ip4inno 1 What kind of protection is appropriate? Module 5B IP in the real world OEPM-UPM

ip4inno 2 IP strategies for SMEs Event Speaker

ip4inno 3 What kind of protection is appropriate? EXERCISE 1 Local fruit growers

ip4inno 4 What kind of protection is appropriate? Confidentiality Trade Marks Copyright Patents Industrial designs Internet domain names

ip4inno 5 What kind of protection is appropriate? Confidentiality Trade Marks Copyright Patents Industrial designs Internet domain names

ip4inno 6 Which of the marketing elements are protected as Trade Marks? Word Logo Shape Colour Slogan Music Domain name Non-traditional

ip4inno 7 What is a Registered Trade Mark? Any sign which is capable of being represented graphically Any sign which is capable of distinguishing the goods or services of one undertaking from another A Badge of Origin A way of making money

ip4inno 8

9 Trade Mark Shape, denomination and slogan akakiday A kaki day, a better day ®

ip4inno 10 Music as Registered Trade Marks Nokia tune (OHIM Trade Mark ) from: Francisco Tárrega (Spain, ) Grand Vals

ip4inno 11 Sound as Registered Trade Marks Tarzan yell (OHIM Trade Mark application , withdrawn)

ip4inno 12 Colours as Registered Trade Marks Single colours might be protected: Lilac/purple colour has been registered in relation to chocolate (OHIM Trade Mark 31203) OHIM Trade Mark OHIM Trade Mark

ip4inno 13 Kaki colour as a Registered Trade Marks Kaki colour per se? Kaki colour for fruits?

ip4inno 14 Shapes as Registered Trade Marks OHIM Trade Marks 31203, OHIM Trade Mark OHIM Trade Mark OHIM Trade Mark

ip4inno 15 Slogans as Registered Trade Marks Connecting People It is all about you The Best a Man Can Get you can Laudatory terminology, and words in common usage in the class of goods in question may not be registered as RTMs

ip4inno 16 Domain names as Registered Trade Marks Trade Mark registration, company name and Internet domain name registration are independent A domain name may be registered as a Trade Mark Domain names’ system does not protect against similarities Incorporating another’s RTM into your domain name or meta-tag may be a trade mark infringement It is preferable to register the domain name as a trademark

ip4inno 17 Examination for conflict Mark application compared by sight & sound Goods or services compared Marks are refused if they are the same or similar to existing marks or previous applications in the same or similar classes 0637

ip4inno 18 Why infringement searches? Avoid expensive mistakes Awareness of competing marks Early resolution of potential problems OHIM Trade Mark searches: National Trade Mark searches

ip4inno 19 International Trade Mark Registration Paris Convention: six months priority Madrid Protocol OHIM: Community Trade Marks

ip4inno 20 Other non-traditional Trade Marks NOKIA hands animation (OHIM Trade Mark )

ip4inno 21 Unregistered Trade Marks The right to a Trade Mark comes from its registration by a Trade Mark Office Prior user will only have the right in case of well- known unregistered Trade Marks In some countries (GB, US), there is the sign ™, which can be used for unregistered Trade Marks, and the sign ®, which can only be used for registered Trade Marks. If an unregistered TM is infringed, one can attack with a “Passing Off” action. A lot of evidence must be presented

ip4inno 22 Costs involved OHIM Trade Mark application fee: 900 euro (750 for e-filing) National Trade Mark application fee: 148 euro (SP) Internet domain name: about 30 euros/year (SP) Half-page advertising in a national newspaper: 12,170 euros (EL PAIS, SP)

ip4inno 23 What kind of protection is appropriate? EXERCISE 2 A small video production company

ip4inno 24 Workshop exercise 2 What is the intellectual property? Who owns it? What are the confidentiality obligations now? What can the video company do in order to enforce its rights?

ip4inno 25 What kind of protection is appropriate? Confidentiality Trade Marks Copyright Patents Designs

ip4inno 26 What kind of protection is appropriate? Confidentiality Trade Marks Copyright Patents Designs

ip4inno 27 What is protected by copyright? Intellectual creations in so far they are original and expressed in a particular form (video). May be protected by copyright : books; press articles; manuals, technical reports, lectures pictures; sculptures; photographs; music; plays; films, videos Engineering, technical or architectural plans software; databases; web pages; multimedia works; ….other forms of expressions of work in the literary, scientific and artistic domain not included in the list.

ip4inno 28 Who is the owner of a copyright? Generally a copyright is owned by the physical person who created the work….. …..if it is created by an employee in the framework of his job, and if not provided otherwise, it belongs to the employer. However, a contractor will retain ownership unless their contract is explicit to the contrary. Even if the creator sells their “economic” rights, he retains “moral rights” to be identified and over how his work is used.

ip4inno 29 How long does copyright last? The period of protection begins from the moment when the work was created In the EU and most systems, economic rights expire 70 years after the death of the author When the copyright expires, the work enters the public domain and may be used by anyone for any purpose

ip4inno 30 Kurt Cobain: Top dead earner in 2006 Musician from Nirvana Rights to his work passed to his widow Courtney Love who has sold a 25% stake in his band's song catalog to Primary Wave, a New York music publishing company for $50 million Primary Wave, has struck a deal to feature Nirvana music in an episode of CSI: Miami and now it is considering licensing the music to certain marketers. Nirvana's recording catalog sold 1.1 million units in the U.S. in 2005 and is on track to come close to that total in 2006 Source:

ip4inno 31 Other top-Earning Dead Celebrities in 2006 Elvis Presley $42 million (musician) Charles M. Schulz $35 million (cartoonist) John Lennon $24 million (musician) Albert Einstein $20 million (scientist) Andy Warhol $19 million (artist) Source:

ip4inno 32 Copyright infringement Any of the following without prior consent of the owner: –Copying, reproducing, distributing –Communicating (public performance, broadcasting,..) –Adapting (translating a work into another language; arranging or transcribing….) –Selling, importing or exporting, possessing or dealing with infringing copies of a work for the purpose of business Similar works, independently created, do not infringe copyright.

ip4inno 33 “Permitted acts” exempt from copyright infringement Particular acts do not require authors authorization: –Quoting, providing the source of quotation and author is mentioned –Use of works by way of illustration for teaching purposes –Uses of works for the purpose of news reporting Many laws allow for individuals to reproduce a work exclusively for their personal, private and non- commercial use. Also the laws in some countries recognize the concept known as “fair use” or “fair dealing”.

ip4inno 34 An example of copyright infringement Metro-Goldwyn-Mayer Studios, Inc., et al. v. Grokster, Ltd., et al. Grokster and Streamcast, distributed free software that allowed users to share electronic files through peer-to-peer file sharing The plaintiffs: a consortium of 28 of the largest entertainment companies (led by MGM Studios). Unanimous Court opinion: Grokster and Streamcast can be sued for inducing copyright infringement committed by their users

ip4inno 35 What kind of protection is appropriate? Confidentiality Trade Marks Copyright Patents Designs

ip4inno 36 What kind of protection is appropriate? Confidentiality Trade Marks Copyright Patents Designs

ip4inno 37 Protecting confidentiality Written confidentiality agreements are recommended Confidentiality contracts may include confidentiality for both parts (the contractor and the commissioner) –Commissioner usually demands it for contracting firms. –Contractor will sometimes demands it for the commissioner (relevant when concepts, or know- how are involved). Written agreement on who will own any IP arising from the collaboration is also recommended

ip4inno 38 EXERCISE 3 Ballpoint pens producers

ip4inno 39 What kind of protection is appropriate? Confidentiality Trade Marks Copyright Patents Designs Internet domain names

ip4inno 40 What kind of protection is appropriate? Confidentiality Trade Marks Copyright Patents Designs Internet domain names

ip4inno 41 How to protect the shapes, patterns, name and clip for the pen? Registered Trade Marks Name: KNIB Distinctive clip Registered Designs Each of 4 shapes Each of 6 surface patterns Clip

ip4inno 42 What is a Design? “The outward appearance of a product or a part of it, resulting from the lines, contours, colours, shape, texture, materials and/or its ornamentation” Protects shape or configuration (3-D) and/or pattern or ornamentation (2-D) The appearance of a physical product A way of making money

ip4inno 43 Requirements of a Design Novelty: no identical design has been made available to the public (before the disclosure/filing date) “Grace period”: 12 months for disclosures by the designer Individual character: the overall impression it produces on the informed user differs from the overall impression produced on such a user by any prior public design

ip4inno 44 Registered Designs OHIM Designs ,-002,-006 Protection for component parts if ordinarily on view when in use

ip4inno 45 Registered Designs OHIM Design OHIM Design

ip4inno 46 Registered Designs OHIM Designs , -0002,-0003,-0004 Design protected without limitation to a specific product or article (even if applied to single items, handicraft products, toys...)

ip4inno 47 Deferment of publication Request it when filing the application Publication can be deferred up to 30 months from the filing/priority date

ip4inno 48 Examination Shape created to perform its function Picture taken from the book “COCOS” Juli Capella & Ramon Ubeda, Ed. ELECTA

ip4inno 49 Examination Designs contrary to public policy or morality (but this is OHIM Design )

ip4inno 50 Unregistered Designs There is a Registered Community Design and an unregistered Community Design Registered Designs: exclusive right over the products incorporating the design. Duration: 25 years max. Unregistered Designs: right to prevent the use of the design resulting from copying. Duration: 3 years.

ip4inno 51 International Design protection Paris Convention: six months priority The Hague Agreement OHIM: Community Trade Marks

ip4inno 52 Costs involved OHIM Design application fee (10 designs): 1,925 euros National Design application fee (10 designs): 87,32 euros (ES) Half-page advertising in a national newspaper: 12,170 euros (EL PAIS, ES)

ip4inno 53 What kind of protection is appropriate? EXERCISE 4 High quality gear wheels

ip4inno 54 What kind of protection is appropriate? Confidentiality Trade Marks Copyright Patents Designs

ip4inno 55 What kind of protection is appropriate? Confidentiality Trade Marks Copyright Patents Designs

ip4inno 56 StateInventor What is a patent? A contract Fees Technical Description Exclusive Rights 20 years

ip4inno 57 Criteria for patentability Inventions must be new – cannot be part of the prior art Inventions must show an inventive step – not obvious to a person skilled in the art Inventions must be of practical use in any kind of industry

ip4inno 58 Paul Graham USHER Patent No GB A Priority date: 18 March 1982 The BEANO No page 1 28 February 1981 What is considered as “prior art”?

ip4inno 59 Prior art!!

ip4inno 60 Inventive step It is the most difficult part of the patent examination process In most European countries it is applied the “problem-solution” approach

ip4inno 61 Obtaining a patent protection abroad National patent European patent convention (EPC) Patent cooperation treaty (PCT)

ip4inno 62 Separate National Filings Search “A” Pub Exam Search GRANT “A” Pub Exam “A” Pub Exam “A” Pub Exam “A” Pub GRANT UK France Germany US Japan

ip4inno 63 European Patent Convention EPO Search Granted in all designated states EPO Exam EPO “A” Pub EPO GRANT France GRANT Germany GRANT UK GRANT } 3 to 7 years 9 month opposition period

ip4inno 64 PCT: Patent Co-operation Treaty I.S.A. Search I.S.A. “A” Pub Exam GRANT UK France Germany US Japan } Up to 30 months

ip4inno 65 Costs involved CostsApprox. % of total Application & prosecution fees14% Patent agent20% Cost of translation38% Cost of maintaining application & patents28% 8 European countries, during 10 years: around € (though costs may vary depending on many factors) National costs: Application, prosecution & maintenance fees during 10 years: approx €* (+ attorney fees) International costs:

ip4inno 66 Why using patent information? It is by far the world’s most important source of technical information This technical information is not published by any other means Most of it represents free technology Easily reachable in Internet

ip4inno 67 Why using patent information? Planning the R&D activities Studying the patentability of our invention Writing the patent document Watching the competitors Detecting infringements Resolving technical problems

ip4inno 68 Patent infringement Should a person utilize the invention patented without the permission of the patent proprietor, he may infringe that patent It requires that the infringer’s product (or method, service, etc.) falls within one or more of the claims of the granted patent An action for infringement can only be brought after grant of the patent An accused infringer will generally assert reasons as: lack of novelty, obviousness, collateral defects, etc...

ip4inno 69 Polaroid vs. Kodak One of the most famous cases of infringement PATENT NUMBER: TITLE: Apparatus for Exposing and Processing Photographic Film August 29, 1946 E. H. Land The first Polaroid camera was sold to the public in November, 1948 After 75 days of trial, seven Polaroid patents were found to be valid and infringed

ip4inno 70 Patent vs. trade secret How can a company avoid that others take free advantage of the innovative results made out of the company efforts?

ip4inno 71 Patent vs. Trade secret Wider protection against third parties Costs Opportunity to sell or license the invention Public access Duration: 20 years Territorial limits Inventions Narrower protection. Only against spying Apparently no costs Very difficult to transfer it Restricted access Duration: the time the SME may keep it secret No territorial limits Any kind of information

ip4inno 72 What kind of protection is appropriate? EXERCISE 5 Allergy sprayer

ip4inno 73 NEBU-ALLERG

ip4inno 74 How to protect the various items involved in the spray commercialization? (2) Product Nozzle design Pumping system Design of the sprayer (clean white with green button) Name (NEBU-ALLERG) Logo Slogan (the green button, and that is it!) Advertising material

ip4inno 75 How to protect the various items involved in the spray commercialization? (2) Product: Patent, Supplementary Protection Certificate Nozzle design: Patent, Utility Model Pumping system: Patent, Utility Model

ip4inno 76 What will be the geographical scope of protection? National patent European patent convention (EPC) Patent cooperation treaty (PCT)

ip4inno 77 How to protect the various items involved in the spray commercialization? Design of the sprayer (clean white with green button): Agreement of confidentiality, Design, Trade-Mark

ip4inno 78 How to protect the various items involved in the spray commercialization? Name (NEBU-ALLERG): Trade-Mark Logo: Trade-Mark Slogan (the green button, and that is it!): Trade-Mark Advertising materials: Agreement of confidentiality, Assignment of copyright

ip4inno 79 Building an IP strategy Infringement searches: search for Patents, Designs and Trade Marks, to see what rights others own Write confidentiality agreements and assignments of rights when dealing with other partners Apply for Patents (for functional innovations), Design (for an innovative appearance) and Trade-Marks (for innovative branding) Build-up a good reputation Continuing innovation: new patents or designs

ip4inno 80 Building an IP strategy The good reputation can be converted again into IP items that can extend the protection: Trade-Marks never expire!!! Non-traditional Trade-Marks can be applied for, gathering, strengthening, and securing the image of the product and of the company

ip4inno 81 Some useful links: World Intellectual Property Organization: (Patents, Trade Marks, Industrial Designs, Geographical Indications, Copyright) Office for Harmonization in the Internal Market: (Trade Marks, Designs) European Patent Office: (Patents) Oficina Española de Patentes y Marcas: (Patents, Trade Marks, Industrial Designs) IPR-Helpdesk: (Industrial Property, Copyright)

ip4inno 82 Thank you for your attention!