© murgitroyd & company 2011 an introduction to intellectual property angela king european...

© Murgitroyd & Company 2011

An Introduction to Intellectual Property

Angela King European Patent AttorneyEuropean Design Attorney

Newcastle University October 2013


What is IP?What is IP?What is IP?What is IP?

Examples of IP in IndustryExamples of IP in IndustryExamples of IP in IndustryExamples of IP in Industry

Ethics of Patents and Other Monopoly RightsEthics of Patents and Other Monopoly RightsEthics of Patents and Other Monopoly RightsEthics of Patents and Other Monopoly Rights

Talk OutlineTalk Outline

Commercialising your IPCommercialising your IPCommercialising your IPCommercialising your IP


PatentsPatentsPatentsPatents

Trade MarksTrade MarksTrade MarksTrade Marks

DesignsDesignsDesignsDesigns

CopyrightCopyrightCopyrightCopyright

Confidential InformationConfidential InformationConfidential InformationConfidential Information

Intellectual PropertyIntellectual Property


I.P. RightsI.P. RightsI.P. RightsI.P. Rights

Very important in competitive Very important in competitive marketplacemarketplaceVery important in competitive Very important in competitive marketplacemarketplace

Reward research and development and Reward research and development and prevent unauthorised exploitation of your rightsprevent unauthorised exploitation of your rightsReward research and development and Reward research and development and prevent unauthorised exploitation of your rightsprevent unauthorised exploitation of your rights

Is the road clear? - Even if you do not Is the road clear? - Even if you do not want to assert your own rights, you want to assert your own rights, you can still be in danger of infringing can still be in danger of infringing somebody else'ssomebody else's

Is the road clear? - Even if you do not Is the road clear? - Even if you do not want to assert your own rights, you want to assert your own rights, you can still be in danger of infringing can still be in danger of infringing somebody else'ssomebody else's


Best return for expenditureBest return for expenditureBest return for expenditureBest return for expenditure

Monopoly in marketplaceMonopoly in marketplaceMonopoly in marketplaceMonopoly in marketplace

Barriers to entry for competitionBarriers to entry for competitionBarriers to entry for competitionBarriers to entry for competition

Why Secure IP RightsWhy Secure IP RightsWhy Secure IP RightsWhy Secure IP Rights







Intellectual PropertyIntellectual PropertyIntellectual PropertyIntellectual Property


Patents - GeneralPatents - GeneralPatents - GeneralPatents - General

A state granted monopoly - lasts up to 20 yearsA state granted monopoly - lasts up to 20 yearsA state granted monopoly - lasts up to 20 yearsA state granted monopoly - lasts up to 20 years

Prevents unauthorised exploitation of Prevents unauthorised exploitation of ideas or inventionsideas or inventionsPrevents unauthorised exploitation of Prevents unauthorised exploitation of ideas or inventionsideas or inventions

Rewards and encourages research and innovationRewards and encourages research and innovationRewards and encourages research and innovationRewards and encourages research and innovation

Patents granted for ideas and Patents granted for ideas and inventionsinventionsPatents granted for ideas and Patents granted for ideas and inventionsinventions


Not an obvious solution to the Not an obvious solution to the problem the invention problem the invention overcomesovercomes

Not an obvious solution to the Not an obvious solution to the problem the invention problem the invention overcomesovercomes

Strict RequirementsStrict RequirementsStrict RequirementsStrict Requirements

Absolute Novelty - No prior Absolute Novelty - No prior public disclosurepublic disclosureAbsolute Novelty - No prior Absolute Novelty - No prior public disclosurepublic disclosure

Application is examined by the Patent Application is examined by the Patent OfficeOfficeApplication is examined by the Patent Application is examined by the Patent OfficeOffice

Patents are not granted merely by Patents are not granted merely by filing an Applicationfiling an ApplicationPatents are not granted merely by Patents are not granted merely by filing an Applicationfiling an Application

Patents - GeneralPatents - GeneralPatents - GeneralPatents - General


Granted patent - defines Granted patent - defines scope of enforceable scope of enforceable protectionprotection

Granted patent - defines Granted patent - defines scope of enforceable scope of enforceable protectionprotection

ClaimsClaimsClaimsClaims

Application stage - sets out Application stage - sets out scope of protection soughtscope of protection soughtApplication stage - sets out Application stage - sets out scope of protection soughtscope of protection sought

SpecificationSpecificationSpecificationSpecification

Application ContainsApplication ContainsApplication ContainsApplication Contains

Describes the invention Describes the invention sufficiently to enable the sufficiently to enable the invention to be practised by a invention to be practised by a person skilled in the artperson skilled in the art

Describes the invention Describes the invention sufficiently to enable the sufficiently to enable the invention to be practised by a invention to be practised by a person skilled in the artperson skilled in the art


Action Required by AgentsDraft description of theinvention and file at thePatent Office

Add Abstracts, Claims and FormalDrawings to the Application (or file anew complete application claimingpriority from original application).Pay the search fee and completeother formalities.

Advise on the significance of anyPrior Art cited in the Search Report

Pay SubstantiveExamination Fee

Analyse Examination Reportand attempt to overcome anyobjections by argumentand/or amendment of theapplication.

Deal with any furtherofficial objections.

File anycorresponding

foreignapplications

12 Months

4 Months

2 Months

6 Months

2 yrs 6 mths to 4 yrs

18 Months

12 Months

10 Months

Grant Formalities

Further OfficialActionsIssued

First OfficialActionIssued

RequestSubstantiveExamination

Applicationpublished

byPatent Office

Receive SearchReport fromPatent Office

Continuationof UK

Application

File UKApplication

Typical Timescale for a National UK Patent ApplicationTypical Timescale for a National UK Patent Application


International Patent Application ProcedureInternational Patent Application ProcedureInternational Patent Application ProcedureInternational Patent Application Procedure

GrantedEuropean

Patent

Granted National Applications

12 Months 12 Months

File IndividualOverseas Applications

File IndividualOverseas Application

File EuropeanApplication

File InternationalPCT Application

File EuropeanApplication

File UKApplication



Trade Marks are used to distinguish Trade Marks are used to distinguish products and servicesproducts and servicesTrade Marks are used to distinguish Trade Marks are used to distinguish products and servicesproducts and services

Trade Mark can be:Trade Mark can be:Trade Mark can be:Trade Mark can be:WordWordWordWord

LogoLogoLogoLogo

Any sign which is capable of Any sign which is capable of distinguishing the goods and services distinguishing the goods and services of one trader from those of anotherof one trader from those of another

Any sign which is capable of Any sign which is capable of distinguishing the goods and services distinguishing the goods and services of one trader from those of anotherof one trader from those of another

SoundSoundSoundSound

SmellSmellSmellSmell



Adds value to a company – Adds value to a company – Guinness 2 Guinness 2 Billion Euro Billion Euro

Coca-Cola Interbrand Value $79.1 Billion (61.3 Coca-Cola Interbrand Value $79.1 Billion (61.3 Euro) Euro)

Adds value to a company – Adds value to a company – Guinness 2 Guinness 2 Billion Euro Billion Euro

Coca-Cola Interbrand Value $79.1 Billion (61.3 Coca-Cola Interbrand Value $79.1 Billion (61.3 Euro) Euro) A good Trade Mark will be:A good Trade Mark will be:A good Trade Mark will be:A good Trade Mark will be:

DistinctiveDistinctiveDistinctiveDistinctive

Not Descriptive of ProductNot Descriptive of ProductNot Descriptive of ProductNot Descriptive of Product

Serves to establish goodwill and Serves to establish goodwill and reputation in a product or servicereputation in a product or serviceServes to establish goodwill and Serves to establish goodwill and reputation in a product or servicereputation in a product or service


Some Well Known Trade MarksSome Well Known Trade MarksSome Well Known Trade MarksSome Well Known Trade Marks


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 (notsurface decoration)© Max 15 years

Apple iPad Samsung Galaxy Tab



CopyrightCopyright

Automatically exists in original Automatically exists in original literary worksliterary worksAutomatically exists in original Automatically exists in original literary worksliterary works

Copyright can exist in:Copyright can exist in:Copyright can exist in:Copyright can exist in:

Sound RecordingsSound Recordings 50 50 yearsyearsSound RecordingsSound Recordings 50 50 yearsyears

Literary WorksLiterary Works life + 70 life + 70 yearsyearsLiterary WorksLiterary Works life + 70 life + 70 yearsyearsMusical NotationMusical Notation life + 70 life + 70 yearsyearsMusical NotationMusical Notation life + 70 life + 70 yearsyearsGraphic WorksGraphic Works life + 70 life + 70 yearsyearsGraphic WorksGraphic Works life + 70 life + 70 yearsyears

PhotographsPhotographs life + life + 70 years70 yearsPhotographsPhotographs life + life + 70 years70 years


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)




Ethics of Patents and Ethics of Patents and Other Monopoly RightsOther Monopoly RightsEthics of Patents and Ethics of Patents and Other Monopoly RightsOther Monopoly Rights




I.P. in I.P. in Action:Action:

First Product on marketFirst Product on marketFirst Product on marketFirst Product on market

““Dual Cyclone” Bagless SystemDual Cyclone” Bagless System

Patents ObtainedPatents Obtained

Patent Expired - June 2001Patent Expired - June 2001at end of 20 year termat end of 20 year term


I.P. in Action:I.P. in Action:

New Product DevelopedNew Product DevelopedNew Product DevelopedNew Product Developed

Improvement on existing technologyImprovement on existing technologyImprovement on existing technologyImprovement on existing technology

Patents filed to secure 20 year Patents filed to secure 20 year monopoly termmonopoly termPatents filed to secure 20 year Patents filed to secure 20 year monopoly termmonopoly term

Product now lead product in rangeProduct now lead product in rangeProduct now lead product in rangeProduct now lead product in range

Much higher cost than original productMuch higher cost than original productMuch higher cost than original productMuch higher cost than original product


Confidentiality - Success StoriesConfidentiality - Success Stories

© The Coca-Cola Company© The Drambuie Liqueur Company


Trade Trade MarkMark

I.P. in ActionI.P. in ActionI.P. in ActionI.P. in Action

© Apple © Apple ComputersComputers

Designs - Shape of productDesigns - Shape of product

Patent protection Patent protection

Copyright - Software Copyright - Software


I.P. in Action: ZOVIRAXI.P. in Action: ZOVIRAX

Antiviral Treatment for cold sores launched in 1981Antiviral Treatment for cold sores launched in 1981Antiviral Treatment for cold sores launched in 1981Antiviral Treatment for cold sores launched in 1981

Launched as an over-the-counter brandLaunched as an over-the-counter brandLaunched as an over-the-counter brandLaunched as an over-the-counter brand

Now market leader in EuropeNow market leader in EuropeNow market leader in EuropeNow market leader in Europe

Patent protection - Acyclovir - Expired 1997Patent protection - Acyclovir - Expired 1997Patent protection - Acyclovir - Expired 1997Patent protection - Acyclovir - Expired 1997

Trade Mark - ZoviraxTrade Mark - ZoviraxTrade Mark - ZoviraxTrade Mark - Zovirax

Designs - Shape of containerDesigns - Shape of containerDesigns - Shape of containerDesigns - Shape of container

Generics entered marketGenerics entered marketGenerics entered marketGenerics entered market


Exploiting Your IPExploiting Your IPExploiting Your IPExploiting Your IP

Keep idea confidential - a Patent Application can only be filed if the invention is new and has not been publicly disclosed

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 adviceConsult with Research & Innovation service within University for commercialisation advice


Spin Out CompaniesSpin Out Companies

I.P. initially owned by UniversityI.P. initially owned by University

Agreements very important in this situationAgreements very important in this situation

Commercialisation of technology by a separate companyCommercialisation of technology by a separate company

Often ownership of I.P. may or may not be assigned to spin outOften ownership of I.P. may or may not be assigned to spin out


The Ethical The Ethical DebateDebateThe Ethical The Ethical DebateDebate

Many current “ethical debates” in relation to patentsMany current “ethical debates” in relation to patentsMany current “ethical debates” in relation to patentsMany current “ethical debates” in relation to patents

The grant of a Patent The grant of a Patent does notdoes not give any positive give any positive right to use an inventionright to use an inventionThe grant of a Patent The grant of a Patent does notdoes not give any positive give any positive right to use an inventionright to use an invention


Ethics - Case 1Ethics - Case 1Ethics - Case 1Ethics - Case 1

Information free for all to use and modifyInformation free for all to use and modifyInformation free for all to use and modifyInformation free for all to use and modify

Opposition to monopoly rightsOpposition to monopoly rightsOpposition to monopoly rightsOpposition to monopoly rights

Alternative - So called “copyleft” or “freeware”Alternative - So called “copyleft” or “freeware”Alternative - So called “copyleft” or “freeware”Alternative - So called “copyleft” or “freeware”

Example - Linux computer operating systemExample - Linux computer operating systemExample - Linux computer operating systemExample - Linux computer operating system



““Open source licensing”Open source licensing”““Open source licensing”Open source licensing”

Open Cola - www.opencola.comOpen Cola - www.opencola.comOpen Cola - www.opencola.comOpen Cola - www.opencola.com

Recipe provided to consumersRecipe provided to consumersRecipe provided to consumersRecipe provided to consumers

Improvements to recipe made freelyImprovements to recipe made freelyavailable to othersavailable to othersImprovements to recipe made freelyImprovements to recipe made freelyavailable to othersavailable to others

Current recipe available on WikipediaCurrent recipe available on WikipediaCurrent recipe available on WikipediaCurrent recipe available on Wikipedia



Free Circulation of IdeasFree Circulation of IdeasFree Circulation of IdeasFree Circulation of Ideas

Debate relates to “Knowledge Ownership”Debate relates to “Knowledge Ownership”Debate relates to “Knowledge Ownership”Debate relates to “Knowledge Ownership”

Against protecting ideasAgainst protecting ideasas Intellectual Propertyas Intellectual PropertyAgainst protecting ideasAgainst protecting ideasas Intellectual Propertyas Intellectual Property

Standard Licence Agreement termed “Copyleft” Standard Licence Agreement termed “Copyleft” allows free use of materialallows free use of materialStandard Licence Agreement termed “Copyleft” Standard Licence Agreement termed “Copyleft” allows free use of materialallows free use of material

GNU Public Licence GNU Public Licence - Allows freedom to share and change- Allows freedom to share and changeGNU Public Licence GNU Public Licence - Allows freedom to share and change- Allows freedom to share and change



United States - government considered United States - government considered intervention to the Patent held by Bayer to the intervention to the Patent held by Bayer to the Anthrax treatment drug Ciprofloxacin (Cipro)Anthrax treatment drug Ciprofloxacin (Cipro)

United States - government considered United States - government considered intervention to the Patent held by Bayer to the intervention to the Patent held by Bayer to the Anthrax treatment drug Ciprofloxacin (Cipro)Anthrax treatment drug Ciprofloxacin (Cipro)



If US government authorised this manufacture, If US government authorised this manufacture, Cipro would effectively be deemed to be “off Cipro would effectively be deemed to be “off patent” to allow widespread production and patent” to allow widespread production and increased availability of generic form of drugincreased availability of generic form of drug

If US government authorised this manufacture, If US government authorised this manufacture, Cipro would effectively be deemed to be “off Cipro would effectively be deemed to be “off patent” to allow widespread production and patent” to allow widespread production and increased availability of generic form of drugincreased availability of generic form of drug

5 further US companies had FDA approved generic 5 further US companies had FDA approved generic Cipro products, but were precluded from Cipro products, but were precluded from manufacture by the Bayer patentmanufacture by the Bayer patent

5 further US companies had FDA approved generic 5 further US companies had FDA approved generic Cipro products, but were precluded from Cipro products, but were precluded from manufacture by the Bayer patentmanufacture by the Bayer patent


Allegations that US government put patents before Allegations that US government put patents before public health public health Allegations that US government put patents before Allegations that US government put patents before public health public health


Unlike in Canada, US government decided to Unlike in Canada, US government decided to maintain status quo of patentmaintain status quo of patentUnlike in Canada, US government decided to Unlike in Canada, US government decided to maintain status quo of patentmaintain status quo of patent

Apotex manufactured Cipro for Canadian Apotex manufactured Cipro for Canadian government at 63c a pill (Bayer price $1.25)government at 63c a pill (Bayer price $1.25)Apotex manufactured Cipro for Canadian Apotex manufactured Cipro for Canadian government at 63c a pill (Bayer price $1.25)government at 63c a pill (Bayer price $1.25)



South Africa - 40 of the world’s largest drug South Africa - 40 of the world’s largest drug companies sued the South African government to companies sued the South African government to prevent attempts to reduce the cost of AIDS drugs prevent attempts to reduce the cost of AIDS drugs by up to 90 percentby up to 90 percent

South Africa - 40 of the world’s largest drug South Africa - 40 of the world’s largest drug companies sued the South African government to companies sued the South African government to prevent attempts to reduce the cost of AIDS drugs prevent attempts to reduce the cost of AIDS drugs by up to 90 percentby up to 90 percent

Pharmaceutical Manufacturers’ AssociationPharmaceutical Manufacturers’ Associationdropped this action in 2001 bowing to mountingdropped this action in 2001 bowing to mountingpublic pressurepublic pressure

Pharmaceutical Manufacturers’ AssociationPharmaceutical Manufacturers’ Associationdropped this action in 2001 bowing to mountingdropped this action in 2001 bowing to mountingpublic pressurepublic pressure



In Brazil generic retroviral drugs have been In Brazil generic retroviral drugs have been supplied free of charge by the Brazilian supplied free of charge by the Brazilian government to 105,000 people government to 105,000 people

In Brazil generic retroviral drugs have been In Brazil generic retroviral drugs have been supplied free of charge by the Brazilian supplied free of charge by the Brazilian government to 105,000 people government to 105,000 people

Generic forms of retroviral drugs AZT, 3TC and Generic forms of retroviral drugs AZT, 3TC and Nevirapine lower treatment costs per day from Nevirapine lower treatment costs per day from $3.20 to $1.55 $3.20 to $1.55

Generic forms of retroviral drugs AZT, 3TC and Generic forms of retroviral drugs AZT, 3TC and Nevirapine lower treatment costs per day from Nevirapine lower treatment costs per day from $3.20 to $1.55 $3.20 to $1.55


Illustrates point that grant of a patent does not Illustrates point that grant of a patent does not automatically confer “right of use” of invention automatically confer “right of use” of invention Illustrates point that grant of a patent does not Illustrates point that grant of a patent does not automatically confer “right of use” of invention automatically confer “right of use” of invention


Various Patents granted for Genetically modified Various Patents granted for Genetically modified organisms (GMO’s)organisms (GMO’s)Various Patents granted for Genetically modified Various Patents granted for Genetically modified organisms (GMO’s)organisms (GMO’s)

GM crops can’t however be planted unless GM crops can’t however be planted unless consented to by national lawconsented to by national lawGM crops can’t however be planted unless GM crops can’t however be planted unless consented to by national lawconsented to by national law


The purpose of Patent law is not to impose The purpose of Patent law is not to impose restrictions or prohibitions on the requirements of restrictions or prohibitions on the requirements of public health, or compliance with certain ethical public health, or compliance with certain ethical standards standards

The purpose of Patent law is not to impose The purpose of Patent law is not to impose restrictions or prohibitions on the requirements of restrictions or prohibitions on the requirements of public health, or compliance with certain ethical public health, or compliance with certain ethical standards standards


Patents directed to methods of nuclear transfer Patents directed to methods of nuclear transfer and cloningand cloningPatents directed to methods of nuclear transfer Patents directed to methods of nuclear transfer and cloningand cloning

““Gene Patenting”Gene Patenting”““Gene Patenting”Gene Patenting”


Dolly - the world’s first cloned adult animal Dolly - the world’s first cloned adult animal Dolly - the world’s first cloned adult animal Dolly - the world’s first cloned adult animal


And now….And now….And now….And now….


Born Texas, USA, December 2001Born Texas, USA, December 2001Born Texas, USA, December 2001Born Texas, USA, December 2001


““C.C.” - Copycat the world’s first cloned catC.C.” - Copycat the world’s first cloned cat““C.C.” - Copycat the world’s first cloned catC.C.” - Copycat the world’s first cloned cat



Exclusions do exist as to the patentability of:Exclusions do exist as to the patentability of:Exclusions do exist as to the patentability of:Exclusions do exist as to the patentability of:

Modifying genetic identity of animals - if Modifying genetic identity of animals - if it will cause them suffering - without it will cause them suffering - without substantial benefit to mansubstantial benefit to man

Modifying genetic identity of animals - if Modifying genetic identity of animals - if it will cause them suffering - without it will cause them suffering - without substantial benefit to mansubstantial benefit to man

Processes for cloning human beingsProcesses for cloning human beingsProcesses for cloning human beingsProcesses for cloning human beings

Modifying germ line identity of humansModifying germ line identity of humansModifying germ line identity of humansModifying germ line identity of humans



Again illustrates that the grant of a patent is not Again illustrates that the grant of a patent is not indicative as to whether the use of a technology is indicative as to whether the use of a technology is permissiblepermissible

Again illustrates that the grant of a patent is not Again illustrates that the grant of a patent is not indicative as to whether the use of a technology is indicative as to whether the use of a technology is permissiblepermissible


Incentives to develop new products Incentives to develop new products Incentives to develop new products Incentives to develop new products

In spite of these, the following In spite of these, the following arguments stand strong in the case arguments stand strong in the case for patentingfor patenting

In spite of these, the following In spite of these, the following arguments stand strong in the case arguments stand strong in the case for patentingfor patenting

Encourages and rewards investment in research Encourages and rewards investment in research and innovationand innovationEncourages and rewards investment in research Encourages and rewards investment in research and innovationand innovation

Publication of subject matter leads to Publication of subject matter leads to dissemination of informationdissemination of informationPublication of subject matter leads to Publication of subject matter leads to dissemination of informationdissemination of information


Contact

[email protected]

Murgitroyd & CompanyEnterprise HouseInnovation Way

HeslingtonYork

YO10 5NQ

Tel: 01904 898 881 Fax: 01904 898 882

© murgitroyd & company 2011 an introduction to intellectual property angela king european...

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