Taylor Vinters: partner led, straight-talking, plain-speaking, to the point To the point. LondonSingaporeCambridge +44 (0)20 7382 8000+65 6622 5474+44(0)1223.

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Presentation transcript:

Taylor Vinters: partner led, straight-talking, plain-speaking, to the point To the point. LondonSingaporeCambridge +44 (0) (0)

LondonSingaporeCambridge +44 (0) (0) Overview of IP rights Relevance of IP rights to co- created products Key IP issues to address Developing an IP strategy in co-creation IP Issues in Co-Creation Agenda

LondonSingaporeCambridge +44 (0) (0) Patents Protect inventions Require registration Monopoly right for 20 years Territorial Holy trinity –Novelty –Inventive Step –Industrial application Infringed by using the patented invention

LondonSingaporeCambridge +44 (0) (0) Confidential Know-How Technical information –Secret –Substantial –Identified Trade Secrets Confidentiality Agreements

LondonSingaporeCambridge +44 (0) (0) Trade Marks Identifiers of origin Repository of goodwill Protect by registration Monopoly right Use and renewal Infringed by use or the same or a similar mark in the course of trade

LondonSingaporeCambridge +44 (0) (0) Copyright Expression of authors own intellectual creation Right to prevent copying, distribution, modification Arises automatically Lasts up to life + 70 years

LondonSingaporeCambridge +44 (0) (0) Design Rights Appearance of product / packaging Registered v unregistered Infringed by using the design

LondonSingaporeCambridge +44 (0) (0) How is this relevant to co-creation in NPD? Co– Creators Idea PRODUCT DEVELOPMENT FAB Chocolate

LondonSingaporeCambridge +44 (0) (0) Inputs IdeasRecipesFormulasDesignsProcessesNames Entire products

LondonSingaporeCambridge +44 (0) (0) Outputs ProductsProcessesDesignsBrands Know- how

LondonSingaporeCambridge +44 (0) (0) Different forums Social Media Communities Competitions Collaboration programmes R&D agreements Endorsement B2B v B2C

LondonSingaporeCambridge +44 (0) (0) Key Issues Right to use the co-creators ideas and IP in product development Protection of your own IP and know-how Own/right to use IP in new product No infringement/misuse of confidential information

LondonSingaporeCambridge +44 (0) (0) Employees v 3 rd Party Co-Creators Automatic ownership of employee copyright and inventions Employment contracts Employer liability Co-creating with third parties is a whole different ball game!

LondonSingaporeCambridge +44 (0) (0) Use of co-creators IP Depends on what they bring to the table No protectable IP in mere ideas Confidential? More technical product development –Patented products and processes –Designs –Confidential know-how

LondonSingaporeCambridge +44 (0) (0) How to secure the right to use Agreements Terms on website May need negotiated agreements and licences where complex

LondonSingaporeCambridge +44 (0) (0) Protection of proprietary IP and know-how Share to innovate Relevant patent protection Confidentiality agreements Restrictive covenants Restricted access to trade secrets

LondonSingaporeCambridge +44 (0) (0) Who owns the resulting IP? Basic position is that IP owned by its creator Most IP can be jointly owned where more than one party has contributed to it Restrictions on what each joint-owner can do without the consent of the others

LondonSingaporeCambridge +44 (0) (0) Dealing with ownership contractually Important to deal with ownership by contract Co-creator agrees to assign his rights in return for a reward Different forms of contracts Adequacy of reward When to contract

LondonSingaporeCambridge +44 (0) (0) Mitigating the infringement risk Important that idea you incorporate doesnt infringe third party IP or misuse confidential info Warranties from co-creator Clearance / FTO searches Cost etc. dealt with by agreement.

LondonSingaporeCambridge +44 (0) (0) Developing an IP strategy What kinds of ideas do you want? What level of co-creator involvement? How quickly do you want to lock co-creator in? How will you deal with reward? How will you deal with infringement risks?

LondonSingaporeCambridge +44 (0) (0) Key points to take away Approach should be proportional to the type of co-creation Be upfront about how you will deal with ownership of IP Forward plan to avoid problems down the line!

Any Questions? LondonSingaporeCambridge +44 (0) (0) Louisa Dixon Solicitor Taylor Vinters