An Introduction to
Intellectual Property
Angela King
European Patent Attorney
European Design Attorney
Newcastle University October 2013
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Talk Outline
What is IP?
Examples of IP in Industry
Commercialising your IP
Ethics of Patents and Other Monopoly Rights
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Intellectual Property
Patents
Trade Marks
Designs
Copyright
Confidential Information
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I.P. Rights
Reward research and development and
prevent unauthorised exploitation of your rights
Very important in competitive marketplace
Is the road clear? - Even if you do not want to
assert your own rights, you can still be in danger
of infringing somebody else's
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Why Secure IP Rights
Monopoly in marketplace
Barriers to entry for competition
Best return for expenditure
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Intellectual Property
Patents
Trade Marks
Designs
Copyright
Confidential Information
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Patents - General
Patents granted for ideas and inventions
A state granted monopoly - lasts up to 20 years
Rewards and encourages research and innovation
Prevents unauthorised exploitation of ideas or
inventions
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Patents - General
Patents are not granted merely by filing an
Application
Application is examined by the Patent Office
Strict Requirements
Absolute Novelty - No prior public
disclosure
Not an obvious solution to the
problem the invention overcomes
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Application Contains
Specification
Describes the invention sufficiently to
enable the invention to be practised
by a person skilled in the art
Claims
Application stage - sets out scope of
protection sought
Granted patent - defines scope of
enforceable protection
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Typical Timescale for a National UK Patent Application
Action Required by Agents
File UK
Application
12 Months
File any
corresponding
foreign
applications
12 Months
Continuation
of UK
Application
4 Months
Receive Search
Report from
Patent Office
18 Months
2 Months
Draft description of the
invention and file at the
Patent Office
Add Abstracts, Claims and Formal
Drawings to the Application (or file a
new complete application claiming
priority from original application).
Pay the search fee and complete
other formalities.
Advise on the significance of any
Prior Art cited in the Search Report
Application
published
by
Patent Office
6 Months
Request
Substantive
Examination
Pay Substantive
Examination Fee
10 Months
First Official
Action
Issued
Further Official
Actions
Issued
Analyse Examination Report
and attempt to overcome any
objections by argument
and/or amendment of the
application.
Deal with any further
official objections.
2 yrs 6 mths to 4 yrs
Grant Formalities
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International Patent Application Procedure
File UK
Application
12 Months
12 Months
File Individual
Overseas Applications
File International
PCT Application
File Individual
Overseas Application
File European
Application
File European
Application
Granted
European
Patent
Granted National Applications
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Intellectual Property
Patents
Trade Marks
Designs
Copyright
Confidential Information
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Trade Marks
Trade Marks are used to distinguish products
and services
Any sign which is capable of distinguishing the
goods and services of one trader from those of
another
Trade Mark can be:
Word
Logo
Sound
Smell
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Trade Marks
Serves to establish goodwill and reputation in a
product or service
Adds value to a company – Guinness 2 Billion Euro
Coca-Cola Interbrand Value $79.1 Billion (61.3 Euro)
A good Trade Mark will be:
Distinctive
Not Descriptive of Product
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Some Well Known Trade Marks
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Intellectual Property
Patents
Trade Marks
Designs
Copyright
Confidential Information
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Registered designs
© Protects aesthetic appearance –
not the underlying idea
© Can be registered or unregistered
© Registered design
© Shape or appearance inc
surface decoration
© max 25 years
© Unregistered design “Design Right”
© for 3D articles only
© 3D shape and appearance (not
surface decoration)
© Max 15 years
Apple iPad
Samsung Galaxy Tab
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Intellectual Property
Patents
Trade Marks
Designs
Copyright
Confidential Information
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Copyright
Copyright
Automatically exists in original literary
works
Copyright can exist in:
Literary Works
life + 70 years
Musical Notation
life + 70 years
Graphic Works
Sound Recordings
life + 70 years
50 years
Photographs
life + 70 years
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Intellectual Property
Patents
Trade Marks
Designs
Copyright
Confidential Information
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Confidentiality
© Can protect company “know how”
© An alternative to patenting??
© Retain the “secret step”
© No public disclosure required
© But!! No protection against
independent creation by 3rd party
© The importance of NDAs
(Non Disclosure Agreements)
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Talk Outline
What is IP?
Examples of IP in Industry
Commercialising your IP
Ethics of Patents and
Other Monopoly Rights
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I.P. in Action:
First Product on market
“Dual Cyclone” Bagless System
Patents Obtained
Patent Expired - June 2001
at end of 20 year term
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I.P. in Action:
New Product Developed
Improvement on existing technology
Patents filed to secure 20 year
monopoly term
Product now lead product in range
Much higher cost than original product
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Confidentiality - Success Stories
© The Drambuie Liqueur Company
© The Coca-Cola Company
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I.P. in Action
Designs - Shape of product
Patent protection
Copyright - Software
Trade Mark
© Apple
Computers
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I.P. in Action: ZOVIRAX
Antiviral Treatment for cold sores launched in 1981
Patent protection - Acyclovir - Expired 1997
Generics entered market
Launched as an over-the-counter brand
Now market leader in Europe
Trade Mark - Zovirax
Designs - Shape of container
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Talk Outline
What is IP?
Examples of IP in Industry
Commercialising your IP
Ethics of Patents and
Other Monopoly Rights
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Exploiting Your IP
Keep idea confidential - a Patent Application can only be
filed if the invention is new and has not been publicly
disclosed
Consult with Research & Innovation service within
University for commercialisation advice
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Spin Out Companies
I.P. initially owned by University
Commercialisation of technology by a separate company
Often ownership of I.P. may or may not be assigned to
spin out
Agreements very important in this situation
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What is IP?
Examples of IP in Industry
Commercialising your IP
Ethics of Patents and
Other Monopoly Rights
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The Ethical Debate
The grant of a Patent does not give any positive right to use an
invention
Many current “ethical debates” in relation to patents
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Ethics - Case 1
Opposition to monopoly rights
Alternative - So called “copyleft” or “freeware”
Information free for all to use and modify
Example - Linux computer operating system
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Ethics - Case 1
Open Cola - www.opencola.com
“Open source licensing”
Recipe provided to consumers
Improvements to recipe made freely
available to others
Current recipe available on Wikipedia
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Ethics - Case 1
Debate relates to “Knowledge Ownership”
Free Circulation of Ideas
Against protecting ideas
as Intellectual Property
Standard Licence Agreement termed “Copyleft” allows free use
of material
GNU Public Licence
- Allows freedom to share and change
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Ethics - Case 2
United States - government considered intervention to the
Patent held by Bayer to the Anthrax treatment drug
Ciprofloxacin (Cipro)
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Ethics - Case 2
5 further US companies had FDA approved generic Cipro
products, but were precluded from manufacture by the Bayer
patent
If US government authorised this manufacture, Cipro would
effectively be deemed to be “off patent” to allow widespread
production and increased availability of generic form of drug
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Ethics - Case 2
Unlike in Canada, US government decided to maintain status
quo of patent
Apotex manufactured Cipro for Canadian government at 63c a
pill (Bayer price $1.25)
Allegations that US government put patents before public health
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Ethics - Case 2
South Africa - 40 of the world’s largest drug companies sued the
South African government to prevent attempts to reduce the
cost of AIDS drugs by up to 90 percent
Pharmaceutical Manufacturers’ Association
dropped this action in 2001 bowing to mounting
public pressure
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Ethics - Case 2
In Brazil generic retroviral drugs have been supplied free of
charge by the Brazilian government to 105,000 people
Generic forms of retroviral drugs AZT, 3TC and Nevirapine
lower treatment costs per day from $3.20 to $1.55
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Ethics - Case 3
Various Patents granted for Genetically modified organisms
(GMO’s)
GM crops can’t however be planted unless consented to by
national law
Illustrates point that grant of a patent does not automatically
confer “right of use” of invention
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Ethics - Case 4
Patents directed to methods of nuclear transfer and cloning
“Gene Patenting”
The purpose of Patent law is not to impose restrictions or
prohibitions on the requirements of public health, or compliance
with certain ethical standards
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Ethics - Case 4
Dolly - the world’s first cloned adult animal
And now….
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Ethics - Case 4
“C.C.” - Copycat the world’s first cloned cat
Born Texas, USA, December 2001
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Ethics - Case 4
Exclusions do exist as to the patentability of:
Processes for cloning human beings
Modifying germ line identity of humans
Modifying genetic identity of animals - if it will
cause them suffering - without substantial benefit
to man
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Ethics - Case 4
Again illustrates that the grant of a patent is not indicative as to
whether the use of a technology is permissible
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In spite of these, the following arguments stand
strong in the case for patenting
Encourages and rewards investment in research and innovation
Publication of subject matter leads to dissemination of
information
Incentives to develop new products
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Contact
angela.king@murgitroyd.com
Murgitroyd & Company
Enterprise House
Innovation Way
Heslington
York
YO10 5NQ
Tel: 01904 898 881
Fax: 01904 898 882
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