ip4inno Module 5B IP in the real world Five practical exercises to help you decide ‘What Protection is Appropriate?’ Name of speakerVenue & date

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

What elements has your campaign? Logo Brand name Strap line/Slogan Shape Domain name Colour Music Merchandise

What kind of protection is appropriate? Confidentiality Trade mark Copyright Patent Design right Internet domain name

Which of the marketing elements can be protected as trade mark? Logo Brand name/word Strap line/Slogan Shape Domain name Colour Music Merchandise

Examples of conventional trade marks

Examples of unconventional trade marks

What is a registered trade mark? A trade mark has to be capable of distinguishing the goods or services of one competitor from another. Being represented graphically.

Why register a trade mark? It’s a badge of origin And a way of making money

What protection is appropriate? Logo Brand name/word Strap line/Slogan Shape Domain name Colour Music Merchandise akakiday ® A kaki day, a better day

What protection is appropriate? Logo Brand name/word Strap line/slogan Shape Domain name Colour Music Merchandise

What protection is appropriate? Logo Brand name/word Strap line/Slogan Shape Domain name Colour Music Merchandise

What protection is appropriate? Logo Brand name/word Strap line/Slogan Shape Domain name Colour Music Merchandise Francisco Tárrega (Spain, ), Grand Vals

What protection is appropriate? Logo Brand name/word Strap line/Slogan Shape Domain name Colour Music Merchandise

Logo Brand name/word Strap line/Slogan Shape Domain name Colour Music Merchandise What protection is appropriate?

Protection step by step Research Examination for conflict Identify appropriate protection registration

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

20 Costs involved OHIM Trade Mark application fee: EUR 1050 (paper form); EUR 900 for e-filing National Trade Mark application fee: EUR 300 (Germany; including registration for up to 3 classes) EUR 290 (e-filing) Internet domain name: about EUR 10 for two years (UK) Half-page advert in a national newspaper: £43,500 (The Daily Telegraph, UK, approx. EUR 53,131)

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

Workshop exercise 2 What IP rights apply? Who owns them? What are the rights of the employee? Does the video company have to pay for possible court action? What are the obligations to keep information secret now after the client included confidential details in their advertising campaign? What can the video production company do to make more money?

What IP rights apply? Confidentiality Copyright Trade mark Patent Design right

What is copyright? Copyright is always automatic and in most jurisdictions doesn’t need to be registered. Works covered by copyright must be original. Copyright doesn’t protect ideas only the fixation or expression of ideas. Copyright grants the author or creator of an original work the right to copy, distribute and adapt the work

Copyright: What is protected? Original works: literary, artistic, dramatic or musical works Derivative works: i.e. films, photographs, translations, editions, collages, adaptations etc. Others: typographical arrangements, sound recordings, broadcasts, performances

Who owns copyright? The author or creator of an original work automatically owns copyright – even if the work was commissioned. The employer owns copyright if the work created in the course of employment unless otherwise stated in the employment contract.

Copyright: Moral Rights The right: –to be identified as author or director –to object to derogatory treatment –not to have a work falsely attributed Non-assignable Photographs and films commissioned for private and domestic purpose Exceptions

How long does copyright last? The length of copyright afforded to the creator depends on the type of work and the country; for example: In general, in the EU, the term of protection is the life of the author + 70 years; or for anonymous works, 70 years from publication or creation (if unpublished). In contrast, computer generated works and performer’s rights last until 50 years after the creator’s death, while typographical arrangements are given 25 years protection.

Other top-earning celebrities in 2009 No. 2: Rodgers & Hammerstein: $235 million (combined) No. 3: Michael Jackson: £90 million

Copyright infringement Primary infringement Copying of the whole or substantial part Secondary infringement Dealing with infringing copies eg. importers, retailers Knowledge is necessary

Copyright: You may – with caution!! Permitted acts: Fair dealing Research and private study (non-commercial) Criticism or review (with sufficient acknowledgment) Reporting of current events Others: Incidental inclusion Images of public buildings and sculptures

Remedies for infringement Damages (and accounts of profit) Injunctions ‘Delivery up’ of infringing goods Civil and criminal remedies available But cases can be difficult to pursue

What IP rights apply? Confidentiality Copyright Trade mark Patent Design right

The law of confidence Concerned with secrets – does not apply to information already in the public domain. Can apply to any type of IP or know-how, eg: drawings, techniques, formulae, and data of all types. Circumstances must suggest an obligation of confidence. Simply marking a document with ‘PRIVATE AND CONFIDENTIAL’ is not enough. Gisela Giardino under Creative Commons licence

Establishing confidentiality Can be imposed via agreement, but is also implied into many relationships. Agreements should be put in place with third parties before work starts. Be careful when sending ideas by ! Orkboi under Creative Commons licence

Breach of confidentiality Breach if other party uses information for own benefit or discloses without consent. Penalties: injunction and (financial) damages.

Important clauses Define the confidential information. Explain clearly the purpose of disclosure. Limit sharing outside meetings. Non-disclosure and non-compete clauses. Set clear parameters for what is and what isn’t to be kept confidential. 10ch under Creative Commons licence

Conclusion The big corporation has infringed copyright The video production company can request a further fee The indemnity clause is not valid The employee can ask to stop infringement or negotiate a licence fee. They don’t have an obligation to keep the information secret, which was disclosed in the advert. They have an obligation to keep the information confidential, which was not used in the ad.

What kind of protection is appropriate? EXERCISE 3 Ballpoint pens producer

What elements do you need to consider? Retracting mechanism Brand name/word Shape Surface pattern Pocket clip

What kind of protection is appropriate? Confidentiality Trade mark Copyright Patent Design right Internet domain name

What protection is appropriate? Retracting mechanism Brand name/word Shape Surface pattern Pocket clip

What protection is appropriate? Retracting mechanism Brand name/word Shape Surface pattern Pocket clip

What protection is appropriate? Retracting mechanism Brand name/word Shape Surface pattern Pocket clip

45 What is protected by design right? Protects a design that may be the appearance of whole or part of a product and may arise from the lines contours, colours, shape, texture, material or ornamentation of the product Must be novel and possess individual character

46 Registered and unregistered design Registered Unregistered National vs EU rights

47 Registered Designs OHIM Designs ,-002,-006

48 Registered Designs OHIM Design OHIM Design

49 Registered Designs OHIM Designs ,-0002,-0003,-0004

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

51 Examination - note 1 Appearance and function - the anti-dropping oil drizzler Picture taken from the book “COCOS” Juli Capella & Ramon Ubeda, Ed. ELECTA

52 Examination - note 2 Designs contrary to public policy or morality

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

54 Summary Retracting mechanism: no protection Brand name/word: trade mark Shape: registered or unregistered design right Surface pattern: registered or unregistered design right Pocket clip: trade mark or design right

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

What kind of protection is appropriate? Confidentiality Trade mark Copyright Patent Design right Internet domain name

What kind of protection is appropriate? Confidentiality Trade mark Copyright Patent Design right Internet domain name

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

Requirements of patents The invention must be new have an inventive step that is not obvious to someone with knowledge and experience in the subject be capable of being made or used in some kind of industry Not be discoveries, scientific theories and mathematical methods; aesthetic creations; schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; presentations of information.

The prior art search The BEANO No page 1 28 February 1981

Prior Art

The inventive step It is the most difficult part of the patent examination process In most European countries the “problem-solution” approach is applied

How to apply? National Patent European Patent Convention (EPC) Patent Cooperation Treaty (PCT)

National application Exam GRANT Search “A” Pub Search UK France Germany US Japan “A” Pub Exam GRANT

Application via EPC EPO Search EPO Exam EPO “A” Pub EPO GRANT } 3 to 7 years 9 month opposition period Granted in all designated states France GRANT Germany GRANT UK GRANT

Application under PCT I.S.A. Search I.S.A. “A” Pub Exam UK France Germany US Japan GRANT } Up to 30 months

67 Costs of a patent 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:

An alternative: utility model Only available in a limited number of countries Similar to a patent Suitable for SMEs Lower expectations re: inventive step or non-obviousness Cheaper, simpler, faster Shorter period of protection

A patent: the social contract Important source of technical information Not published elsewhere Most is free technology Easily accessible via the Internet

Why is patent information useful? Planning R&D activities Assess patentability of your invention Writing the patent application Watching competitors Preventing you from infringing other people’s rights Resolving technical problems

Patent infringement Use of the patented invention without the permission of the patent proprietor 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 the patent is granted Usual defences: lack of novelty, obviousness, collateral defects, etc...

Patent vs. Trade Secret Wider protectionRestricted protection only against industry espionage High costsApparently no costs Opportunity to make moneyVery difficult to make money Public accessRestricted access Duration: 20 yearsDuration: potentially unlimited Territorial limitsNo territorial limits Inventions onlyAny kind of information

Conclusions Should have considered: Patent/utility model Now opt for trade mark protection Copyright is difficult to prove and to enforce

What kind of protection is appropriate? EXERCISE 5 The Anti-Allergy Sprayer

The many aspects of this project Medicinal product Nozzle Pumping system Sprayer can Brand name Logo Slogan/strap line Domain name Website Advertising material

What protection is appropriate? Medicinal product: - active ingredient - method of making X - formulation (combination of X with other ingredients) - method of use (i.e. treatment of allergies using X) Nozzle Pumping system Design of sprayer can

What protection is appropriate? Brand name Logo Slogan/strap line Domain name Advertising material Website

What next? SEARCH! Patents - are our inventions novel, inventive and patentable? - are we risking infringements of other rights? - to whom could we license? - from whom could we license? - who are our potential customers, suppliers and competitors?

What next? SEARCH! Trade marks - are we risking infringement of other rights? Designs - are we risking infringement of other rights?

Some useful links World Intellectual Property Organization: Office for Harmonization in the Internal Market: European Patent Office: IPR-Helpdesk:

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