Protecting your inventions, ideas and brands. Gaby Cowcill Senior Patent Examiner, IPO
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1 Protecting your inventions, ideas and brands Gaby Cowcill Senior Patent Examiner, IPO
2 Objectives Be aware of the different types of IP rights available Know which types of IPR are relevant to your business Know the benefits of incorporating IP within a business strategy Identify potential IPR issues Know where and when to seek further advice
3 What is Intellectual Property? Patents Plant Varieties Trade marks Trade Secrets Intellectual Property Registered designs Confidentiality Copyright
4 Is IP important to me? 96% of UK businesses do not know the value of their IP Only 11% of UK businesses know that disclosure of an invention before filing will invalidate a patent 74% of UK businesses could not correctly identify the owner of copyright when using a subcontractor Only 4% of UK businesses have an IP policy
5 How can Intellectual Property benefit my business? IP may generate income for your business through licensing, sales and/or commercialisation of IP-protected products or services. IP rights can enhance the value of your business with investors and financing institutions. In the event of a sale, merger or acquisition, IP assets may significantly raise the value of your business
6 Patents Plant Varieties Trade marks Trade Secrets Trade marks Intellectual Property Registered designs Confidentiality Copyright
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 service of one undertaking from another Renewable indefinitely Protects your brand and gives you rights to stop others imitating you or using your trade mark without a license
8 TM registration Trade Mark registration is not company name or domain name registration (Companies House) A domain name may be registered as a Trade Mark Incorporating another s RTM into your domain name or meta-tag may be an infringement TM searches online Avoid expensive mistakes Awareness of competing marks
9
10 Unexpected marks Office of Government Commerce to create new logo ( ( not inappropriate for an organisation that s looking to have a firm grip on government spend )
11 Colours as Trade Marks Roadside recovery Chocolate Cat food Baked beans Mobile communication
12 UK TM Applications Fees: Application = 170 (one class) Additional classes = 50 each (up to 45) Timeline: Examination within 2 months of filing Registration (unopposed) within 5 months
13 Registration Overseas Paris Convention six months priority OHIM Community Trade Mark E-filing EUR900 WIPO Madrid Protocol
14 Patents Plant Varieties Trade marks Trade Secrets Copyright Intellectual Property Registered designs Confidentiality Copyright
15 What copyright protects Exclusive rights against copying (with exceptions) CDPA 1988 sets out 8 categories of work Included are: Books, technical reports, manuals, databases Engineering or technical plans Photographs Promotional literature, advertising Films, videos Computer software, websites
16 How to get copyright protection No official register, no forms, no fees automatic right Proof of date: Special delivery post, date stamped and unopened Lodge the work with a solicitor/ip specialist Unofficial registers
17 Who owns copyright? Usually, the creator(s) or author(s)......or their employer if produced in the ordinary course of their employment. However, a contractor will retain ownership unless their contract is explicit to the contrary David Slater (possibly)
18 How long does copyright last? Literary, musical, artistic and dramatic works: life + 70 years Films: 70 years after death of the last director, composer of any music specifically created for the film, the author of the screenplay or the scriptwriter TV & radio broadcasts: 50 years from first broadcast Sound recording: 70 years from first publication Published editions (typographical layout): 25 years from first publication
19 Top dead earners Michael Jackson - $140m Source Forbes.com 2. Elvis Presley - $55m 3. Charles Shultz - $40m 4. Elizabeth Taylor - $25m 5. Bob Marley - $20m 6. Marilyn Monroe - $17m 7. John Lennon - $12m 8. Albert Einstein - $11m 9. Theodor Geisel - $9m 10. Bruce Lee - $9m
20 Copyright for business Mark work with international copyright symbol Record the work in some way Electronic fingerprints Look at licensing and assignment opportunities Review contracts
21 Patents Plant Varieties Trade marks Trade Secrets Patents Intellectual Property Registered designs Confidentiality Copyright
22
23 What is a patent? Patents provide you with a monopoly for an invention (though the Patents Act 1977 fails to define the word invention ) Inventions must be new Inventions must not be obvious Inventions must be industrially applicable and not be excluded (Usually) Last for up to 20 years
24 How to get a patent Application (national/international) Search and examination Identify relevant prior art anywhere, anything Ensure that application as a whole complies with the Act Publication Grant Attorney
25 Citations and the Prior art Paul Graham USHER Patent No GB A Priority date: 18 March 1982 The BEANO No page 1
26
27 Exclusions Section 1(2) of the Act excludes some things which are not inventions (computer programs, literary works) Section 4A also excludes: (a) a method of treatment of the human or animal body by surgery or therapy, or (b) a method of diagnosis practised on the human or animal body.
28 UK Patent applications Official fees: Application - 30 ( 20 if e-filed) Search fee ( 130 if e-filed) Examination ( 80 for e-filed) Renewals Timescales 5 years to grant Up to 20 years protection BEWARE FRAUDSTERS
29 Patents overseas Three routes: Separate national filings in each country of interest European Patent Convention (EPC, filed at EPO) Patent Co-operation Treaty (PCT, filed at WIPO) ( bundle of national patents) COSTS! EPO EUR 120 (e-filed app) (search) (exam) WIPO CHF 1330 (app) (search) (prelim exam) plus national fees
30 Patents for business Green Channel Environmentally-friendly technology Accelerated search, exam and/or publication - free R&D Tax Credits Patent Box Up to a 10% corporation tax rate on international profits attributed to UK linked patents Review contracts
31 Patents Plant Varieties Trade marks Trade Secrets Designs Intellectual Property Registered designs Confidentiality Copyright
32 To register or not to register? Unregistered (Design right) Automatic right but you will need proof 10 years after the design was first sold or 15 years after it was created Shape and configuration Registered Designs Eligible designs only Exclusive rights for up to 25 years Protects shape or configuration (3D) and pattern or ornamentation (2D)
33 UK Design registrations 60 for first design ( 40 application + 20 publication) 40 for subsequent design ( 20 application + 20 publication) Renewal fees every 5 years Maximum term 25 years Paris Convention 6 months OHIM community design Registration overseas
34 Patents Plant Varieties Trade marks Trade Secrets Confidentiality Intellectual Property Registered designs Confidentiality Copyright
35 Confidential information Know-how Customer lists Technical information Pricing strategies Methodologies DANGER! Co-operative ventures Suppliers Sub-contractors/support staff Customers
36 Working with others Prior use or disclosure may (will) invalidate a patent application Use a confidentiality agreement Agree in writing who will own any IP before commercialisation
37 IP Help and Advice =
38 Local help and support Business & IP centres London Sheffield Leeds Newcastle Manchester Liverpool Birmingham 6 Patent libraries Plymouth Portsmouth Llandudno Belfast Glasgow Aberdeen
39 Thank You Gaby Cowcill gov.uk/ipo
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