to the same or a similar design. Unlike unregistered design rights, it is not necessary that the competitor has copied your design in order to infringe.
The precise details of what can and can't be protected as a design are complicated, and professional advice should be sought to determine the most suitable forms of protection for any particular situation.
Semiconductor Topography Rights
Many countries provide special protection for topographic creations in semiconductor masks and chips. In some countries, such as the US, registration is required in order to obtain protection. In the UK, rights arise automatically which prohibit the copying of any original pattern fixed, or intended to be fixed, in a semiconductor layer.
In the UK, as with unregistered design rights, it is necessary to prove that the design of a semiconductor layout has been copied by a competitor in order to seek compensation. It is also permissible to reverse engineer a semiconductor design in order to create another, original design using the results of the reverse engineering.
Confidentiality
While some forms of protection arise automatically, others must be applied for. Often the ability to obtain protection for an idea or design can be prejudiced by the designer himself publicly disclosing details of it before an application is filed. This is particularly important to be aware of in the case of patent applications.
It is therefore important to control the flow of information out of an organisation engaged in design activities, so as to avoid the inadvertent, premature release of design details before steps have been taken to secure protection for it. The use of non-disclosure agreements with third parties can help in this regard, but it is also important to seek legal advice from the earliest stages.
Conclusion
While many factors will affect the eventual commercial success of a new electronics component or device, the importance of protecting the design work that has gone into it cannot be overstated. Intellectual property law is complex, but specialist advisors can assist in formulating appropriate protection strategies.
Tim Wilson is Patent Attorney at Dehns
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