Business Law !

INTELLECTUAL PROPERTY

What is Intellectual Property?

Intellectual Property (IP) is a means of protecting the

results of innovation and creative activity

 IP rights are negative rights.

 IP rights are territorial.

 IP rights cover intangible assets which can be bought/sold/licensed.

Intellectual Property – an overview

• Patents

• Trade marks

• Designs

• Copyright

• Know-how

• How can I protect my own IP?

• How can I avoid infringing the rights of others?

Why protect IP?

 Stop others using what you’ve created (brand, product or process) without your permission

 Exclusivity can demand higher sales prices

 Generate income by licensing

 Attractive to investors

 Possible to arrange for IP valuation and borrowing against IP rights

IP in Practice

Patents

Trademarks

Copyright

Designs

Know-how

Patents

 A right protecting an invention

 The deal – a patent affords a territorial privilege or monopoly for a limited period – in exchange for letting the world use your invention after monopoly expires

 Maximum duration of 20 years in most countries

What can you get a patent for?

• Inventions related to products, methods or manufacturing processes or other aspects of new technology used to solve a technical problem

• Must be new – i.e. not published anywhere else before, including by the inventor/owner

• Must involve an “inventive step” – i.e. “non-obvious” to a person skilled in the art

What can’t you get a patent for?

The law provides a list of “things” excluded from patent protection, including:

• Computer programs

• Business methods

• Mathematical methods

• Methods of performing mental acts

• Methods of playing games

• Presentation of information

– However… only excluded as such

Patent Application Process

 UK patents typically take 3-4 years to grant  An international application can be filed up to 12 months after initial filing

First Filing

0m 12m

File Priority

Claiming

Applications

24m 36m 48m

Request

Examination

(can be

requested

earlier)

Application in

Order for Grant

Examination

18m

Publication

Patents – a checklist

1. Consider “freedom to operate searching” to identify

potentially conflicting patents owned by third parties

2. Be very careful about disclosing your invention prior to

filing

3. If in doubt talk to a patent lawyer

Trade Marks

“A badge of origin”

Anything which can be represented graphically e.g. Words (including personal

names), colours, slogan, logo, packaging, product shape, holograms, smells,

sounds…

But – hard to protect descriptive or generic marks and, for example,

invented words

e.g. COCA COLA, LEGO, KODAK etc have broader protection than more

descriptive words

• Territorial - a registration in one country or region does not automatically

give owner rights in another

Trade Marks

 Territorial - a registration in one country or region does not automatically

give owner rights in another

 Once registered protection can be renewed indefinitely.

Trade Marks

How to apply for registration

file application

examination

publication registration

Registration process in the UK takes ~ 4 months

Registration process in EU take ~ 6 months

file international

applications within 6

months

 Filed at UKIPO – need to identify at least one “class” for trademark – i.e.

the particular class of product or service to which your trademark relates.

 Recommend filing the trademark in respect of any class that you think

could be relevant or into which you could expand, as you cannot add

classes after filing.

 Search – UKIPO search for earlier relevant trade marks – those which look

or sound the same or similar and which are registered for goods or

services which are the same or similar – basically any trademarks which

your trademark may be confused for.

 Results of search sent to you within 20 days, you then have two months to

resolve any problems.

How to apply for registration

 In total, the registration process takes about 4 months in the UK, but this is

longer if the trademark is opposed.

 The registration process in the EU takes about 6 months without

opposition.

 If Examiner accepts your application, trademark is published in the trade

mark journal for 2 months.

 During this time any person can oppose your application. If, at the end of

the two month period, no oppositions are filed, the trademark is registered.

How to apply for registration

Trade mark registration – Infringement

 Infringement = use of an identical or confusingly similar mark in relation to

identical or similar goods

 The similarity is judged on the basis of aural, visual and conceptual

 comparison

 Possible to prevent use of a similar mark in relation to dissimilar goods if

 mark has a “reputation”

 An infringer may be subject to any of damages, injunctions, account of profits

Unregistered trade mark rights – law of

“passing off”

 Right to prevent third party use of a similar mark through showing earlier use of a mark

 Hard to prove

 Higher standard – customers need to be deceived not just confused

 To be successful in a “passing off” action, you also need to provide

evidence of “misrepresentation – ie the third party, whether intentionally or

otherwise, led the public to believe that the product of the third party is

yours.

 The required elements of “passing off” can be quite difficult to prove –

whereas with registered trademarks it is sufficient to prevent third party

use of a trademark which confuses the public (i.e. they could confuse the

third party’s trademark for yours), with passing off customers need to be

deceived, not confused, so they need to genuinely believe that the third

party’s mark is yours.

Unregistered trade mark rights – law of

“passing off”

 Collectively, these elements can be very difficult to prove.

Note: A passing off case can also be much more costly than a corresponding

case for a registered trademark. Since trademarks do not cost much to

register (at least compared to other IP).

Unregistered trade mark rights – law of

“passing off”

Trade marks – a checklist

1. Identify trade marks of your business

2. When selecting new marks consider marketing function against your ability to

protect the marks

3. Check your mark is free to use by searching in the early stages and before

bringing it into use

4. Protect your marks through registration – consider potential product range

expansion

Designs

 Protect the visual appearance of a product

E.g. lines, contours, colours, shape, texture or materials of product or its ornamentation

 Registered and unregistered (lasts for a shorter period and hurdle to  catch infringers may be higher for unregistered designs)

 Can cover whole or part of a product

 Protects against competitor selling a product that is visually the same

Criteria

 Your design needs to:

 Be new (therefore searching is important for this and to prevent infringing)

 Not be offensive

 Not make use of protected emblems or flags (e.g. the Olympic rings or Royal Emblems)

 Not be an invention or how a product works – if so this would require a patent instead

Registered designs

 Requires formal registration with the relevant national (or European) office

 Must be filed within 12 months of public disclosure

 Once registered protection can be renewed every 5 years, up to a total of 25 years (in the UK and in E.U.). Generally 20-25 years.

Registered designs

Note: A registered design can protect the whole or a part of a product so if

you have a product, a large part of which is generic or well known in the

market place but you have changed a small feature to something that is

unique to you then you could register this feature or on its own so if you later

wanted to use that feature on other products you could do so.

 Protects against competitor selling a product that “does not produce a different overall impression on the informed user”

How to apply for registration

file application

examination

registration &

publication

Registration process in the UK takes ~ 1-3 months

file international

applications within 6

months

Un-registered designs

Benefit – Right exists automatically even if not registered

More limited protection of features than for registered designs

Disadvantage – Must show that actual copying has taken place so even if they are identical, products designed completely independently will not infringe

Shorter lifespan – 3 years in EU, up to a maximum of 15 years in the UK

Can be useful but better if only relied on as a fall back position

Designs – a checklist

1. Identify aspects of your product for which the look is of benefit to you

2. Keep a record of changes in the design.

3. Make sure you initial and date stamp design documents.

4. Keep a record of first public disclosure of the design.

5. If the look is important – Register it!

Copyright

• Copyright resides in “Original artistic, dramatic, literary, and musical works…irrespective of quality” – no registration is required but records showing creation and ownership are important

• Often described as “the expression of an idea” – e.g.

Pictures/photographs, films

Books, articles, guides, instructions

Sheet music, lyrics

Software source code, graphical user interface etc.

Copyright – scope of protection

 Arises automatically, no need to register and can last up to 70 years after

death of creator

 Need to show who, when and how created and prove ownership!

 Infringement = unauthorised reproduction of whole or “substantial part” of the work in question

 Have to show copying has taken place – so if created independently may

not be infringement

 Be careful when copying things from the internet!

Know-How & Trade Secrets

 Keeping information secret (e.g. process, recipe etc.)

e.g. Coca-Cola, KFC….

 Hard to protect

 Only really useful if you cannot patent the idea and

you are completely sure you can prevent disclosure

Costs

 Varies considerably depending upon complexity of IP and country for

which protection is required…..

 In the UK (approx.):

 Trade Marks – £1000-2000

 Patents – £5000 for initial filing. Total to obtain granted patent can

be around £20000.

 Designs – £800-1000+

 Copyright – Automatically exists – no costs

IP Ownership

 Trade Marks – The applicant is the owner.

 Patents – Inventor owns the IP, unless the invention was made as part

of his/her job, in which case his/her employer will own the invention.

 Designs – The designer is the owner, unless the design was made as

part of their job, in which case their employer will own the invention. A

commissioned design is owned by the designer and not the

commissioner (unless a contract states otherwise)

 Copyright – The creator of the work is the owner, except where made

in the course of employment.

How to search for earlier designs

• http://worldwide.espacenet.com/?locale=en_EP

How to search for earlier designs

• https://www.gov.uk/search-for-trademark

How to search for earlier designs

How to search for earlier designs

• https://www.gov.uk/search-registered-design

Links

• Espacenet (Patents) - http://worldwide.espacenet.com/?locale=en_EP

• UK IPO (Trade marks) - https://www.gov.uk/search-for-trademark

• UK IPO (Designs) - https://www.ipo.gov.uk/d-find-product.htm

Points to Consider

1. Where do you need IP – consider markets, competitors, manufacture

2. What do you need to protect – an invention, features of appearance, your brand

3. Who is the owner?

4. Is your IP new?

5. Check that you do not infringe the rights of others

6. Keep records

7. Keep confidential until filed!

8. Keep IP considerations in mind as part of commercial strategy and day to day practice

9. Ask questions about IP as early as possible