How to protect your Intellectual Property Amy Wood & Laura Carney

What is Intellectual Property? Intellectual Property (IP) is a means of protecting the results of innovation and creative activity IP rights are negative rights. IP rights are territorial. Intangible assets which can be bought/sold/licensed.

Intellectual Property – an overview Patents Trade marks Designs Copyright Know-how How can I protect my own IP? How can I avoid infringing the rights of others?

Why protect IP? Stop others using what you’ve created (brand, product or process) without your permission Exclusivity can demand higher sales prices Generate income by licensing Attractive to investors Possible to arrange for IP valuation and borrowing against IP rights

IP in Practice Patents Trademarks Copyright Designs Know-how

Patents

A right protecting an invention The deal – a patent affords a territorial privilege or monopoly for a limited period – in exchange for letting the world use your invention after monopoly expires Maximum duration of 20 years in most countries

What can you get a patent for? Inventions related to products, methods or manufacturing processes or other aspects of new technology used to solve a technical problem Must be new – i.e. not published anywhere else before, including by the inventor/owner Must involve an “inventive step” – i.e. “non-obvious” to a person skilled in the art

What can’t you get a patent for? The law provides a list of “things” excluded from patent protection, including: Computer programs Business methods Mathematical methods Methods of performing mental acts Methods of playing games Presentation of information However… only excluded as such

Patent Application Process UK patents typically take 3-4 years to grant An international application can be filed up to 12 months after initial filing 18m Publication

Patents – a checklist 1.Consider “freedom to operate searching” to identify potentially conflicting patents owned by third parties 2.Be very careful about disclosing your invention prior to filing 3.If in doubt talk to a patent attorney

Trade Marks

“A badge of origin” Anything which can be represented graphically e.g. Words (including personal names), colours, slogan, logo, packaging, product shape, holograms, smells, sounds… But – hard to protect descriptive or generic marks and, for example, invented words e.g. COCA COLA, LEGO, KODAK etc have broader protection than more descriptive Words Territorial - a registration in one country or region does not automatically give owner rights in another Once registered protection can be renewed indefinitely!

Trade Marks

How to apply for registration file application examination publication registration Registration process in the UK takes ~ 4 months Registration process in EU take ~ 6 months file international applications within 6 months

Trade mark registration – Infringement Infringement = use of an identical or confusingly similar mark in relation to identical or similar goods The similarity is judged on the basis of aural, visual and conceptual comparison Possible to prevent use of a similar mark in relation to dissimilar goods if mark has a “reputation” An infringer may be subject to any of damages, injunctions, account of profits

Unregistered trade mark rights – law of “passing off” Right to prevent third party use of a similar mark through earlier use of a mark Hard to prove Higher standard – customers need to be deceived not just confused

Trade marks – a checklist 1.Identify trade marks of your business 2.When selecting new marks consider marketing function against your ability to protect the marks 3.Check your mark is free to use by searching in the early stages and before bringing it into use 4.Protect your marks through registration – consider potential product range expansion

Designs

Protect the visual appearance of a product e.g. lines, contours, colours, shape, texture or materials of product or its ornamentation Registered and unregistered (lasts for a shorter period and hurdle to catch infringers may be higher for unregistered designs) Can cover whole or part of a product Protects against competitor selling a product that is visually the same

Criteria Your design needs to: Be new (therefore searching is important for this and to prevent infringing) Not be offensive Not make use of protected emblems or flags (e.g. the Olympic rings or Royal Emblems) Not be an invention or how a product works – if so this would require a patent instead

Registered designs Requires formal registration with the relevant national (or European) office Must be filed within 12 months of public disclosure Once registered protection can be renewed every 5 years, up to a total of 25 years (in the UK and in E.U.) Protects against competitor selling a product that “does not produce a different overall impression on the informed user”

How to apply for registration file application examination registration & publication Registration process in the UK takes ~ 1-3 months file international applications within 6 months

Un-registered designs Benefit – Right exists automatically even if not registered More limited protection of features than for registered designs Disadvantage – Must show that actual copying has taken place so even if they are identical, products designed completely independently will not infringe Shorter lifespan – 3 years in EU, up to a maximum of 15 years in the UK Can be useful but better if only relied on as a fall back position

Designs – a checklist 1.Identify aspects of your product for which the look is of benefit to you 2.Keep a record of changes in the design. 3.Make sure you initial and date stamp design documents. 4.Keep a record of first public disclosure of the design. 5.If the look is important – Register it!

Copyright

Copyright resides in “Original artistic, dramatic, literary, and musical works…irrespective of quality” – no registration is required but records showing creation and ownership are important Often described as “the expression of an idea” – e.g. Pictures/photographs, films Books, articles, guides, instructions Sheet music, lyrics Software source code, graphical user interface etc.

Copyright – scope of protection Arises automatically, no need to register and can last up to 70 years after death of creator Need to show who, when and how created and prove ownership! Infringement = unauthorised reproduction of whole or “substantial part” of the work in question Have to show copying has taken place – so if created independently may not be infringement Be careful when copying things from the internet!

Know-How & Trade Secrets

Keeping information secret (e.g. process, recipe etc.) e.g. Coca-Cola, KFC…. Hard to protect Only really useful if you can’t patent the idea and you are completely sure you can prevent disclosure

Costs

Varies considerably depending upon complexity of IP and country for which protection is required….. In the UK (approx.): Trade Marks – £ Patents – £5000 for initial filing. Total to obtain granted patent can be around £ Designs – £ Copyright – Automatically exists – no costs

IP Ownership

Trade Marks – The Applicant is the owner. Patents – Inventor owns the IP, unless the invention was made as part of his/her job, in which case his/her employer will own the invention. Designs – The designer is the owner, unless the design was made as part of his/her job, in which case his/her employer will own the invention. A commissioned design is owned by the designer and not the commissioner (unless a contract states otherwise) Copyright – The creator of the work is the owner, except where made in the course of employment.

Searching

How to search for earlier patents

How to search for earlier trademarks

How to search for earlier trade marks

How to search for earlier designs

Links Espacenet (Patents) - UK IPO (Trade marks) - UK IPO (Designs) -

Points to Consider 1.Where do you need IP – consider markets, competitors, manufacture 2.What do you need to protect – an invention, features of appearance, your brand 3.Who is the owner? 4. Is your IP new? 5.Check that you do not infringe the rights of others 6.Keep records 7.Keep confidential until filed! 8.Keep IP considerations in mind as part of commercial strategy and day to day practice 9.Ask questions about IP as early as possible

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Who are we? Marks & Clerk LLP is the largest intellectual property attorney firm in the UK and one of the largest in Europe. We have approximately 150 practitioners in the UK and 260 practitioners worldwide. Marks & Clerk LLP, Marks & Clerk Solicitors LLP and Marks & Clerk Consultancy LLP are able to offer their clients a comprehensive intellectual property service and a seamless approach. Marks & Clerk have 8 offices in the UK (Aberdeen, Birmingham, Cambridge, Edinburgh, Glasgow, London, Manchester and Oxford) and a further nine overseas offices, in Australia, Canada, China, France (Paris and Sophia Antipolis), Hong Kong, Luxembourg, Malaysia and Singapore.