These are the slides of a presentation that I gave to business owners at the Library@The Lightbox in Barnsley on Monday 23 Sept 2019. I explained that IP is the bundle of laws that protect investment in intellectual assets, that is to say, branding, design, technology and creativity. I discussed the intellectual property rights that have to be registered (patents, trade marks, registered designs and plant varieties) and those such as copyright, unregistered design rights and rights in performances, I spoke abiout licensing, assignment and franchising and enfiorcement of intellectual property rights,

1. IP for Start-ups and other SME
23 September 2019, 17:30 – 15:30
Library @ The Lightbox
Jane Lambert

2. Agenda
• What is “Intellectual Property”
• IP Policy
• Legal Protection of Brands
• Legal Protection of Designs
• Legal Protection of Technology
• Legal Protection of Creativity
• Obtaining legal protection
• Commercialization
• Enforcement

3. What is “Intellectual Property”
The collective name for the bundle of rights
that protect investment in intellectual assets,
that is to say brands, designs, technology
and creativity.

4. Intellectual Property Policy
Section I of the Statute of Monopolies 1623
abolished all monopolies, grants.
Section 6 excepted “any letters patents and
grants of privilege for the term of fourteen
years or under, hereafter to be made, of the
sole working or making of any manner of
new manufactures”

5. Intellectual Property Policy
This Act struck a balance between two
conflicting public interests:
• Encouraging creativity, enterprise and
innovation; while
• Preserving competition and freedom of
choice.
Courts and legislatures have followed this
policy ever since.

6. Legal Protection of Brands
• Common law action of passing off
• Trade mark registration in the UK, EU and
internationally
• Geographic indications
• Design Registration
• Copyright
• Database rights

7. Legal Protection of Designs
• Functional design and decorative design
• Functional design protected by
unregistered design right
• Decorative design protected by design
registration
• Registered and unregistered Community
design
• Works of artistic craftsmanship

8. Legal Protection of Technology
• Trade secrets
• Patents
• Copyright for software
• Database rights
• Unregistered design right
• Semiconductor topographies
• Plant varieties

9. Legal Protection of Creativity
• Copyright
• Rights in performances
• Moral rights

10. Obtaining Legal Protection
Some rights arise automatically:
• Copyright
• Rights in performances
• Unregistered design right
• Unregistered Community design
• Benefit of an obligation of confidence
• Right to bring an action for passing off

11. Obtaining Legal Protection
Other rights have to be registered with a
national or international intellectual property
office:
• Patents
• Registered Trade Marks
• Registered Designs

12. Obtaining Legal Protection
• Intellectual property office for the UK is the
Intellectual Property office in Newport
• European Patent Office for UK and other
members of the European Patent
Convention
• European Intellectual Property Office for
EU trade marks and designs

13. Obtaining Legal Protection
• Paris Convention 1883
• Berne Convention 1886
• Rome Convention 1961
• Patent Cooperation Treaty 1970
• European Patent Convention 1973
• TRIPS (Agreement on Trade-Related
Aspects on Intellectual Property Rights)
1994

14. Obtaining Legal Protection
World Intellectual Property Organization
• UN specialist agency for IP
• Custodian of most of the world’s IP
treaties
• Coordinates member states IP policy
• Arbitration and Mediation Centre
• Administers PCT, Madrid Protocol and
Hague Agreement

15. Commercialization
• Using monopolies or exclusive rights to
restrict competition
• Assignment
• Licensing
• Exclusive
• Sole
• Non-exclusive
• Franchising

16. Enforcement
• Business and Property Courts of England
and Wales
• Intellectual Property Lists
• Patents Court
• Intellectual Property Enterprise Court
• Multitrack
• Small Claims Track
• Chancery Division
• County Court

17. Enforcement
• IPO has jurisdiction for oppositions,
revocation and invalidation of trade marks
• IPO can hear revocation, amendment,
supplemental protection certificate and
theoretically infringement and declaration
for non-infringement claims
• IPO can hear applications for cancellation
of designs
• Informal and low costs

18. Enforcement
• IPO examiners’ opinions on validity and
infringement of patents
• IPO mediation service
• WIPO domain named dispute resolution
service

19. IP Strategy
• IP planning should be devised as early as
possible, preferably during business
planning
• Consider revenue streams over planning
period
• Identify threats to revenue streams
• Take counter-measures
• Take out IP insurance

20. IP Strategy
• IP planning should be devised as early as
possible, preferably during business
planning
• Consider revenue streams over planning
period
• Identify threats to revenue streams
• Take counter-measures
• Take out IP insurance

21. Further Information
• www.nipclaw.com
• http://ipyorkshire.blogspot.com
• http://nipcinvention.blogspot.com
• https://www.gov.uk/government/organisation
s/intellectual-property-office
• www.wipo.int

22. Contact
Jane Lambert
4-5 Gray’s Inn Square
Gray’s Inn
London
WC1R 5AH
020 7404 5252
jlambert@4-5.co.uk
www.4-5.co.uk