Intellectual Property

Dr Richard Gibbs (Marks & Clerk LLP)

Member of the Chartered Institute of Patent Attorneys Supporting logos to go in this

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IN ASSOCIATION WITH

What is IP? • Patents • products, apparatus, processes

• Trade marks • company name, logo, product name

• Designs • shape/ornamentation

• Copyright • software, drawings, operation manuals, website, marketing literature

• Know how and Confidential Information • new inventions, staff knowledge, manufacturing methods, products

Apple

How can it work for you?

Identifying IP • Patents – novel and inventive (industrially applicable/sufficiency)

• Trade mark – distinctive; graphical representation?

• Designs – novel with distinctive character

• Copyright – what’s left? The manifestation of an idea

What is a Patent? – A right granted by the Government

Novel Inventive Capable of Industrial application Not excluded by S1(2)(3) PA1977

• e=mc2 - Excluded

• Trigger for a landmine - Excluded • Amazon One Click Patent

– A monopoly for a limited period of time (usually up to 20 years)

– In exchange for public disclosure so that others are free to use your

invention once the monopoly term has expired – A negative right.

Where can I patent? • Anywhere that has a patent system

• Territorial – a UK patent will only protect in the UK

• Various conventions and treaties aim to ease routes to foreign

protection – Paris Convention – Patent Cooperation Treaty (PCT) – European Patent Convention (EPC)

Identifying, handling and securing IP • Capture – communication, invention disclosure procedures, incentives,

“dabble time”.

• Problems • Disclosures – confidentiality (Non disclosure agreement at:

http://www.ipo.gov.uk/p-cda.htm) • Ownership

• Research – market, product, state of the art (a professional matter)

• Professional advice

Ownership • Employers own IP…………sometimes

An invention made by an employee shall…….be taken to belong to his employer……..if…………. it was made in the course of the normal duties of the employee or….. duties specifically assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result …… or………. the invention was made in the course of the duties of the employee and, at the time of making the invention……..he had a special obligation to further the interests of the employer's undertaking. • Beware contracts that state otherwise

How to identify the inventor • Not like authorship

• "inventor" means the actual deviser of the invention • One must first identify the inventive concept and then determine who

devised that concept. • Applicant and inventor(s) may be the same or different • Company (Employer) = Applicant • 1 (or more) employee(s) = inventors

What should you protect? Adding Value • Does the patent protect the key product/process?

• Yes - primary focus Claims

“A support device with at least one ground engaging member”

“A wooden chair with 4 legs”

What is the breadth of the IP? • patent application covers the product – good but could be better

• Scope should be as large as the prior art permits

Choosing a Patent Attorney • Consider the technology • Select someone with the right background • Meet to discuss http://www.cipa.org.uk/pages/home https://www.cipa.org.uk/members/directory/default.asp?m=f&dir=1