intellectual property seminar · hgf together with sister firm hgf law is one of the pre-eminent...

Intellectual Property Seminar

(Everything you always wanted to know about IP…)

Dr. Chris Moore

Partner

Schedule

1. Introduction To IP

2. Acquiring & Exploiting IP

3. Enforcing IP

4. Ownership and other matters

Questions

1. Introduction

What does the term IP Cover?

• Copyright

• Designs

• Patents

• Trade marks and

• Confidential Information

1. Introduction

• Drawings

• Plans

• Methods

• Materials

• Products

• Names

• Recipes

• Processes

James Dyson first invented cyclone technology for vacuum

cleaners 30 years ago. Ever since, Dyson engineers have been

improving it, making it work better and better. As they invent, they

patent – protecting their efforts from copycat manufacturers. To

date, they have filed 564 patents. You won’t find Root Cyclone™

technology in any other vacuum cleaner.

1. Introduction

Trade marks

• Product names, brands, logos

• Associate with certain goods or services

• Registered (®) or unregistered (™)

• Registration is beneficial to help stop

unauthorised use

• Non-use leads to loss of rights

1. Introduction

Examples

1. Introduction

1. Introduction

Designs

• Protects the appearance of an article

(resulting from lines, contours, colours,

shape, texture or materials of the product or

its ornamentation)

• Registered or unregistered

• Application before publication (grace period)

1. Introduction

Design – CDR 000181607

1. Introduction

“…not as cool.”

Samsung Galaxy Tablet 10.1

Copyright

• Original works of authorship

• Prevents copying

• Examples

drawings, photographs, presentations,

models, brochures, web pages, newsletters,

brochures, pamphlets, advertising, software,

databases.

1. Introduction

Copyright (allied rights)

• Unregistered Design Rights (UK, EU)

• Database Rights

• Topography Rights

1. Introduction

Patents

• An agreement with a government

• Government grants a time-limited

monopoly

• Applicant provides a full disclosure of

invention

1. Introduction

Patents

Granted in respect of inventions that are:

• Useful

• New

• Inventive

1. Introduction

Patents: What is new?

• Not published anywhere in the world

• Not disclosed to anyone except under an

obligation of confidentiality (express or

implied)

• An OBJECTIVE test

1. Introduction

Patents: What is inventive?

• Not obvious to a person skilled in particular

field

• A SUBJECTIVE test

1. Introduction

Examples:

Patentable or not?

1. A blue squash ball

2. A chair which converts to a ‘lie flat’ bed for aircraft

3. Software for designing drill bits

4. A single polymorph isolated from a known racemic mixture

1. Introduction

So, what do you get?

• A (time-limited) monopoly, which provides:-

• The right to stop others from practising,

but not

• The right to use!

1. Introduction


IP rights are personal property rights

• IP rights can be

Sold (assigned)

Licensed

Used to attract finance (investors, mortgaged)

Deployed tactically

Acquiring IP

• Is an idea patentable? Has someone already done it?

• Who conceived the idea? Conception

• What rights do we have?

• What rights can we get? Generation

•Do we still believe in the commerciality? Analysis

• Has anything changed? Should we revisit IP? Development

• Does it work according to specification? Testing

• What is the brand identity? Marketing

• What markets? Commercialisation



Building a patent portfolio

Stage Type of

Patent

Example

Initial Master NCE Ibruprofen (1961)

Development Subsidiary Specific salt,

adjuvant, polymorph

Nurofen Express™

(S isomer)

Market

Diversification

New indication Neoprofen™

Market

Protection

New vehicle

New production

method

Nurofen Gel™

“Green synthesis”

Extension SPCs


Acquiring IP

• Patents, Designs, Trade Marks

• National applications/grants and

registrations

• Quasi national rights (EPC, PCT, Hague,

Madrid)

• Supra national Rights (Unitary Patent?,

CDR, CTM)

Patent application process

File

0 12 24 36 30 18 6 GB

US

EP

PCT

Months


search

examination

How do I decide whether to patent?

• Will competitors want to use the invention?

• At what level will the invention apply?

• How can infringement be detected?

• How can infringement be avoided?

• Can I protect the company’s freedom of action?

• Costs/profits

• Internal KPI and/or external investor

• Marketing advantage


Continual Review

• IP in a changing commercial climate • New geographies (export into new markets)

• Product changes

• Brand Issues

• Continuous review of own IP position • Renewals etc.


Positioning of competitors • Patents

• Trade Marks

• Designs


0

10

20

30

40

50

60

2004 2005 2006 2007 2008 2009 2010 2011

US Patent Publications [B29C70/…]

Boeing

Airbus


Ensuring Freedom to Operate (FTO)

• Litigation (invalidity, declaration of non infringement)

• Licensing (inward/outward)

• Design Around

• Re-branding

• In/out selling

Generating Cash:

Pitfalls in selling IP

• How has it been valued?

• It’s a monopoly right

• Future proofing your business


Generating Cash:

Licensing

• Exclusive

• Sole

• Non Exclusive

• Geographical limitations

• Sector limitations


How can I use patents tactically?

• Offensively

• Defensively


Patents

Offensive Uses

• Market protection (prevent others from making,

using, selling etc)

• Inhibit competitor FTO

• Revenue Source (collect royalties)


Patents

Defensive Uses

• Market access (leverage into foreclosed

markets, cross licence)

• “Lock in” customers of embedded product

• Freedom of action (prevent others from

getting patent)


A writing

implement

comprising a

body holding a

retractable nib

A writing implement

comprising ink

based marking

material

A hand-held

writing

implement

preferably

comprising a

graphite marking

material


Headlines

• IP rights are business tools

• IP should support the commercial aspirations of a

business

• IP rights are a valuable asset

• IP can be income generative


3. Enforcing IP

• Remember: IP rights are monopoly rights

• All IP rights are susceptible of being revoked

3. Enforcing IP

As Patent Holder

• The UK Patent Office (non binding opinion)

• The Courts (infringement action)

As third party

• The UK Patent Office (non binding

opinion, revocation)

• The Courts (declaration, revocation)

• The European Patent Office

(Opposition)

3. Enforcing IP

Patent holder or third party can start an action

• Usual process

Letter before action

Negotiation

Mediation/Arbitration

Settlement, OR

Litigation

3. Enforcing IP

Patent holder claiming infringement

• “You stole my idea I demand satisfaction…”

• You’ve infringed at least one of the claims of my

patent and I require damages to recompense for

lost profits

• “I wasn’t there and even if I was there I didn’t do

it…”

• I don’t infringe and even if I do your patent is

invalid

3. Enforcing IP

• Patent holder claiming infringement

Possible outcomes

Infringement

Valid

ity

NO

NO

Y

ES

YES

3. Enforcing IP

Remedies

• Successful Claimant

• Injunction

• Delivery up

• Damages (or account of profits)

• Declaration

• Costs

3. Enforcing IP

Headlines

• Litigation is time consuming and can be

expensive (cost and damage cap at PCC)

• Very few IP rights become contentious

• Very few contentious issues are litigated

3. Enforcing IP

4. Who owns IP?

Copyright

1. A photograph on your website of your top

product taken by a third party

2. Your sales brochure written by your

marketing department

3. Your sales brochure written by your IT

manager

4. Ownership

Unregistered Design Rights

1. A tool made by a UK tool maker

commissioned by you

2. A part made by a DE supplier to be

incorporated into your product

3. An article designed by a UK citizen under

commission from a US company

4. Ownership

Patents

1. A new product designed by technical

director

2. A new product devised by your sales

manager

3. A new product devised by a consultant to

your firm

Sole ownership better than joint ownership

• Transactions should be registered because

• A later registered transaction may take

precedence

• Damages and costs in patent

infringement actions may be reduced

4. Ownership

4. Ownership

How do we avoid problems?

1. Understand the IP process

2. Forewarned is forearmed

3. Written contracts and agreements

4. Early as possible registration of rights at PO

Final Thought

Recent Survey (Midlands Insider October 2013):

How important is innovation to your business?

‘Very Important’ or ‘Important’ 93%

‘Important but not essential’ or ‘Not important’ 7%

How do you protect your innovations?

Copyright 38.9% Trade Secrets 38.9%

Patents 33.3% No Protection 30.6%

Do you receive academic or professional support with innovations?

Yes 39.8% No, I don’t need support 36.1%

No, I don’t know where to find it 24.1%

Thanks for attending

Dr. Chris Moore

Partner

25 September 2013

About HGF

HGF together with sister firm HGF law is one of the pre-eminent firms of

intellectual property specialists in the UK. The integrated approach to intellectual

property of bringing patent and trade mark attorneys together with IP lawyers

makes the firm distinctive in the market and provides clients with a complete and

seamless service. The firm has over 80 fee earners covering all technical

specialities across ten offices nationwide.

HGF has been ranked Scottish IP law firm of the year for two years running and is

ranked consistently highly by all of the major rankings organisations (Chambers,

Legal 500, MIP). Our attorneys are individually ranked in the highest band by

ranking organisations.

For more information see: www.hgf.com

intellectual property seminar · hgf together with sister firm hgf law is one of the pre-eminent...

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