What is an IP clearance check?
An IP clearance check is a review of a particular product, brand or service and comparison against registered intellectual property rights which exist in the country or countries in which that product, brand or service will be placed on the market.
That makes sense, but why is one needed?
The aim of the IP clearance check is to ensure that placing the product, service or brand on the market will not cause you, your customers or a licensee to infringe the intellectual property rights of a third party. For example, if you offer a new product under a brand which has already been registered as a trade mark, then you and, in certain circumstances, your customers could then receive a claim for trade mark infringement from the trade mark owner.
To give a real example, a client of ours took a licence of a high profile brand from the brand owner in the USA, which enabled our client to produce and market a product in the UK. Unfortunately whilst the brand owner held a trade mark in the USA, it did not hold any rights in the UK. To make matters worse, an unconnected third party had registered the brand for the products concerned in the UK and just before the planned national launch of the branded products (after much pre-launch publicity) sent a letter of claim alleging trade mark infringement. Our client was required to very quickly do a deal with the third party whilst under considerable time pressure to keep to the publicised launch date. In that case the allegations could have been pre-empted had a trade mark search been undertaken, as this would have identified the rights held by the third party and a better deal could have been reached.
What is involved in an IP clearance check?
There are different types of IP and the first stage is to understand your business and the product, brand or service concerned. We will also need to identify what IP rights your business already holds. These steps will allow us to identify which IP rights are most likely to pose a potential risk to your business.
A single product can have several registered IP rights applying to it, such as patents covering what the product does, how it is made or what it is made of, registered designs covering what it looks like and trade marks for its name or the brand under which it is marketed.
The relevant clearance searches are then undertaken against the IP rights identified as being of concern. There is the strong possibility that the searches will reveal some IP rights of potential relevance and our team will use their skill and experience to assess the risks those IP rights represent and how to reduce the risk presented.
Are there other IP rights which can apply?
Yes, there are also unregistered IP rights for which there is no central database which can be searched. These rights include copyright, database rights, unregistered designs and rights in reputations.
Whilst these rights cannot be searched for directly, we can undertake indirect searches and work with you to see if we can identify other IP rights - or whether a search is even necessary.
As unregistered rights can be enforced against you, no matter how many searches we undertake there is always the possibility that a third party has an enforceable IP right which we cannot find. However, the greater the scope and volume of our searches, the lower the risk that an enforceable IP right will remain “undiscovered”.