IP & Trade Marks, Amy Ralston,

Introduction To IP & Trade Marks

This weeks #powerhour is from Amy Ralston an Intellectual Property & Technology Associate at Stephens Scown, on an introduction to IP & trade marks for female health founders. Amy specialises in intellectual property and technology law, and has expertise in influencer marketing law and the regulation of the same. Amy heads up the IP team’s IP Audit offering, which covers the full reviewing of a business’ intellectual property position, identifying risks, concerns and recommendations.

 IP & Trade Marks, Amy ralston, Stephens scown,
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Navigating Intellectual Property for Women’s Health Innovations:

There are a variety of different options available when it comes to protecting an innovative product or service. The five key areas of intellectual property (IP) are copyright, trade marks, patents, designs and confidential information. 

Copyright and some types of unregistered designs arise automatically. However, trade marks, registered designs and patents need to be applied for in order to exist. If technology is at the heart of your business, then copyright will undoubtedly be the prevailing right. However, whether or not you or your business is the copyright holder is another matter.

It is absolutely critical to understand where rights vest and to ensure that you have all the correct licenses and permissions to commercialise your product or service. 

-Amy Ralston

Another key consideration, given the sensitivity of the data, is data protection. This is often neglected at the outset of health-tech businesses and should instead be a key factor to the development of the product – otherwise known as “privacy by design”. 

 IP & Trade Marks, Amy ralston, Stephens scown,
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Balancing Trade Secrets and Patents:

In the context of women’s health, what factors should female entrepreneurs consider when deciding between keeping certain aspects of their business as trade secrets versus seeking patent protection, and how does this impact their competitive edge in the market?

This is an excellent question. 

Patent protection is notoriously expensive and a lengthy process. However, if the budget is available and the criteria for patent protection is met, it may be a desired option – depending on the business’ objective. Trade secrets do not require any specific action to be taken, although non-disclosure agreements often help preserve the secrecy of the information and are therefore a lower cost option. 

Patents publish to the world at large how your invention or methodology works, which is a complete contrast to the trade secrecy approach.

Companies like Google and Coca Cola opted not to use patent protection but instead, trade secrecy. 

-Amy Ralston

It is worth that there is no automatic duty of confidentiality – there is a three part legal test which must be met in order for such duty to arise. The easiest way of meeting this test is by using an effective non-disclosure agreement or building in a confidentiality clause into your wider agreement.

International Expansion and IP Protection:

For female health founders aiming to expand globally, what key considerations should they keep in mind regarding intellectual property protection in different jurisdictions, especially in the context of women’s health products and services?

There is no “global law”, so with global expansion comes different jurisdictions and different laws. That said, there were a number of treaty agreements signed between the UK and a number of different countries meaning that some rights are recognised and enforceable in certain circumstances. In addition,

trade mark protection is available across the globe, and we work closely with overseas associates to help our clients achieve brand protection in multiple countries. 

-Amy Ralston

Having the right terms of service in place is paramount to ensure you have the right parameters in place for provision of your product or services – and for such terms to be governed by the laws of England and Wales. 

 IP & Trade Marks, Amy ralston, Stephens scown,
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Collaborations and IP Ownership:

In collaborative efforts within the women’s health sector, how can female entrepreneurs ensure clarity and fairness in intellectual property ownership, and what steps should the take to safeguard their interests in joint ventures or partnerships?

The author of the work is usually the owner of the copyright in the work and the copyright owner can decide how that work is used in the future – the copyright owner’s prerogative. As copyright arises automatically, this ownership position happens regardless of who is paying for the work – so, if you’re paying a developer to develop a platform for you, they will be the copyright owner in the platform unless you have put a sufficient written agreement in place to assign the title, interest and right in the platform to you (or your company. 

When it comes to the law of intellectual property rights, “jointly owned IP” is problematic and high risk. It is a rarity for joint IP to arise on its own (usually there is a patchwork of rights where one person owns one part and the other person owns another), and more common for it to be contracted into. Joint IP, if permissions and uses are not clearly defined in an agreement, can cause a stalemate type situation, where neither party can use the IP without the other’s consent. 

Regardless of the intentions between the collaborators, it is best practice and recommended to put an agreement in place at the outset which clearly defines the rights and responsibilities of each party and how any resulting IP can be used – and for how long.

-Amy Ralston

FDA Regulations and IP Strategy:

Given the regulatory landscape for women’s health products, how does the FDA approval process intersect with intellectual property strategy, and what proactive measures should female health founders take to align their IP strategy with regulatory requirements?

Obtaining any and all necessary regulations and approvals is absolutely key for the operation of the business. Not all businesses will require approval and sign-off, but all businesses should be confident on where they fall and whether they do or do not need certain licenses and/or approvals to operate. 

In terms of intersecting with a business’ intellectual property strategy – it ultimately comes down to protecting your business and reducing risk. Without a comprehensive IP awareness and strategy, the risk of leaking confidential information, infringement, missed opportunities or giving competitors an advantage increases.   

Defensive IP Strategies:

In a competitive market, what defensive intellectual property strategies should female health founders employ to protect their business from potential infringement claims, and how can they proactively monitor and address IP threats in the women’s health industry?

There are several steps that can be taken which vary in cost and accessibility. An easy, no-cost tip is to make use of the UKIPO’s trade mark register.

You can freely search for UK registered brand names, slogans and logos.

-Amy Ralston

This is not a foolproof method and instead, a trade mark availability search can be conducted – this is something we can help with. Once you obtain your registered trade mark, we can also offer a “watching service” to monitor any new similar or identical marks in the same classes. 

Another no-cost option is to maintain a dated record of all documentation and codebase. This is because such documentation might need to be used as evidence to prove a) that you created the intellectual property yourself, and b) that your intellectual property was made before your competitor’s.

We offer IP discovery packages, starting at £460 plus VAT which may be of interest. This includes a 30 minute meeting to discuss your innovation followed by a report with key recommendations to help inform your IP strategy. 

 IP & Trade Marks, Amy ralston, Stephens scown,
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Brand Protection and Trade Marks:

Not all trade marks are capable of registration. A trade mark registration creates an asset which you can trade with. It offers you legal protection, enabling you to stop others using an identical or similar mark in respect of relevant goods or services. There is a common tendency when choosing a brand to focus on ensuring that the brand informs customers about the product and services on offer – and to opt for a descriptive brand name. For example, electing “My Menopause Diary” for an app that records your symptoms and experiences when experiencing menopausal symptoms would not be eligible for registration, but “RAE” (as a hypothetical example) would be as it is not descriptive. 

My colleague Becky Pickford has written an article on choosing a trade mark which may be helpful (click here to read).

IP Budgeting for Startups:

Given the resource constraints often faced by startups, how can female health founders develop a cost-effective yet robust intellectual property strategy that aligns with their business goals, and what are the essential elements to prioritise in their IP budgeting process?

For businesses to build a truly robust intellectual property strategy, obtaining advice from specialist legal advisors is vital. 

There are different funding avenues and options available. One relatively popular route is via Innovate UK Edge to obtain a partially funded IP Audit. An IP Audit is a detailed process providing founders with an in-depth analysis of numerous aspects of their business and where IP lies in the same. It also provides immediate recommendations and long-term suggestions for their business in relation to IP. This can be invaluable to founders as the tailored nature of the audit enables them to fully develop a cohesive IP strategy that aligns with long-term business goals. 

For those businesses who are not eligible for the IP Audit funding scheme or are unsuccessful, we have devised alternative packages at different price points. I can provide more information if this is of interest. 

3 Takeaway Actions For Female Health Founders:

  1. Connect with me on LinkedIn – I am passionate about women’s health, and I would love to hear about your fantastic innovations and business journeys. I also regularly post articles about intellectual property which can help to build your knowledge in the field.
  2. Look into signing up to an innovation programme such as Innovate UK Edge – I would be happy to introduce you to an advisor near you. 
  3. Prioritise protecting your IP – you’ve worked too hard not to!