Q: I have invented what I believe to be an excellent board game, I showed my ideas to a games manufacturer and they said they were not interested. 12 months later I see a very similar game in their catalogue. The game is sold under almost the same name which I suggested too. What are my legal rights?
A: There is no copyright in ideas and you cannot patent a method of playing a game. If you had the manufacturer sign a confidentiality agreement in advance then they may have acted in breach of an obligation of confidentiality, or you may have imposed such an obligation on them by telling them that this was to be treated in confidence. An oral secrecy arrangement would be much harder to prove than a written agreement. Assuming they did not sign such an agreement, if they have copied the layout or drawings on your board game, then they may well have acted in breach of any copyright you had on the prototype, such as artistic copyright on the board. This copyright arises as soon as you draw the game board, the packaging, or other materials. There is no need for you to register. The court would compare your prototype and their game, side by side, and look for similarities or other evidence to prove copying.
If they have taken the name you chose you will have little recourse. Names are not normally long enough to merit copyright protection.
However, if you have registered the name as a registered trade mark with the Intellectual Property Office's Trade Marks Registry (or as an EU wide Community Trade Mark) you may be able to sue for trade mark infringement. If they have used a similar, rather than identical name, you will have to show that customers might become confused. Finally, even if you have not registered a trade mark, if you have traded under your name, i.e. sold the game yourself, then their game may be being "passed off" as yours. This sort of Passing Off is often used where there are no registered trade mark rights. It would be sensible to take legal advice. You may be able to negotiate a royalty arrangement with them.
Inventors Legal Problems
Related further reading by Susan Singleton...
Further Reading:
Editors Note: These articles first appeared as Susan Singleton's very popular column in Inventors World magazine.
Due to the changing nature of the law, Susan has fully updated them for 2015.
Part #4
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Q: I have no money. How do I protect my legal rights?
A: This is one of the most common legal problems around. The inventor has good evidence that his or her invention has been copied or patent infringed and yet cannot obtain access to justice because the infringer is a huge company, with massive assets and a large in-house legal department, and the inventor cannot fund litigation. Typical costs, quoted by intellectual property barristers for example, for an interim (emergency) injunction are £10,000 to £50,000. This would restrain a defendant infringing up to trial when the matter could be finally solved. If it went to a full trial legal costs of £500k+ are not uncommon. It is possible to use the Enterprise and Intellectual Property Court (EPIC) where legal costs recovery is limited to £50,000 however that is not always appropriate as your case might cost more than that to bring and you may want to recover costs higher than that from the other party in which case you may be better off in the High Court.
First check whether you are insured for legal costs. Many companies now have legal expenses insurance. Check exactly what the cover comprises and any financial limits. Secondly, consider taking out special intellectual property infringement insurance. Legal aid will not nowadays be available for this kind of case. You may always represent yourself, though remember that if you lose you may have to pay the other side's costs so you will be putting your personal assets at risk unless you take out insurance to cover you. If you do the premium which could be as much as £20,000 for £40,000 of insurance cover cannot be recovered from the other side even if you win the case but will have to come out of your damages.
In very clear cases where you are likely to win and the other party is a big company with a lot of money you may be able to find a solicitor and barrister both prepared to act on a no win/no fee basis. That means there is no charge if they lose but if they win they can charge their usual fees plus 100%. You cannot recover the extra 100% or any other similar such uplift percentage now from the other party even if you win. Again it must come out of your damages so again only cases where a lot of money is at stake are going to be fundable on this basis. Finally it is now possible to enter into damages based agreements where the solicitor and barrister are paid a percentage (up to 50% including VAT and solicitor and barrister fees) of whatever is recovered. These have not been much used since they became lawful as the rules are not clear and sometimes the sum recovered is so small that would not cover those legal costs.
Q: What notices should I put on my invention or other material to show it is mine?
A: ® means registered trade mark. It is an offence to use the sign when not registered. If you have made an application use the letters ™, or they can be used for unregistered names. There is no obligation to use these signs to obtain protection, but they do warn potential infringers and as well as serving as a useful deterrent they provide additional legal protection. For copyright materials, computer programs, plays, books, music, art work etc., use ©. Add your name and the date. You should also indicate if you have applied for a patent or the registered patent number, and the same for registered designs. It is also helpful to include warnings of your rights on all documents - such as the first screen display on a computer program.
You should never claim rights you do not have and there are criminal offences in the Patents Act 1977 and the Trade Marks Act 1994 where an unjustified threat of infringement is made. If you feel a big or small company is making threats for the sake of it, without any grounds, then you are entitled to a court declaration that you were not infringing their rights.
Q: I am patenting an invention in this country, how can I protect my position abroad? I do not know now where I may want to sell the product later.
A: It can be cheaper to make an application under the European Patents Convention and designate certain European states for national patents than making a series of national applications. A worldwide application is also possible. The problem is that the more countries are covered the more expensive the exercise and there is usually only a 12 month "window", after filing a UK application, to put in international applications. Patenting can be expensive. If you intend to involve an outside investor they may be able to assist. By 2017 it may be possible to apply for one European Wide Community or unitary patent.
"I have no money. How do I protect my legal rights?"