Intellectual Property –
Don’t get ripped off!
Tim Gilbert 13 May 2015
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How could IP help you?
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Creating a barrier to market entry
Licensing and cross-licensing
Outsourcing manufacture
Preventing or stopping infringers and
counterfeiters
Increasing confidence for making investments
Increasing capital assets
Seeking investment or tax incentives
Gaining credibility
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Relevant types of IP
• IP Rights obtained by registration
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Patents
Registered Designs
Registered Trade Marks
Domain names
• Unregistered IP Rights
– Unregistered design right
– Trade marks
– Copyright
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Patents
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Patents
• A bargain between an inventor and the governing
authority.
• Disclosure –v- monopoly
– If requirements for patentability met.
• Why do people want patents?
– Monopoly protection.
– Licensing.
– An asset.
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Patent monopoly
• Making, importing, selling, stocking or using
patented products.
• Using or offering for use a patented process.
• Also covers secondary markets.
• No deliberate copying required for infringement.
• 20 years protection.
• Extendable overseas.
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Patentability Requirements
 Novelty.
 Inventiveness – not obvious.
 Capable of industrial application.
 Not excluded.
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The Patenting Process
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Pre-filing search?
Preparing and filing patent application.
Search.
Examination.
Grant.
Renewal fees.
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Patent claims
• Monopoly is defined by the claims.
• Claim language is therefore very important.
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Obtaining a patent
• Time till grant typically 2 – 7 years, usually 3 – 5
years.
• Costs to file in the UK typically £1,500 - £3,000.
• UK patent to grant typically £3,000 - £6,000.
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Registered Designs
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Registered Designs
 Protects appearance of article, especially
aesthetic appearance i.e. pattern applied thereto
and/or shape.
 UK, Community or foreign application.
 Requirements – novelty and not commonplace.
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Registered Design monopoly
 Covers designs which do not provide a “different
overall impression to the informed user”.
 No copying required for infringement.
 Duration 25 years.
 Extendable overseas.
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Registering a Design
 Straightforward and relatively quick application
procedure at least in UK and EU.
 Typical filing costs. UK £500, EU £1000. Renewals
every 5 years.
 File drawings or photographs, usually from different
angles.
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Registered Trade Marks
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Types of Trade Marks
• Commonest
– Word eg POLO, WEETABIX, APPLE, IPOD,
CARLSBERG, FERRARI, GEORGIO ARMANI
– stylised word in a specific form
– logo
• Less common
– shape
– sound
• Rare!
– gesture
– smell
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Trade Mark monopoly
• Protects against the use of:
– Identical marks on identical goods and services
– Identical or similar marks for identical or similar goods
and services
– Conflict with a mark of repute
• No copying required for infringement.
• Potentially unlimited duration of protection.
• Extendable overseas.
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Registering a Trade Mark
• A Relatively quick application procedure, at least in the UK
and EU.
• All goods/services fall within an International classification
system (Classes 1 to 45).
• To be registrable, a mark must be distinctive, i.e. not
descriptive.
• Marks can co-exist in different fields, e.g. POLO, LOTUS
• Filing costs depend on number of classes, but start at UK
£400, EU £1,250.
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Ownership of IP
• Patents assumed to belong to the inventor, or
their employer if appropriate.
• Designs assumed to belong to the designer, or
their employer if appropriate.
• Trade marks usually assumed to belong to the
party that first uses the trade mark.
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Avoiding ownership conflicts
• Potential conflicts with:
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Commisioners
Employers
Joint developers, e.g. educational establishments
Funding providers
• Solutions:
– Assignments of IP rights.
– Enforceable IP contracts.
– Joint ownership agreements (high risk).
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Who can help?
• Patents
– UK and European Chartered Patent Attorneys.
– See www.CIPA.org.uk for list of Chartered attorneys.
• Trade Marks
– Trade Mark Attorneys.
– See www.itma.org.uk for list of Registered attorneys.
• Registered Designs
– See above.
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Who are we?
• We are a full service IP consultancy.
– Chartered Patent Attorneys
• Specialists in most fields.
• ‘In-house’ experience.
– Trade Mark Attorneys
• Including a renowned Litigator and Advocate.
– Highly recommended in the Legal 500.
• We serve clients of all sizes and locations.
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Interested to hear more?
• Chat to us over the phone.
• Arrange a free consultation before committing.
• Our website: www.patents.co.uk
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