IRDG Seminar Intellectual Property Cathal Lane PgDip, BSc(Hons) European, Irish & UK registered patent. Trade mark attorney. clane@tomkins.com www.tomkins.com 12 December 2012 Tomkins & Co. 2012
What is Intellectual Property? Any creative work or invention considered to be the property of its creator Intangible asset of a business An insurance policy A revenue stream A business tool
Why Protect IP? Strategy Goal Considerations Exclusivity Protect Markets Higher Margins Depth of IP Competitors IP Cost of Enforcement Licensing Income Amount and/or Depth of IP Targets IP Cost of Enforcement Defensive Design Freedom Deter Litigation Defense in Litigation Amount and Depth of IP Transfer Pricing Tax Benefit Amount of International IP Marketing Enhance Brand Technology Leadership Amount of IP in Core Areas IP on Selling Features
Why Protect IP? Your IP Adds to balance sheet of a company potentially increase value if selling Facilitates licensing revenue Use as security for borrowing Marketing ( our newly patented technology.. ) Leverage in negotiations Knowing about IP Don t miss opportunities: allows you to secure protection before the chance is lost Early warning: allows you to identify possible infringement problems early on (someone else infringing your IP, or you infringing someone else s)
Why Protect IP? A common misconception is that owning IP allows you to exploit the protected subject matter without fear of being sued Generally speaking, IP rights are negative rights that allow you to prevent third parties from exploiting the protected subject matter Don t have carte blanche to exploit the subject matter yourself as this may infringe other people s IP Overlapping coverage
What do patents protect? Protects a fundamental idea an invention Products consumer products, drugs, machinery, electronic devices Processes manufacturing methods, telecommunication methods, methods for operating machinery or implementing algorithms Protects function rather than form - how something works rather than how something looks Must be new same invention must not have been available to the public before the patent application was filed includes disclosures by yourself and others (prior art) Must involve an inventive step not an obvious development to a skilled person in view of prior art problem/solution Must be industrially applicable
Exclusions from Protection In Europe (and elsewhere) Discoveries, scientific theories, mathematical methods Aesthetic creations Rules of a game, method of doing business, computer programs as such Presentation of information Methods of medical treatment Under European law, computer-implemented inventions can be patented if they have technical character and involve a technical contribution over the prior art
Application Procedure Objections are to be expected - a normal part of the process File claims with broad scope and narrow down as little as possible If you start narrow, you can t (usually) broaden your claims later Repeat procedure in each individual jurisdiction Similar objections likely to be raised, leverage work already done Utilise EPO/PCT/regional offices to reduce duplication of work Application published 18 months after first filing May be opposed by third party after grant
Term and Maintenance Normal patent term is 20 years Pay renewal fees at regular intervals to keep in force, usually every year but depends on jurisdiction Can stop paying at any time, but rights are lost Short-term patents, utility models or petty patents available in some jurisdictions Shorter term, but granted without substantive examination
Infringement and Enforcement
Infringement and Enforcement Patent is infringed if someone makes, uses, sells, offers for sale or imports the invention Infringement is determined by reference to the patent claims Infringing product/process must include all features of at least one claim Inform infringer of existence of patent Cease and desist Court action Commercial Court Infringement action may only be taken after the patent is granted, but damages may be backdated to publication date Expect infringer to counterclaim for invalidity
Example First inventor invents a three-legged stool and obtains a patent for it Second inventor obtains a patent for an improvement three-legged stool with backrest patentable because it is novel and inventive (in theory) Second inventor can stop third parties from making or selling the improved stool But can he make it himself?
What can a design protect? Appearance of the whole or part of a product Resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself or its ornamentation Any industrial or handicraft item Includes packaging, get-up, graphic symbols and typographic typefaces Protects form rather than function - how something looks rather than how something works Exclusions from protection features dictated solely by technical function, component parts of a complex product not visible in normal use New and have individual character produces a different overall impression on informed user, degree of freedom of designer
Application Procedure Drawings or other representations of product usually black and white line drawings for broadest protection, photos if appropriate Colour can be limiting, so avoid unless colour itself is to be protected, or file two applications Choose classification, although not limiting registration is for design, not product RCD multiple application file several applications together if in same classification, reduction in fees useful for a range of products RCD no examination carried out registered automatically 12-month grace period, so you can disclose and then register later (different to patents!)
Term and Maintenance Term depends on jurisdiction Most jurisdictions require renewal fees RCD maximum term of 25 years, renewal fee due every five years
Unregistered Design Right Unregistered Community Designs automatic right Lasts for three years from first making design available to the public Same requirements and exclusions as for registration of RCD Must show copying (similar to copyright)
Infringement and Enforcement Design registration is infringed if someone makes, offers, places on the market, imports, exports or uses a product to which the design is applied Because RCDs are registered without examination, validity is determined at time of enforcement Exclusive right no need to show that copying has taken place Registration is infringed if infringing product does not produce a different overall effect on the informed user Jurisdiction for infringement action depends on location of infringer and proprietor of registration
Examples
Examples
Trade Marks Logo Shape Any sign capable of being represented graphically which is capable of distinguishing the goods or services of one undertaking from those of other undertakings oami.europa.eu Word Coca-Cola oami.europa.eu
Trade marks (cont d) Must be registered nationally or at EU then allowed to use TM is not an indication that the mark is registered. These marks not protected by trademark law (but may be other legal considerations) Absolute protection Prevent others from using, without preconditions Can be kept alive indefinitely Requirements: Must be distinctive Can t be descriptive Only for designated goods/services
Dyson Patent, Trade Mark & Registered Design for one Product US Patent Application No. 2008/222910 for a hand Drying Apparatus RCD No. 000469689-0001 CTM No. 006968911
Who are we? UK and European qualified professionals Specialise in: Registration & protection of Intellectual Property Litigation support & advice Licensing Intellectual Property Ownership Advice Intellectual Property Strategy Implementation
How Can We Help? Identifying and realising the potential of your Intellectual Property as a business asset. Providing the legal support through which your Intellectual Property can enhance and protect your business. Providing support in business decisions, such as due diligence or mergers, acquisitions and investments. Providing seminars and education to business