Jane Lambert Barrister Batley Business Park, Thursday, 11 Oct 2007 How IP can help these three young entrepreneurs

Developing an IP Strategy

Developing an IP Strategy

Options for legal protection: Law of confidence Design Rights Patents Trade Marks Passing off and unfair competition

Options for legal protection:

Law of confidence

Design Rights

Patents

Trade Marks

Passing off and unfair competition

Advantages: Arises automatically Costs nothing to acquire Potentially unlimited term of protection No need to publish invention Worldwide reach Disadvantages Protection ceases when secret is in public domain Vulnerable to reverse engineering and industry-wide progress Not easy to enforce Law of Confidence

Advantages:

Arises automatically

Costs nothing to acquire

Potentially unlimited term of protection

No need to publish invention

Worldwide reach

Disadvantages

Protection ceases when secret is in public domain

Vulnerable to reverse engineering and industry-wide progress

Not easy to enforce

Advantages: Unregistered rights arise automatically and cost nothing to acquire Registered designs easy to acquire in EU Grace period for registration in Europe Easy to enforce registered designs Disadvantages Protect appearance but not technology Need to prove copying in the case of unregistered rights Registered rights vulnerable to challenge Not so easy to enforce unregistered ones Design Rights

Advantages:

Unregistered rights arise automatically and cost nothing to acquire

Registered designs easy to acquire in EU

Grace period for registration in Europe

Easy to enforce registered designs

Disadvantages

Protect appearance but not technology

Need to prove copying in the case of unregistered rights

Registered rights vulnerable to challenge

Not so easy to enforce unregistered ones

Advantages: Confer monopoly of a product or process for up to 20 years Harmonization of patent law throughout Europe and to some extent the world Relatively easy to enforce Disadvantages Difficult to acquire and expensive to maintain and enforce Duty to disclose invention to the world Vulnerable to revocation and circumvention Patents

Advantages:

Confer monopoly of a product or process for up to 20 years

Harmonization of patent law throughout Europe and to some extent the world

Relatively easy to enforce

Disadvantages

Difficult to acquire and expensive to maintain and enforce

Duty to disclose invention to the world

Vulnerable to revocation and circumvention

Advantages: Confers potentially unlimited monopoly of a sign capable of distinguishing one supplier’s goods or services from all others’ Harmonization of trade marks law throughout Europe and to some extent the world Relatively easy to enforce Disadvantages Protects only brands and not designs or technology Limited to the country or countries of registration Vulnerable to revocation and invalidity Trade Marks

Advantages:

Confers potentially unlimited monopoly of a sign capable of distinguishing one supplier’s goods or services from all others’

Harmonization of trade marks law throughout Europe and to some extent the world

Relatively easy to enforce

Disadvantages

Protects only brands and not designs or technology

Limited to the country or countries of registration

Vulnerable to revocation and invalidity

Advantages: Comes into being automatically when circumstances arise Protects signs that cannot be registered as trade marks Worldwide reach Disadvantages Protects only established businesses Difficult and sometimes expensive to enforce Passing off or Unfair Competition

Advantages:

Comes into being automatically when circumstances arise

Protects signs that cannot be registered as trade marks

Worldwide reach

Disadvantages

Protects only established businesses

Difficult and sometimes expensive to enforce

Options for Legal Protection Trade Mark Registration Design Registration Unregistered design rights Copyright Passing off

Options for Legal Protection

Trade Mark Registration

Design Registration

Unregistered design rights

Copyright

Passing off

Trade marks for brand Artistic copyright and perhaps design registration for website design Confidentiality for source code, customer data, know-how, show-how Database right for databases Literary copyright for programs

Trade marks for brand

Artistic copyright and perhaps design registration for website design

Confidentiality for source code, customer data, know-how, show-how

Database right for databases

Literary copyright for programs

Developing an IP Strategy

Developing an IP Strategy

Patents cost money Most patents never worked Few patents cover their costs Even fewer make money for their owners Pointless unless they can be enforced by legal action So why bother?

Patents cost money

Most patents never worked

Few patents cover their costs

Even fewer make money for their owners

Pointless unless they can be enforced by legal action

So why bother?

Looks good on the CV? Peer group pressure? Condition of public funding? Condition for securing investment? Need the monopoly to secure a return on investment? Only the last is a good reason for incurring the expense of applying for and maintaining a patent

Looks good on the CV?

Peer group pressure?

Condition of public funding?

Condition for securing investment?

Need the monopoly to secure a return on investment?

Only the last is a good reason for incurring the expense of applying for and maintaining a patent

Intellectual assets such as brands, designs, inventions and creative works should exist for business – not the other way round Such assets confer competitive advantage Intellectual property entrenches that advantage Intellectual property is worthless unless it can be enforced by legal action Resources are not unlimited Need to prioritize

Intellectual assets such as brands, designs, inventions and creative works should exist for business – not the other way round

Such assets confer competitive advantage

Intellectual property entrenches that advantage

Intellectual property is worthless unless it can be enforced by legal action

Resources are not unlimited

Need to prioritize

What are the company’s competitive advantages? What are the main threats to those advantages? What legal protection is available for those competitive advantages? How can such protection be enforced?

What are the company’s competitive advantages?

What are the main threats to those advantages?

What legal protection is available for those competitive advantages?

How can such protection be enforced?

Criminal liability for piracy and counterfeiting Collecting societies for certain types of copyright, rights in performances and other rights Civil litigation

Criminal liability for piracy and counterfeiting

Collecting societies for certain types of copyright, rights in performances and other rights

Civil litigation

IP protection should be tailored to company’s needs and resources Main markets should be covered first Main risks in each market should be addressed Insurance should be taken out to fund enforcement

IP protection should be tailored to company’s needs and resources

Main markets should be covered first

Main risks in each market should be addressed

Insurance should be taken out to fund enforcement

Patent protection in Europe, Japan, USA, China and Korea in that order for Brenda Community trade marks and design registration for Harry No registered right protection would be cost effective for Wally IP Insurance should be sought for all of them

Patent protection in Europe, Japan, USA, China and Korea in that order for Brenda

Community trade marks and design registration for Harry

No registered right protection would be cost effective for Wally

IP Insurance should be sought for all of them

Developing an IP Strategy

Developing an IP Strategy

Legislation - consolidated patents, designs, trade marks, copyright statutes UK-IPO website Legislation - consolidated patents, designs, trade marks rules and other secondary legislation UK-IPO website Legislation – European Patent Convention protocols, and implementing regulations EPO website Legislation - Community Trade Marks and Designs Regulations OHIM website

Legislation - consolidated patents, designs, trade marks, copyright statutes UK-IPO website

Legislation - consolidated patents, designs, trade marks rules and other secondary legislation UK-IPO website

Legislation – European Patent Convention protocols, and implementing regulations EPO website

Legislation - Community Trade Marks and Designs Regulations OHIM website

Case La w – transcripts of judgments of European Court of Justice and all UK and Irish courts BAILII website Case Law – transcripts of decisions of UK-IPO hearing officers UK-IPO website Case La w – transcripts of decisions of EPO boards of appeal EPO website Case Law – transcripts of decisions of OHIM boards of appeal OHIM website

Case La w – transcripts of judgments of European Court of Justice and all UK and Irish courts BAILII website

Case Law – transcripts of decisions of UK-IPO hearing officers UK-IPO website

Case La w – transcripts of decisions of EPO boards of appeal EPO website

Case Law – transcripts of decisions of OHIM boards of appeal OHIM website

Treaties and Conventions – Paris, Berne, Rome, PCT and Madrid Protocols WIPO website Treaties and Conventions – TRIPs and other WTO agreements WTO website

Treaties and Conventions – Paris, Berne, Rome, PCT and Madrid Protocols WIPO website

Treaties and Conventions – TRIPs and other WTO agreements WTO website

Domain Names – UDRP and other legal instruments ICANN website Domain Names – transcripts of gTLD decisions WIPO website Domain Names – DRS Policy and transcripts of .uk ccTLD decisions Nominet website

Domain Names – UDRP and other legal instruments ICANN website

Domain Names – transcripts of gTLD decisions WIPO website

Domain Names – DRS Policy and transcripts of .uk ccTLD decisions Nominet website

Prior Art: esp@cenet – searchable patents database accessible through UK-IPO website Trade Marks: searchable database of UK, Community and international registrations UK-IPO website Designs: searchable database of UK registrations UK-IPO website Designs: searchable database of Community designs OHIM website

Prior Art: esp@cenet – searchable patents database accessible through UK-IPO website

Trade Marks: searchable database of UK, Community and international registrations UK-IPO website

Designs: searchable database of UK registrations UK-IPO website

Designs: searchable database of Community designs OHIM website

Searches: Patent Libraries at Leeds, Sheffield and Manchester Central Libraries Trade Mark and Design Searches: UK – IPO (£80 + VAT for trade marks and c£350 + VAT for designs) Individual Patent and Trade Mark Agents: fees vary from firm to firm and search to search

Searches: Patent Libraries at Leeds, Sheffield and Manchester Central Libraries

Trade Mark and Design Searches: UK – IPO (£80 + VAT for trade marks and c£350 + VAT for designs)

Individual Patent and Trade Mark Agents: fees vary from firm to firm and search to search

Inventors Clubs: Leeds, Sheffield, Manchester and Liverpool Central Libraries Patent Clinics: Leeds, Sheffield, Manchester and Liverpool Central Libraries IP Clinics: Bradford, Halifax and Huddersfield at Velocity, Gumption, Elsie Whitely and Media Centres n ip c ®

Inventors Clubs: Leeds, Sheffield, Manchester and Liverpool Central Libraries

Patent Clinics: Leeds, Sheffield, Manchester and Liverpool Central Libraries

IP Clinics: Bradford, Halifax and Huddersfield at Velocity, Gumption, Elsie Whitely and Media Centres n ip c ®

Developing an IP Strategy

Developing an IP Strategy

Horses for Courses Patent Counsel: advice on difficult points of law, complex drafting and representation before Patents Court, Patents County Court, IP Lists of Chancery Division and Leeds, Manchester, Liverpool, Newcastle, Birmingham, Bristol, Cardiff and Central London County Courts, UK-IPO, EPO, arbitrators, mediators and other tribunals

Horses for Courses

Patent Counsel: advice on difficult points of law, complex drafting and representation before Patents Court, Patents County Court, IP Lists of Chancery Division and Leeds, Manchester, Liverpool, Newcastle, Birmingham, Bristol, Cardiff and Central London County Courts, UK-IPO, EPO, arbitrators, mediators and other tribunals

Patent Agents: applications for patents, trade marks, designs, general advice on IP and technology law, drafting and representation before hearing officers in routine cases Trade Mark Agents : applications for trade marks and designs, general advice on IP and technology law, drafting and representation before hearing officers in routine cases

Patent Agents: applications for patents, trade marks, designs, general advice on IP and technology law, drafting and representation before hearing officers in routine cases

Trade Mark Agents : applications for trade marks and designs, general advice on IP and technology law, drafting and representation before hearing officers in routine cases

IP Solicitors: Manage clients’ legal affairs including conducting litigation, negotiating and drafting licence agreements, assignments and other instruments and representation before judges in chambers, masters, district judges and in some cases trial judges and appellate tribunals

IP Solicitors: Manage clients’ legal affairs including conducting litigation, negotiating and drafting licence agreements, assignments and other instruments and representation before judges in chambers, masters, district judges and in some cases trial judges and appellate tribunals

Each profession has its own strengths and limitations as do individual members of those professions Bmedi@ panel of professional advisors

Each profession has its own strengths and limitations as do individual members of those professions

Bmedi@ panel of professional advisors

Media Centre, 7 Northumberland Street, Huddersfield, HD1 1RL T 0870 990 5081 F 0870 990 5082 E jane.lambert@nipclaw.com

Media Centre, 7 Northumberland Street, Huddersfield, HD1 1RL

T 0870 990 5081 F 0870 990 5082 E jane.lambert@nipclaw.com