Intellectual property


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Slides from the Intellectual Property Office presentation at South West Forum's Know Your Assets event, September 2012

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Intellectual property

  1. 1. Intellectual Property WorkshopDave Hopkins/Gary TownleyBusiness Outreach & Education
  2. 2. Intellectual Property OfficeExecutive Agency within Department of Business, Innovation and Skills (BIS) 850+ staff based in Newport in South Wales, 20 based in Victoria, London Our task is to help stimulate innovation and raise the international competitiveness of British industry through Intellectual Property Rights (IPR)
  3. 3. ObjectivesBy the end of this event you will… Be able to describe the different types of IPR available Explain the difference between registered and unregistered IPR Say what should be covered in an IPA audit Explain the benefits of incorporating IP within a business strategy Understand better how to use IP when researching a licensee or negotiating licensing agreements Discuss IPR issues with more knowledge and confidence Identify potential IPR issues Know where and when to seek further advice
  4. 4. How can Intellectual Property Benefit Yourbusiness?• IP may generate income for your business through licensing, sales and/or commercialization of IP-protected products or services.• IP rights can enhance the value of your business with investors and financing institutions.• In the event of a sale, merger or acquisition, IP assets may significantly raise the value of your business
  5. 5. IP Baseline Survey96% of UK businesses do not know the value of their Intellectual Property RightsOnly 11% of UK businesses know that disclosure of an invention before filing will invalidate a patent.74% of UK businesses could not correctly identify the owner of copyright when using a subcontractor Only 4% of UK businesses have an Intellectual Property policy
  6. 6. What is intellectual property? Patents Plant Trade Varieties marks Intellectual Property Trade RegisteredSecrets designs Confidentiality Copyright
  7. 7. Every Business Owns IP. What do you own? Syndicate Exercises 1-4 - whatkind of protection is appropriate? Syndicate Exercise 5 IP Audit
  8. 8. X.1
  9. 9. Patents Plant Trade Varieties marksTrade marks Trade Intellectual Property RegisteredSecrets designs Confidentiality Copyright
  10. 10. Syndicate Exercise 1 Which of the marketing gimmicks are registrable as Trade Marks?Even though they have not registered, do they have any protection? Would a UK trade mark offer any protection abroad?
  11. 11. Syndicate Exercise 1 Which of the marketing gimmicks are registrable as Trade Marks? Name Logo Domain name Slogan Colour theme Shape themeNon-traditional Music Smell
  12. 12. What is a Registered Trade Mark? Any sign which is capable of being represented graphically Any sign which is capable ofdistinguishing the goods or services of one undertaking from another “A Badge of Origin”
  13. 13. Unexpected marks• Office of Government Commerce• £14000 to create new logo “not inappropriate for an organisation that’s looking to have a firm grip on government spend” OGC Spokesperson
  14. 14. unregistered Trade Marks If an unregistered TM is infringed, attack with a ‘Passing Off’ action A lot of evidence must be presented,including proof of established reputation,confusion for consumers, and harm done
  15. 15. Slogans as Registered Trade Marks Laudatory terminology, and words in common usage in the class of goods inquestion may not be registered as RTMsGillette ® , The Best a Man can Get TMHowever, Mr Kipling ® since 1984, butExceedingly Good Cakes ® since 1994
  16. 16. Top slogans of the century1. Diamonds are forever (DeBeers)2. Just do it (Nike)3. The pause that refreshes (Coca-Cola)4. Tastes great, less filling (Miller Lite)5. We try harder (Avis)6. Good to the last drop (Maxwell House)7. Breakfast of champions (Wheaties)8. Does she….or doesn’t she? (Clairol)Source
  17. 17. Colours as Trade Marks- as applied to the outside of petrol filling stations- in relation to roadside recovery services- in relation to milk chocolate- in relation to cat food- in relation to baked beans- in relation to mobile communications
  18. 18. Shapes as Registered Trade Marks
  19. 19. Music as Registered Trade Marks TM 2219984
  20. 20. Music as Registered Trade Marks TM 2409398
  21. 21. Music as Registered Trade Marks
  22. 22. Music as Registered Trade MarksThe mark consists of five distinct phases, namely sustain, followed by ululation,followed by sustain, but at a higher frequency, followed by ululation, followed by sustain at the starting frequency, and being represented by the representationset out below, the upper representation being a plot, over the time of the yell, of the normalised envelope of the air pressure waveform and the lower representation being a normalised spectogram of the yell consisting of a three dimensional depiction of the frequency content (colours as shown) versus the frequency (vertical axis) over the time of the yell (horizontal axis).. TM 003661329 – May 2006
  23. 23. Domain names Trade Mark registration is not company name or domain name registration A domain name may be registered as a Trade MarkIncorporating another’s RTM into your domain name or meta-tag may be an infringement
  24. 24. Why infringement searches? Avoid expensive mistakes Awareness of competing marksEarly resolution of potential problems
  25. 25. Be InventiveGoogle – an intentional misspelling of googol (1 followed by 100 ‘0’s)Blaupunkt – originally called ideal – a blue dot was attached if the headphones came through the quality test.LEGO – Danish “leg godt” – play well ( coincidentally “I learn” in Latin)Starbucks - a character in Herman Melville’s novel Moby DickIntel – Gordon Moore/Bob Noyce – sounded too close to more noise, so adopted Integrated Electronics.
  26. 26. Use your nameAmstrad – Sir Alan Michael Sugar tradingB&Q – founders Block & QuayleDHL – Adrian Dalsey, Larry Hillblom & Robert LynnHasbro - Henry & Helal Hassenfeld – Hassenfield BrothersMercedes – the first name of salesman Emil Jellineks daughterMitel – Mike & Terry’s Lawnmowers – Michael Cowpland & Terry Matthews
  27. 27. UK Applications Fees: Application fees: £170 – Includes one ClassAdditional Classes £50 each (up to 45 Classes) Timeline: Examination within 2 months of filing Registration (unopposed) in 5 months
  28. 28. Trade Mark Registration OverseasParis Convention - six months priority OHIM – Community Trade Mark e-filing fee €900 WIPO - Madrid Protocol
  29. 29. Tesco has been forced to remove all the products fromits stores and a spokesman from Tesco said: We havesettled this claim and apologise for the error.’
  30. 30. X.2
  31. 31. Syndicate Exercise 2What is the Intellectual Property, and who owns it? Video company owns the copyrightWhat are the confidentiality obligations now? The clips appearing in the tv advertisement are no longer subject to confidentialityWhat can the video company do now? The video company can ask for an additional fee, and thereafter sue for unauthorised use
  32. 32. Patents Plant Trade Varieties marks Copyright TradeSecrets Intellectual Property Registered designs Confidentiality Copyright
  33. 33. Copyright The Statute of Anne 1709 Scope increased to include engravings, prints, sculptures, dramatic works and musical works 1956 – films, broadcasts and typographical arrangement Copyright, Designs and Patents Act 1988Caxton’s Printing Press
  34. 34. Copyright Conventions Berne Convention - Accepted in 1886Works protected by national law irrespective of where the work was created 163 Countries are parties to the Convention Universal Copyright Convention Adopted in 1952 An alternative for Countries that believed that Berne overly benefited Western developed copyright exporting nations
  35. 35. Copyright Criteria for Protection1. For copyright to subsist the work must be recorded ina material form2. The work must be “original” – not copied – sufficientlabour, skill and effort3. Sufficiently connected to qualify under UK law –authorship, publication, place of transmission.4. Not excluded on public policy, moral grounds –obscene, blasphemous, libellous etc
  36. 36. Copyright1.Literary Works – All works expressed in print or writing2.Dramatic Works – A work capable of being performed3.Musical Works – includes melody, harmony and rhythm4.Artistic Works – A work of artistic craftsmanship (not quality)5.Films – Moving images produced by any means6.Sound Recordings – From which sounds can be reproduced7.Broadcasts – transmission of visual images, sounds or other8.Published Editions – typographical arrangements
  37. 37. What Copyright protectsBooks, technical reports, manuals, databasesEngineering, technical or architectural plans Paintings, sculptures, photographs Music, songs, plays, dramatic works Promotional literature, advertising Films, videos, cable or radio broadcasts Computer software & websites
  38. 38. How long does Copyright last? Literary, musical, artistic & dramatic works: author’s lifetime plus 70 yearsFilms: 70 years after the death of the last of:director, composer of the score, the author of the screenplay and the scriptwriter Sound recordings, TV & radio broadcasts &cable programmes: 50 years from first broadcast Publishers’ right (typographical layout etc.): 25 years
  39. 39. Baker Street • Estimated £80,000 per year in royalties since 1978 • Copyright expires 31 Dec 2081 • Saxaphone riff played by • Bob Holness • Raphael Ravenscroft • One off fee £27
  40. 40. Who owns Copyright? Usually the first creator or author... …or their employer if produced in the ordinary course of their employment However, a contractor will retain ownershipunless their contract is explicit to the contraryEven if the creator sells their rights, they have ‘moral rights’ over how their work is used
  41. 41. Who owns Copyright in Software?Saphena Computing v Allied Collection Agencies (1989) No mention of Copyright in contract However, developer (Saphena), allowed client a copy of the “object code” to repair bugsSaphena did not allow client a copy of “source code”, so they could NOT make improvements without infringing Copyright
  42. 42. Who owns copyright?Taken by the prince’sexecutive chef, Carolyn Robbwearing their ‘new set oftweeds’.Settlement later reached withRobb involving a four figurefee for the use of thephotograph and use by theRoyal Mail.
  43. 43. Primary Infringement Any of the following without the consent of the rights ownerCopying / Reproducing Adaptation Distributing Issuing or rentingPublic performance Broadcasting IGNORANCE IS NO DEFENCE
  44. 44. Secondary Infringement Any of the following without the consent of the rights owner Selling ImportingPossession for business purposes Facilitating primary infringement Only guilty if done knowingly, or if you ought to have known
  45. 45. ‘Defences’- permitted actsThe following are allowable even when theytechnically breach Copyright: “Fair Dealing” Private study Research News reporting Public InterestCriticism / reviews Some official reports Education, libraries Video/DVD ‘time-shifting’
  46. 46. Top Dead Earners 2011 1. Michael Jackson - $170m 2. Elvis Presley – $55m 3. Marilyn Monroe - $27m 4. Charles Shultz - $25m 5. John Lennon - $12m 6. Elizabeth Taylor - $12m 7. Albert Einstein - $10m 8. Theodor Geisel - $9m 9. Jimi Hendrix - $7m 10. Stieg Larsson - $7mSource Shakespeare – 7th $12m
  47. 47. Collecting SocietiesRights administered for the benefit of authors/owners PRS for Music Phonographic Performance Limited (PPL) Video Performance Limited (VPL) Authors Licensing and Collecting Society (ALCS) Copyright Licensing Agency (CLA) Newspaper Licensing Agency (NLA) The Design and Artists Copyright Society (DACS) The Copyright Tribunal
  48. 48. Copyright for Business Mark work with the international copyright symbol © Record the work in some way Electronic fingerprints Look at licensing and assignment opportunitiesRegularly review contracts (business and employees)
  49. 49. Temple Island Collections New English Teas (NET) (TIC)
  50. 50. Jerome Siegel and Joe Shuster sold all the rights to superman to Detective Comics (DC Comics) for $130 ( £82)
  51. 51. Patents Plant Trade Varieties marks Intellectual Confidentiality Trade Property Registered designsSecrets Confidentiality Copyright
  52. 52. What protection is appropriate?Confidentiality Trade MarksCopyright PatentsDesign Right Regd. Designs
  53. 53. Confidential InformationKnow-how & Show-how Customer Lists Pricing Strategies Technical Information Methodologies Commercial Intelligence
  54. 54. Danger MomentsCo-operative Venture Partners Consultants Sub-contractors Contract staff Suppliers Customers
  55. 55. Working with othersPrior use or disclosure will invalidate a patentapplication - use ‘Confidentiality Agreements’ Agree in writing who will own any I.P. arisingfrom the collaboration before commercialisation
  56. 56. Every Business Owns IP What do you own? Coffee Break
  57. 57. X.3
  58. 58. Syndicate Exercise 3 How to protect the shapes, patterns, name and jewel of the toy? Registered Trade MarksName - “Hedge Dog” Distinctive jewel Registered DesignsEach of shapes National flags excluded
  59. 59. Patents Plant Trade Varieties marks Registered Intellectual Property designs TradeSecrets Registered designs Confidentiality Copyright
  60. 60. ExaminationIs the design new? It must not be the same as any design which has already been made available to the publicDoes it have individual character? The overall impression the design gives to someone must be different from the impression any previous design gives them
  61. 61. Registered DesignsProtects shape or configuration (3-D)and/or pattern or ornamentation (2-D)No protection for function, materials or technology of manufacture No protection when form is dictated by function (ie: no design freedom)
  62. 62. Registered Designs Design protected without limitation to a specific product or articleDesign protected even if applied tosingle items or handicraft products Protection for component parts if ordinarily on view when in use
  63. 63. ExaminationShape created to perform its function Contrary to public policy or morality Protected flags or emblems
  64. 64. Registered DesignsDesign Registration No 3001664
  65. 65. Registered DesignsDesign Registration No 3001664
  66. 66. Robert Welch Designs Ltd Argos 142922WWW. ACID.UK.COM
  67. 67. Registered Designs • Royalties for past sales of £103,302.81 • £46,750 towards costs • A licensing deal has now been agreed. “having built our brand on a strong design history, it is critical to us that our customers do not mistake an inferior product/copy to be our design. Therefore we at Robert Welch take IP very seriously and will pursue anybody who copy/pass off our designs” Alice Welch, Marketing Director Jan 2006WWW. ACID.UK.COM
  68. 68. Informed User“the informed user…without being a designer or a technical expert,… knows thevarious designs which exist in the sector concerned, possesses a certain degreeof knowledge with regard to the features which those designs normally include,and, as a result of his interest in the products concerned, shows a relatively highdegree of attention when he uses them.”By way of example, in Honda v. Kwang which concerned lawnmowers, theinformed user was held to be someone who wants to use a lawnmower, needs tobuy one, and has “become informed” by browsing catalogues, visiting specialisedstores, garden centres and downloading information from the internet.
  69. 69. Multiple Applications £60 for first design(£40 application + £20 publication) £40 for subsequent designs(£20 application + £20 publication Renewal fees every 5 years Maximum term 25 years
  70. 70. Registration OverseasParis Convention – 6 Months OHIM - Community Design Hague Agreement (1/1/2008)
  71. 71. X.4
  72. 72. Syndicate Exercise 4 Were they right to assume that (i) new uses for known materials, & (ii) new shapes are unpatentable? New uses for known materials can be patentableNew shapes are patentable if giving a ‘technical effect’ In the absence of patents what IP right is left? Unregistered Design Right
  73. 73. Patents Plant Trade Varieties marks Design Intellectual Property TradeSecrets Right Registered designs Confidentiality Copyright
  74. 74. What protection is appropriate?Confidentiality Trade MarksCopyright PatentsDesign Right Regd. Designs
  75. 75. Design RightDesign rights exist independently ofcopyright, while copyright may protectdocuments detailing the design as wellas any artistic or literary workincorporated within the finishedproduct.Design right focuses more on theshape, configuration and constructionof a product.
  76. 76. Unregistered Design Right Applies in the UK onlyOriginal designs protected against copying Protects shapes and configurations (internal or external)
  77. 77. Duration & scope of protectionDesign protected for 10 years from first marketing, or 15 years from first creation, whichever is shorter In the first five or so years the owner has a right against copying In the last five years the owner cannot refuse to sell a licence to others requesting to copy - ‘Licence of Right’
  78. 78. CDR: unregistered design rightOnly those designs eligible for design registration will qualify Protection against copying lasts forthree years from first public disclosure
  79. 79. Design Right Superdry Primark“we are probably the most copied brand in the UK, thesecases are very necessary in protecting our intellectualproperty” Julian Dunkerton
  80. 80. Design Right Tatty Devine Claires AccessoriesTatty Devine designer Rosie Wolfenden said: "Werereally proud of what weve created with Tatty Devine, and a big part of that is our original designs.
  81. 81. Patents Plant Trade Varieties marks TradeSecrets Patents Intellectual Property Registered designs Confidentiality Copyright
  82. 82. What protection is appropriate?Confidentiality Trade MarksCopyright PatentsDesign Right Regd. Designs
  83. 83. A motorised cycle 2008
  84. 84. Criteria for ‘patentability’Patents are for “technological innovation”, though the Patents Act 1977 fails to define the word “invention” Inventions must be new - not known anywhere in the world prior to the filing date Inventions must have an ‘inventive step’ - not obvious, a simple adaptation or combination Inventions must be industrially applicable and have a ‘technical effect’
  85. 85. Prior DisclosureHelen Waterston’s Roastcosy was featured on DragonsDen; she managed to secure two dragons, DeboraMeadon and Peter Jones.She disclosed her patent in anewspaper article before filingfor her patent!This invalidated her patent,which it is believed led toDebora Meadon pulling out ofthe arrangement.
  86. 86. Exclusions(a) a discovery, scientific theory or mathematical method;(b) a literary, dramatic, musical or artistic work or anyother aesthetic creation whatsoever;(c) a scheme, rule or method for performinga mental act, playing a game or doing business, or aprogram for a computer;(d) the presentation of information;
  87. 87. The application process 1 2 3 4Prepare a File form 1 We issue a File form 9Apatent and one copy filing receipt and fee w ithinspecification of your confirming 12 months of specification your the filing orDescription application priority date Form 7 w illDraw ings number and be required if filing dateClaims the applicant is not theAbstract inventor
  88. 88. The application process 5 6 7 8We carry If formal You file form We examine yourout a requirements 10 and fee no application andnovelty have been later than six inform you ifsearch to met your months from anything needsassess your application is publication amendmentinvention published atand issue a 18 months Once allreport objections have been overcome w e w ill grant your patent
  89. 89. Claim 11 A vehicle transmission assembly including a change speed transmission having a casing, an input for connection to an engine or motor, a first epicyclic gear trainwhich is connected to the input and in use selectively provides a reduction ratio or a direct ratio to a second epicyclic gear train which in use selectively provides areduction ratio or a direct ratio to a third epicyclic gear train which in use selectively provides a reduction ratio or a direct ratio to a forward transmission output, each epicyclic gear train comprising a sun gear, an annulus gear and a set of planet gears mounted on a respective carrier and intermeshing with the respective sunand annulus gears, and first, second and third coupling means associated with the first second and third epicyclic gear trains respectively to selectively couple one of the sun gear and the annulus gear of the respective gear train to the casing or tothe carrier, each coupling means comprising a synchromesh selector slidable on a member fast with the said one of the sun gear or annulus gear and engageablewith the casing when slid in one axial direction and with the carrier when slid in the other axial direction.
  90. 90. GB236055826 Sept 2001Land Rover Group LtdVehicle TransmissionAssembly WO01/83047
  91. 91. Patent feesApplication fee – £30 or £20 (Electronic filing)Search Fee - £150 or £130 (Electronic filing)Examination fee - £100 or £80 (Electronic filing) Renewals 5th Year - £70 10th Year - £170 20th Year - £600
  92. 92. GB 2222821
  93. 93. Obtaining Patent Protection Abroad Separate national filings Patent Co-operation Treaty (PCT) European Patent Convention (EPC)
  94. 94. Using Patent InformationUse of patent information is totally separate fromobtaining & enforcing legal rights through patents Patent information can solve problems and provide new insightsAvoid reinventing the wheel: 30% of EuropeanR&D is wasted on technology already in patents Enables you to keep track of your competitors
  95. 95. Why Use Patent Information? Huge information source – 63 million patents Unique information - 80% of technological disclosure in patents appears nowhere elseEarly publication - within 18 months of first filingFree technology - 85% of UK patents not in force
  96. 96. Green Channel Introduced in 2009 environmentally-friendly technology Accelerated search, examination, combined search and examination, and/or publication No additional fees Over 150 granted
  97. 97. Patent Box Reduction in corporation tax to 10% In Stages from April 2013 Must hold a Qualifying Patent (IPO, EPO) or licencePatent must be granted (can be back dated up to 6 years) Development condition Active Ownership condition Royalties from sale or licensing Proceeds from sale of goods Damages from infringement actions
  98. 98. Services from the IPOMediation Call CentreIPSUM Search (on-line)Opinions Health -CheckLambert tool kit Workshops
  99. 99. X.5
  100. 100. IP Audit (Part I) Under what terms has he dealt with the engineering company? Agreements for (i) confidentiality, & (ii) IP He has used ® without registration: advise Replace ® with ‘TM’; seek TM registration Under what terms has he dealt with the advertising agency? (i) confidentiality, & (ii) assignment of ©
  101. 101. IP Audit (Part II) What automatic IP rights have arisen? © in drawings; design right in prototype What registrable IP rights are available, and for which features? Registered Design for shape, RTM for name, Patents for functionality What should be done now Infringement before progressing further? searches!
  102. 102. LicensingWhy License: •Generate income •Increase market penetration •Reduce costs •Save time •Access to expertise
  103. 103. LicensingWhat are you licensing? •Patents, trademarks, designs, copyright •Know how- show how •Confidential information •Do you own it? •Who are you licensing to?
  104. 104. LicensingTypes of license? •Exclusive – only the licensee may use •Sole – the IP owner and licensee may use •Non – exclusive IP owner may licence to more than one licensee
  105. 105. Licensing Duration & termination Governing Laws and disputes Charges and payments Sales and targets Risk and insurance
  106. 106. - 0300 300 2000
  107. 107. 8 On line IP Healthchecks IP Healthcheck Patents, Trade marks, Designs & Copyright Confidential Information Licensing and exploitingFree online diagnosis your IP
  108. 108. Thank YouDave Hopkins/Gary