Asia Law Network sits down with Jeremiah Chew, an intellectual property and technology lawyer based in Singapore, to get his views on the top questions frequently asked about Intellectual Property.
Jeremiah specializes in intellectual property, technology and competition law. He regularly advises on IP registration, licensing and transactions involving the sale and acquisition of IP rights. He has also represented IP clients at all levels of the Singapore courts.
- What do Intellectual property rights mean and what types of IP exist?
Intellectual property (IP) rights are intangible rights that are created by the human intellect. There are numerous categories of IP rights: the most common ones are trade marks, copyright, patents, designs and confidential information / trade secrets.
IP regimes seek to provide IP creators with property rights over their intellectual creations: this gives them an economic incentive to create more of these creations, which in turn benefits society.
- What rights does a patent owner have?
The owner of a registered patent has a monopoly over the invention that is protected by the patent. This allows the owner to prevent third parties from using the invention without permission. If a third party uses the invention without permission, the patent owner is entitled to sue for (among others) an injunction restraining the third party from using the invention, as well as damages in respect of the infringement.
- Why is IP important for my business and what considerations should I have when I am planning an IP strategy for a new market?
IP laws allow your business to claim ownership over, and derive value from, its intangible creations. For instance:
- You can license your IP rights to third parties in exchange for licence fees or royalties
- You can prevent competitors from using your IP rights (e.g. stop them from using a confusingly similar brand name, or stop them from using your software without permission)
- If you are trying to attract investors or are intending to sell your business, IP rights can be an important component of your business’s value (in some cases, a business’s IP rights can be worth more than its physical assets!)
These are some of the important points to consider when entering a new market:
- Which IP rights you are intending to use in that market (e.g. you may intend to sell your products under one brand in Country A, but under another brand in Country B);
- Whether the use of your IP in the new market will conflict with the rights of an existing competitor in that market;
- Your options for protecting your IP rights – for instance, registering your copyright is an option that is available to you in the US, but not in Singapore; and
- The costs of seeking protection for your IP rights in that new market.
- When is the best time to protect my IP?
It’s never too early to protect your IP.
IP registration is time-sensitive. Generally, you will not be able to register your IP if there is someone who has registered something identical or similar before you.
You may not have the budget to register / seek protection over all your IP rights from day one, but that should not stop you from developing an IP strategy and planning for registration / greater protection when you have the financial resources to do so.
There is often more than one way to protect an IP right and it does not always have to be costly or involve registration (e.g. if you do not have the funds to seek patent registration, it is possible for you to protect your invention as a trade secret in the meantime).
- What are trade secrets and how do I protect them?
Trade secrets are a type of confidential information that your business can use to obtain a competitive edge or advantage. Some examples of information that could be trade secrets are:
- Manufacturing processes
- Supplier and customer lists
- Business plans
- Sales and distribution methods
At the risk of sounding obvious, trade secrets need to be kept secret / confidential in order to be protected. Once a trade secret is disclosed to the public, it loses its value as it becomes public knowledge.
These are some of the ways in which you can maintain the secrecy and confidentiality of your trade secrets:
- Make sure that the people in your organisation respect the confidentiality of trade secrets: e.g. include confidentiality obligations in their employment agreements, conduct regular training to remind them of the importance of keeping trade secrets confidential
- Adopt physical and technical security measures to prevent information from being accessed or disclosed without authorisation
- Only disclose trade secrets to your employees, agents, and contractors on a need-to-know basis; when disclosing trade secrets to persons outside your organisation, have them sign NDAs to preserve confidentiality
- Enforcing IP rights can be costly, is it worth creating IP rights if the company cannot afford to sue others?
The answer is 100% yes.
As mentioned above, having an IP portfolio allows you to license your IP rights to third parties, and also adds value to your business (which may be relevant for potential investors / buyers). These are benefits that will accrue to your business without you having to sue anyone.
In the event that you need to enforce your IP rights, it does not necessarily need to be done in a costly manner. IP disputes are often resolved without going to court – infringers may back down after receiving a sternly worded letter informing them of your IP rights, or may agree to enter into a settlement with you to resolve the dispute. These options would not be available to you if you did not have those IP rights in the first place – hence showing the importance of creating and maintaining your IP portfolio.
- What happens if the person who infringes my intellectual property rights is based overseas?
If someone based overseas has infringed your IP rights in Singapore, it is possible for you to send the infringer a letter of demand, or to sue the infringer in Singapore.
However, since you will not be able to serve the court documents on the infringer in Singapore, you will have to consider alternative forms of service (i.e. substituted service) or seek permission from the court to serve the court documents on the infringer overseas. There may be practical difficulties if you are unaware of the infringer’s address / contact details.
- How much should I set aside for legal costs regarding intellectual property?
It really depends what you want to do!
Legal costs for IP-related matters can range from a few hundred dollars (e.g. to conduct a few IP searches) to millions of dollars (e.g. for a complex patent infringement case spanning multiple countries).
The correct question to ask is whether incurring those costs to protect / enforce your IP rights is cost-efficient. It would make sense to spend $1m on pursuing a patent infringement claim if the value you will get from a favourable decision far exceeds that amount.
- Can you sell an idea to a company without a patent?
Yes, you can.
As there are stringent requirements to be fulfilled before one can obtain patent protection, there are many ideas which can’t be protected under the patent regime. However, this does not mean that these ideas can’t be protected as a different type of IP. For example:
- If an idea relates to the creation of software or multimedia content, it could be protected by copyright;
- If an idea relates to the creation of a new design, it could be protected as a registered design; and
- If an idea relates to know-how, business plans, or manufacturing processes, it could be protected as a trade secret.
- When do I need a lawyer in managing my IP?
This depends on a number of factors including your budget, how familiar you are with the IP regime, and the extensiveness / complexity of your IP portfolio. This is a (non-exhaustive) list of scenarios in which you should probably engage a lawyer:
- If you are dealing with IP where technical expertise is needed (e.g. drafting a patent application)
- If you have a large number of IP applications / registrations to manage (e.g. a global trade mark portfolio)
- If you are negotiating an IP-related contract and you are not familiar with the terms and conditions in the contract
- If you are commencing legal action against an infringer OR if you have to defend an infringement claim
Have a question on Intellectual Property?
If you have any questions about Intellectual Property, you can request a quote with Jeremiah Chew. You can also get a Quick Consult with lawyers with similar expertise for a transparent, flat fee of S$49. You can expect a call back within 1-2 days on the phone to get legal advice and have your questions answered.
This article is written by Jeremiah Chew from Ascendant Legal LLC and edited by Elizabeth Tan from Asia Law Network.
This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to a practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of Interstellar Group Pte. Ltd. accepts or assumes responsibility, or has any liability, to any person in respect of this article.