Your SlideShare is downloading. ×
0
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Intellectual Property in Engineering
Upcoming SlideShare
Loading in...5
×

Thanks for flagging this SlideShare!

Oops! An error has occurred.

×
Saving this for later? Get the SlideShare app to save on your phone or tablet. Read anywhere, anytime – even offline.
Text the download link to your phone
Standard text messaging rates apply

Intellectual Property in Engineering

1,249

Published on

Copyright - Ben Wyatt, Mathys & Squire, 2010

Copyright - Ben Wyatt, Mathys & Squire, 2010

0 Comments
2 Likes
Statistics
Notes
  • Be the first to comment

No Downloads
Views
Total Views
1,249
On Slideshare
0
From Embeds
0
Number of Embeds
3
Actions
Shares
0
Downloads
2
Comments
0
Likes
2
Embeds 0
No embeds

Report content
Flagged as inappropriate Flag as inappropriate
Flag as inappropriate

Select your reason for flagging this presentation as inappropriate.

Cancel
No notes for slide

Transcript

  • 1. Intellectual Property in Engineering Ben Wyatt 8th July 2010
  • 2. The Facts of Life Ideas alone are not enough
  • 3. The Facts of Life To commercialise You need CASH
  • 4. The Facts of Life In order to make your idea appealing to investors, you shouldn’t just give it away
  • 5. The Facts of Life But if you are over protective, you might put off suitable investors and end up on the shelf.
  • 6. The Facts of Life The best strategy is to be sufficiently appealing to investors, while not appearing too easy.
  • 7. Why Protect your IP? > U$100,000,000,000 U$76,000,000,000 U$67,000,000,000 U$66,000,000,000 (Source: BrandZ Top 100 Most Valuable Global Brands 2009)
  • 8. Why Protect your IP? The brand value of technological companies is often built on protecting their inventions. U$14,000,000,000 1863 EP Patent Filings in 2008 (2nd Highest) U$66,000,000,000 720 EP Patent Filings in 2008 (14th Highest) U$76,000,000,000 627 EP Patent Filings in 2008 (23rd Highest)
  • 9. Summary What is IP? Why should I protect my IP? How can I protect my IP? When and how should IP considered? Brief IP Comparison
  • 10. What is IP? Creations of the mind: Technological/Scientific - inventions, software, databases, genetically engineered plant varieties, mathematical algorithms Technologically produced - films, TV programs, broadcasts, sound recordings, printed matter, photographs … Artistic - music, songs, art, sculptures, literature, poetry, drama, … Commercial – brands, company names, trade marks, product designs, business methods, product packaging, manufacturing processes … Obviously there is a lot of overlap between the different categories and types
  • 11. Name / Logo? How is it made? Unique features? New Product What makes it unique? What will make it sell? What would others want to copy? How is it marketed? How will it be used? Accessories? Unique Look?
  • 12. Why Protect your IP? Same reason you would protect any other property: It is an incentive to investors It is an asset having almost unlimited potential financial value It can be bought, sold, ‘hired’ out (licensed) It can be used to exclude others from a lucrative market It can be used as leverage to enter a market It can be stolen or inadvertently lost to someone else You wouldn’t leave your laptop on view in an unlocked car while you go shopping
  • 13. How can I protect my IP? Some forms of protection require registration: Patents Registered Trademarks Registered Designs Some do not: Copyright Unregistered Designs Trade secrets Know-how All require careful consideration: Identify the IP, assess its value (actual and potential), determine the best way to protect it
  • 14. Patenting your Innovations What is a patent? A duration limited territorial monopoly granted by a government in return for public disclosure of a new and inventive technical product or process NOTE: Patents do not protect abstract ideas or concepts by themselves, they protect the application of the ideas or concepts to products or processes A patent does not give you the right to use an invention, it gives you the right to prevent a third party from using the invention
  • 15. Patenting your Innovations Patents What can be protected? New and inventive technical products or processes New and inventive combinations of known products
  • 16. Patenting your Innovations Not every Patentable idea is going to be a commercial success
  • 17. Patenting your Innovations Some will thankfully never see the light of day
  • 18. Patenting your Innovations Others however become an everyday part of our lives….
  • 19. Patenting your Innovations GB 436290 1936 Percy Shaw
  • 20. The State of the Art Patents – How is novelty assessed? Generally, against everything that is publicly available anywhere in the world before a patent application is filed Any prior public disclosure (called ‘prior art’) by anyone, anywhere, has the potential to prevent a patent being granted Limited exceptions, for example: in the case of disclosure in breach of confidence limited grace period against self-disclosure (e.g. in the United States)
  • 21. The State of the Art
  • 22. The State of the Art The prior art
  • 23. The State of the Art
  • 24. The State of the Art The prior art
  • 25. The State of the Art Invention must be kept confidential before filing No publication – articles, conferences, websites, pub Third parties/potential investors – use a Non Disclosure Agreement (NDA) or Confidentiality Agreement Seek advice from the Technology Transfer Office Consult a Patent Attorney!
  • 26. How do I know if my invention is inventive? Very subjective and generally a much lower hurdle than inventors expect Essentially inventive if the new feature / new combination provides an unexpected or non-obvious “technical” benefit over the prior art However, invention may also lie in identifying a problem with the prior art – even though the solution is obvious once the problem has been identified Not inventive if: The new feature/combination is incidental having no technical effect (e.g. a purely cosmetic effect) The new feature/combination provides no more than would normally be expected (e.g. a Swiss army knife)
  • 27. Example – squash balls Dark Black Green Blue Time • Based on real case (GB 1538860): • Would the dark green squash ball be patentable? • Would the blue squash ball be patentable? • Both are new but are they inventive?
  • 28. Example – squash balls Dark Black Green Blue Time • One might expect neither would be patentable – as they are just different colours – a purely cosmetic difference • But, there is a technical problem with black squash balls: – They mark the court – Dark green and blue squash balls do not • Assuming this is the only technical problem: – Would the dark green squash ball be patentable? – Would the blue squash ball be patentable?
  • 29. Example – squash balls Dark Black Green Blue Time • One might expect neither would be patentable – as they are just different colours – a purely cosmetic difference • But, there is a technical problem with black squash balls: – They mark the court – Dark green and blue squash balls do not • Assuming this is the only technical problem: – Would the dark green squash ball be patentable? • Yes as they are the first to solve this technical problem – Would the blue squash ball be patentable? • No as the problem has already been solved by the green ball
  • 30. Example – squash balls Dark Black Green Blue Time • 2nd problem with black squash balls: – They cannot be seen easily by television audiences – Neither can dark green squash balls – But blue squash balls can • Is the blue squash ball patentable?
  • 31. Example – squash balls Dark Black Green Blue Time • 2nd problem with black squash balls: – They cannot be seen easily by television audiences – Neither can dark green squash balls – But blue squash balls can • Is the blue squash ball patentable? – Yes as it solves this 2nd problem
  • 32. Example – back to squash balls Dark Black Green Blue Time • Changing the colour appears, at first sight, to be a purely aesthetic change, but: – Changing from black to green stopped the balls marking the court – this is sufficiently technical – Changing the colour to blue made it easier for television audiences to see the ball – this is sufficiently technical
  • 33. How can I protect my IP? What is a trade mark? A sign which is capable of distinguishing goods or services of one company from those of another – a badge of origin Protects goodwill - the reason your customers choose your product or service over your competitors – can be built up over time
  • 34. Trade Marks GOOGLE JUST DO IT DAVID BECKHAM Words, Slogans, Names Logos Trade Marks What can be registered? Colours Sounds Shapes
  • 35. Trade Marks ‘SPICY SAUCE’ SILK JOY (deceptive for (descriptive for salsa) clothing not made of silk) ‘DENIM’ (descriptive for jeans) Trade Marks What cannot be registered validly? Marks which are confusingly similar to earlier marks for the same goods or services Non-distinctive, descriptive, deceptive, offensive, laudatory, certain special symbols, or generic marks
  • 36. Design Rights What is a design? The outward appearance of a product including aspects of its shape (3D) and patterns or ornamentation (2D)
  • 37. Design Rights Registered Designs What can be protected? New product designs having individual character
  • 38. Design Rights Registered Designs What cannot be protected? ‘Must fit’ features, purely functional features
  • 39. Copyright Copyright Automatic protection for the expression of ideas Written, theatrical, musical and artistic works Film, book layouts, sound recordings, and broadcasts, performances Computer programs and Databases Limited protection for industrially exploited ideas Infringement requires copying
  • 40. Other Forms of IP Unregistered Designs Automatic protection of the visual appearance of a product Similar (but not identical) to registered designs Infringement requires copying Trade secrets / Know-how Knowledge about how a product works or is made that is not known publicly Recipes (e.g. Coca-Cola and Levi Roots’ Reggae Reggae Sauce) Chemical composition Structure of a silicon chip / and its manufacturing process
  • 41. When and how should IP be considered? As early as possible - as soon as you have a business idea What key IP has / will be generated? How can the key IP be protected? How does the key IP add value to the business? How can the value of the key IP be exploited? Who owns the IP? Make it the very heart of your business plan Document it, monitor it, protect it Seek professional advice
  • 42. When and how should IP be considered? Do not forget your competitors have IP too! How do I avoid infringing their IP? Early identification of third party rights - searching Analyse risk of infringement Risk reduction Design around Licence/assignment Revocation/opposition Cross licence Seek professional advice
  • 43. IP Comparison Patents Strong ‘monopoly’ right No need to prove copying – can be difficult to design around Limited Duration (generally 20 years max) Can be expensive to obtain Registered Trade Marks Strong ‘monopoly’ right Only as valuable as the ‘goodwill’ your business accrues Unlimited duration (pay the renewal fees) Can be relatively cheap to obtain but expensive to police
  • 44. IP Comparison Registered Designs Monopoly right – but not as strong as other registered rights No need to prove copying – but relatively easy to design around Limited duration (25 years max) Relatively cheap to obtain Copyright Extremely complex Not a monopoly right – must prove copying Long duration – typically author’s life plus 70 years Free to obtain but difficult and expensive to enforce
  • 45. IP Comparison Unregistered Designs Not a monopoly right – must prove copying Short duration – typically 10 years from first marketing (of which licenses must be allowed in the last 5) Free to obtain but difficult to enforce Trade secrets / Know-how Can be extremely valuable Potentially unlimited duration Difficult to maintain confidentiality How do you sell or license the know-how / trade secret securely?
  • 46. Intellectual Property in Engineering Thank you for listening Any questions?

×