taylor vinters: partner led, straight-talking, plain-speaking, to the point to the point....

Taylor Vinters: partner led, straight-talking, plain-speaking, to the point

To the point.

London Singapore Cambridge+44 (0)20 7382 8000 +65 6622 5474 +44(0)1223 423444


• Overview of IP rights• Relevance of IP rights to co-

created products• Key IP issues to address• Developing an IP strategy in

co-creation

IP Issues in Co-Creation

Agenda


Patents• Protect inventions• Require registration• Monopoly right for 20 years• Territorial• Holy trinity

– Novelty– Inventive Step– Industrial application

• Infringed by using the patented invention


Confidential Know-How

• Technical information– Secret– Substantial– Identified

• Trade Secrets

• Confidentiality Agreements


Trade Marks

• Identifiers of origin

• Repository of goodwill

• Protect by registration

• Monopoly right

• Use and renewal

• Infringed by use or the same or a similar mark in the course of trade


Copyright

• Expression of author’s own intellectual creation

• Right to prevent copying, distribution, modification

• Arises automatically

• Lasts up to life + 70 years


Design Rights

• Appearance of product / packaging

• Registered v unregistered

• Infringed by “using” the design


How is this relevant to co-creation in NPD?

Co– Creator’s Idea

PRODUCT DEVELOPMENT

FAB Chocolate


Different forums

• Social Media

• Communities

• Competitions

• Collaboration programmes

• R&D agreements

• Endorsement

• B2B v B2C


Key Issues

• Right to use the co-creator’s ideas and IP in product development

• Protection of your own IP and know-how

• Own/right to use IP in new product

• No infringement/misuse of confidential information


Employees v 3rd Party Co-Creators

• Automatic ownership of employee copyright and inventions

• Employment contracts

• Employer liability

• Co-creating with third parties is a whole different ball game!


Use of co-creator’s IP

• Depends on what they bring to the table

• No protectable IP in mere ideas

• Confidential?

• More technical product development– Patented products and processes– Designs– Confidential know-how


How to secure the right to use

• Agreements

• Terms on website

• May need negotiated agreements and licences where complex


Protection of proprietary IP and know-how

• Share to innovate

• Relevant patent protection

• Confidentiality agreements

• Restrictive covenants

• Restricted access to trade secrets


Who owns the resulting IP?

• Basic position is that IP owned by its creator

• Most IP can be jointly owned where more than one party has contributed to it

• Restrictions on what each joint-owner can do without the consent of the others


Dealing with ownership contractually

• Important to deal with ownership by contract

• Co-creator agrees to assign his rights in return for a reward

• Different forms of contracts

• Adequacy of reward

• When to contract


Mitigating the infringement risk

• Important that idea you incorporate doesn’t infringe third party IP or misuse confidential info

• Warranties from co-creator

• Clearance / FTO searches

• Cost etc. dealt with by agreement.


Developing an IP strategy

• What kinds of ideas do you want?

• What level of co-creator involvement?

• How quickly do you want to lock co-creator in?

• How will you deal with reward?

• How will you deal with infringement risks?


Key points to take away

• Approach should be proportional to the type of co-creation

• Be upfront about how you will deal with ownership of IP

• Forward plan to avoid problems down the line!

Any Questions?


Louisa DixonSolicitor Taylor Vinters 01223 225182 [email protected]

@T_VTechnology

taylor vinters: partner led, straight-talking, plain-speaking, to the point to the point....

Documents

design slide

complex slide

confidential knowhow

cocreation agenda slide

party ip

use of cocreators ip

cocreation ip issues

ip strategy