an introduction to intellectual property and patents part i

An Introduction to Intellectual Property and Patents Part I Simone Ferrara & Matthew Hoyles

21 May 2014

© Vodafone Group Services Limited,

2014

What is IPR?


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• Intellectual Property (IP) is any creation of the mind

• Technology/deliverable is the reduction to practice of IP - e.g., software,

hardware, documentation

• Intellectual Property Rights (IPR) are exclusive legal rights to control how

IP can be used, thereby giving control of how the technology/deliverable

can be used

– Not a right to use a technology/deliverable, but a right to prevent others from using it

• Any product or service can be visualised as a layered structure formed of a

tangible part (i.e., technology/deliverable) and an intangible part (i.e., IP

and associated IPR)

What are Intellectual Property Rights?


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An example

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• High Level Design document

• If not suitable, the position must be changed through contract


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HLD

v.1.0

Created

by Andy

Andy’s IP

HLD

v.2.0

Edited

by Beth

Andy’s IP

Beth’s IP

Revision

Statutory position

IP owner Andy

Who can use it? Andy

Can others use

it?

Only with Andy’s permission

(licence)

Statutory position

IP owner Andy AND Beth

Who can use

it?

Andy (or Beth) with the other’s permission

Can others use

it?

Only with Andy’s AND Beth’s permission

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• Patents: protect ideas/inventions (e.g., how things work)

• Confidential Information: protect know-how/trade secrets (e.g., how to do

things)

• Copyright: protect documentation, software code, images, etc. (e.g.,

original creations)

• Designs: protect appearance of products (e.g., how things look)

• Trade Marks: protect brand (e.g., how things are recognised)

The main categories of IP – not just patents!


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IP as a commercial asset


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The value of IP as an asset

• IP is a valuable commercial asset that must be recognised and protected

• IP can be traded and/or leveraged like any other asset

• Some key points to bear in mind:

– When you (or your partner) introduce new features, modify existing products or even simply

provide feedback or suggest improvements, you are creating IP

– It is important to clearly understand what your commercial objectives are. For example, if you

work with a partner:

– Do you want to own, or even use, what you have paid a partner to build for you?

– Are you happy for a partner to sell what they have built for you to a competitor?

– Should a partner be free to share with others confidential information you share with

them?


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• Partner Background IP

– It is generally required to obtain access insofar as it is necessary to meet your commercial

objectives (e.g., licence to partner Background IPR)

• Your Background IP

– Determine to what extent you want to allow the partner to access your IP (e.g., the partner

may have its own objectives)

• Foreground IP

– Determine required control for meeting commercial objectives (e.g., ownership of

Foreground IPR)

• Often small businesses utilise low cost services in exchange for giving

away valuable IP assets or positions – there is nothing wrong with this

but they should be aware of the consequences

– For example, source code in software development

IP considerations when engaging a partner


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• NDAs are simple contracts that allow one party to share confidential

information with another party (one-way) or share confidential information

with each other (mutual)

• What they are good for:

– Disclosing confidential information to a partner to ensure that do not misuse it

– Discussing a confidential project for which you do not need to be able to use the information

received

• What they are NOT suitable for:

– Anything else!

– Receiving constructive feedback - Under a mutual NDA you cannot use the feedback you

receive, even if you were inevitably going to come up with the same information yourself

Non-Disclosure Agreements - NDAs


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Questions


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an introduction to intellectual property and patents part i

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