University of Limerick 25 th March 2009 Intellectual Property Seminar Michael Lucey

Types of Intellectual Property Rights – Trade Marks – Designs – Copyright – Patents – Know-how + Confidential information – Database Rights

What’s a Trade Mark ? • Any sign which distinguishes your goods or services from those of others • a guarantee of source and of quality to your customers/prospective customers • operates as a “badge of origin” for your goods/services

• Most commonly: – A word, or words (text) – A logo or picture – A combination of the above • Also can be: – A slogan – A shape or shapes – Packaging – A smell, a colour or a sound

You have chosen a Trade Mark Issues to consider: 1. Are you free to use the mark ? (searches) 2. Register it ! (why ?) 3. Where should you register (protect) the trade mark ? What countries ?

1. Are you free to use the mark ? • Searches of the trade mark registers in the country (or countries) where you intend to use the mark • Searching is not mandatory, but highly advisable. You take the risk. • Purpose of searching is to find any ‘earlier rights’ covering your field (identical/similar marks covering identical/similar goods/services)

Consequences of Trade Mark infringement Can be severe – An injunction against your use of the mark – Pay damages (compensation) to complainant – Delivery up and/or destruction of materials – Account of profits to the complainant – Pay legal costs (both sides) – Lose your financial investment and goodwill • Not knowing is not a defence …

2. Why register your TM ? A. To protect a startup name or brand - You can file an application before you start using a trade mark. This will block later applications. B. To get a strong legal property right in your name or brand - Exclusivity - TM registration renewable every 10 years - infinite - The registration can be licensed, transferred or used as security

C. A return on your financial investment - Your TM registration may become a valuable asset D. To get enforcement rights to stop others using your mark or a confusingly similar mark - Your registration gives you strong registration rights to prevent use of an identical mark or a confusingly similar mark (in respect of same or similar goods or services)

3. Where to protect your TM • Priority System – file first application (e.g. IRL/CTM) and have up to 6 months to file other(s) without losing filing date • You should register the mark in the country/countries where you intend to use it e.g. Irish/UK/US national tm application(s)…etc -> Community Trade Mark -> can file single application to cover all EU states (15+10 =25)

Marking issues • When TM registered, advisable for owner to mark goods or materials to assert the registration • Can use the words “a Registered Trade Mark of…” or the symbol “®” • If TM application still pending, or unregistered just use “™” or the words “a Trade Mark of…” • NB: offence to use “Registered” or “®” if not registered…

What is a Design? • Design means: • The appearance of the whole or a part of a product • Resulting from the features of, in particular, the lines, contours, colours, shape, texture and/ or materials of the product itself • And/ or its ornamentation

What products are protectable? • Product means: • Any industrial or handicraft item • Including parts intending to be asembled into a complex product, packaging, get-up, graphic symbols & typographic typefaces

Requirements for Protection Novelty No identical design made available to the public before the filing date/priority date Individual Character If overall impression produced on the informed user differs from the overall impression produced by any design which has been made available to the public

Unregistered Community Design • Same requirements as for a Registered Design • No registration Process • 3 Years Only – big disadvantage • Right to prevent third party from using design if the contested use results from copying the protected design • Must prove design was copied • Karen Millen Ltd. -v- Dunnes Stores & Anor

Should I keep my design secret? • It is very important not to disclose a design to the public before you are ready to commercialise it – • Why? • 1. Once a design is made available to the public, the unregistered design right automatically applies for 3 years from the date of making it available • 2. Designs that are disclosed more than one year before making an application for registration are not considered ‘new’ and are therefore liable to be invalidated

Copyright • Protects original works which have been recorded in some form against copying. Protects the expression of an idea not the idea itself. • Must be Original • Low threshold to create copyright –automatically subsists once created • Ownership – Author – careful ! • Duration – 70 years from end of calendar year in which author dies • Marking ‘C with a Circle’ ©- Date and Owners Name

Items Protected • Computer graphics/codes/databases • Printed graphics • Literary works • Musical works • Artistic works – including mechanical drawings

What is a Patent ? • A patent is a monopoly right conferred by the government giving the patent holder the right to stop others making, using or selling an invention. • Statutory Protection • 20 Years term, normally • Novelty • Inventive step • Industrial Application

What types of Patents exist ? • All areas of Technology, • Pharmaceutical, Engineering – all types, Software, Bio-technology, Business methods (?), • Apparatus or System • Process or Method • Use

What to patent? • Anything technical representing an advantage in an area of interest (Keep competitors out). • Anything technical outside the core area of interest (Potentially saleable to others). • Developments which provide real benefits with potential to generate licensing income.

What is Novelty and Inventive Step ? Novelty : An invention shall be considered to be new if it does not form part of the state of the art Inventive Step : An invention involves an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art NB State of the art = Everything made available to the public before the date of filing of the patent application – Must file patent application before any disclosure, other wise invention will not be Novel !

Novelty V Inventive Step Novelty Invention = A + B Prior Doc 1 = A Prior Doc 2 = A + B Therefore, Invention is novel over Doc 1 but not novel over Doc2 Inventive Step Invention = A + B + C Prior Doc 1 = A + B Prior Doc 2 = C Is it inventive (obvious) to combine Doc1 and Doc2 to arrive at claim ?

General Patent Filing Strategy Initial Filing (Priority Date) t=0months International (PCT) Filing t=12months National Filings t=30months

USEFUL INTERNET RESOURCES • Searchable patent databases EPO - USPTO - PCT - • Full Search List available from:

Example Front Page of PCT

Ownership • Applicant generally is owner • Applicant V Inventor • Contract of Employment –UK/Ireland employer = owner of invention • Assignment should normally be executed • Can be assigned/sold/licensed by owner • US –special situation

Licensing • Permission to do something that, without the licence, would be an infringement of IP • Person granting License is Licensor • Person receiving License is Licensee • Territorial • Complex legal document • WARNING – Do not negotiate your own Licence – get legal advice!

Exercise to Identify IP • You are an inventor/designer and have recently developed a novel kite. The shape of the kite ensures that it is much greater lift than conventional kites. In fact the shape of the kite, with the special winged tips you have developed, allows for better flight than all other known kites. • You have designed the kite having a number of distinctive colours with four individual different colour strips that will appeal to children. You believe children will be your main market. You have set up a company to market the kite and have come up with the name STEALTH – KITE to sell the kite under. • You hope to go to a trade show next month to display and demonstrate your new kite. You have also prepared some marketing literature that you intend to hand out at the trade show. • You have not discussed or shown the new kite to anyone to date. • Question • Identify what Intellectual Property rights that could be protected and the steps you would take to protect your Intellectual Property ?

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