ipo seminar slides
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Intellectual Property
Business Outreach & Education
@The_IPO
Intellectual Property Office
Executive Agency within Department of Business, Innovation
and Skills (BIS)
1000+ staff based in Newport in South Wales, 50 based in
Victoria, London
Our task is to help stimulate innovation and raise the
international competitiveness of British industry through
Intellectual Property Rights (IPR)
IP Baseline Survey
96% of UK businesses do not know the value of their Intellectual Property
Rights
Only 11% of UK businesses know that disclosure of an invention before
filing will invalidate a patent.
74% of UK businesses could not correctly identify the owner of copyright
when using a subcontractor
Only 4% of UK businesses have an Intellectual Property policy
What is intellectual property?
Intellectual Property
Patents
Trade
marks
Registered designs
CopyrightConfidentiality
Trade Secrets
Plant Varieties
Intellectual Property
Patents
Trade
marks
Registered designs
CopyrightConfidentiality
Trade Secrets
Plant Varieties
Trade marks
Smell
Colour theme Shape theme
Domain name Slogan
Name Logo
What is
registrable as a Trade Mark?
Non-traditional Music
What is a Registered Trade Mark?
Any sign which is capable
of being represented graphically
Any sign which is capable of
distinguishing the goods or services
of one undertaking from another
“A Badge of Origin”
Criteria for registration
•have become customary in your line of trade
•describe your goods or services or any characteristics of them
•are not distinctive
•are offensive
•are against the law
•are deceptive
We will not accept marks which:
Slogans as Registered
Trade Marks
Laudatory terminology, and words in
common usage in the class of goods in
question may not be registered as RTMs
Gillette ® , The Best a Man can Get TM
However, Mr Kipling ® since 1984, but
Exceedingly Good Cakes ® since 1994
Domain names
Trade Mark registration is not company name or domain name registration
A domain name may be
registered as a Trade Mark
Incorporating another’s RTM into your domain
name or meta-tag may be an infringement
Why infringement searches?
Avoid expensive mistakes
Awareness of competing marks
Early resolution of potential problems
UK Applications
Fees:
Application fees: £170 – Includes one Class
Additional Classes £50 each (up to 45 Classes)
Timeline:
Examination within 2 months of filing
Registration (unopposed) in 5 months
Unexpected marks
• Office of Government Commerce
• £14000 to create new logo
“not inappropriate for an organisation that’s looking to have a firm grip on government spend”
OGC Spokesperson
Trade Mark Registration Overseas
Paris Convention - six months priority
OHIM – Community Trade Mark
e-filing fee €900
WIPO - Madrid Protocol
unregistered Trade Marks
A lot of evidence must be presented,
including proof of established reputation,
confusion for consumers, and harm done
If an unregistered TM is infringed,
attack with a ‘Passing Off’ action
Intellectual Property
Patents
Trade
marks
Registered designs
CopyrightConfidentiality
Trade Secrets
Plant Varieties
Copyright
True or False
If it doesn’t have a copyright notice, it’s not protected
I can copy 10% without it being an infringement
If I acknowledge the original work, I can use it
I have bought the book/painting/photograph so I can use
it as I wish
Copyright Conventions
Berne Convention:
Universal Copyright Convention:
Trade-Related Aspects of Intellectual
Property Rights (TRIPS):
1.Literary Works – All works expressed in print or writing.
2.Dramatic Works – A work capable of being performed.
3.Musical Works – includes melody, harmony and rhythm.
4.Artistic Works – irrespective of artistic quality. Includes
works of artistic craftsmanship.
Copyright
5.Films – Moving images produced by any means.
6.Sound Recordings – a recording of sounds, from which the
sounds can be reproduced.
8.Published Editions – typographical arrangements.
7.Broadcasts – transmission of visual images, sounds or
other information.
What Copyright protects
Books, technical reports, manuals, databases
Engineering, technical or architectural plans
Paintings, sculptures, photographs
Music, songs, plays, dramatic works
Promotional literature, advertising
Films, videos, cable or radio broadcasts
Computer software & websites
What Copyright does not protect
Works in the public domain
- For example if the copyright has expired
Expression over ideas – copyright protects
the expression of an idea, not the idea itself
Copyright Exceptions – covered later
Single words & Titles or Fact
How long does Copyright last?
Literary, musical, artistic & dramatic works:author’s lifetime plus 70 years
TV & radio broadcasts: 50 years from first broadcastSound recordings: 70 years from first publication
Published editions(typographical layout):
25 years from first publication
Films: 70 years after the death of the last of:director, composer of any music specifically created
for the film, the author of the screenplay and the scriptwriter
Uploading a work which is out of copyright to the internet may
create new copyright so don't assume it is copyright-free if you
want to use it.
Who owns Copyright?
Usually the first creator or author...
…or their employer if produced in the
ordinary course of their employment
However, a contractor will retain ownership
unless their contract is explicit to the contrary
Even if the creator sells their rights, they have
‘moral rights’ over how their work is used
If there is more than one author?
Where two or more people have created a single work and the
contribution of each person is not distinct from the others.
A recording of a song will have several contributors: performers,
composers, writers, sound producers. The same may be true
with computer programmes created by a team.
Where there is more than one rights holder, all must give
permission before the work can be used, including performance.
If any of the rights holders cannot be traced, the work may not
be usable.
Primary Infringement
Any of the following without the
consent of the rights owner
Copying / Reproducing Adaptation
Distributing Lending or renting
Public performance
IGNORANCE IS NO DEFENCE
Communication to the public
Making available
Secondary Infringement
Any of the following without the
consent of the rights owner
Selling Importing
Possession for business purposes
Facilitating primary infringement
Only guilty if done knowingly,
or if you ought to have known
‘Exceptions’- permitted actsThere are a number of limited exceptions to
copyright, which allow works to be used without
the permission of the copyright owner.
Exceptions exist for the following purposes:
Private study Research
News reporting
Criticism / reviews
Some official reports
Education, libraries
‘Time-shifting’ of broadcasts
Incidental inclusion
Visual impairment
Collecting Societies
PRS for MusicPhonographic Performance Limited (PPL)
Video Performance Limited (VPL)Authors’ Licensing and Collecting Society (ALCS)
Copyright Licensing Agency (CLA)Newspaper Licensing Agency (NLA)
The Design and Artists Copyright Society (DACS)The Artists’ Collecting Society (ACS)
License copyright on behalf or rights holders in exchange for a feeAround 17 collecting societies in the UK, including:
The Copyright Tribunal - adjudicates on
reasonableness of collecting society licences
Copyright for Business
Mark work with the international copyright symbol
©
Electronic fingerprints
Look at licensing and assignment opportunities
Regularly review contracts (business and employees)
Record the work in some way
Intellectual Property
Patents
Trade
marks
Registered designs
CopyrightConfidentiality
Trade Secrets
Plant Varieties
Registered designs
Registered Designs
Protects shape or configuration (3-D)and/or pattern or ornamentation (2-D)
No protection for function, materialsor technology of manufacture
No protection when form is dictatedby function (ie: no design freedom)
Technical Function/Must Fit – Must Match
Multiple Applications
£60 for first design (£40 application + £20 publication)
£40 for subsequent designs (£20 application + £20 publication
Renewal fees every 5 yearsMaximum term 25 years
Registration Overseas
Paris Convention – 6 Months
OHIM - Community Design
Hague Agreement (1/1/2008)
Intellectual Property
Patents
Trade
marks
Registered designs
CopyrightConfidentiality
Trade Secrets
Plant Varieties
Patents
Criteria for ‘patentability’
Patents are for “technological innovation”, though the
Patents Act 1977 fails to define the word “invention”
Inventions must be new - not known
anywhere in the world prior to the filing date
Inventions must have an ‘inventive step’ - not
obvious, a simple adaptation or combination
Inventions must be industrially applicable
and have a ‘technical effect’
Patent fees
Application fee – £30 or £20 (Electronic filing)
Search Fee - £150 or £130 (Electronic filing)
Examination fee - £100 or £80 (Electronic filing)
Renewals
5th Year - £70
10th Year - £170
20th Year - £600
Obtaining Patent Protection Abroad
Separate national filings
Patent Co-operation Treaty
(PCT)
European Patent Convention
(EPC)
Using Patent Information
Use of patent information is totally separate from obtaining & enforcing legal rights through patents
Patent information can solve problems and provide new insights
Avoid reinventing the wheel: 30% of European
R&D is wasted on technology already in patents
Enables you to keep track of your competitors
Mediation
IPEC
Enforcement
CIPA
ITMA
Law Society
Who?How?
It’s your responsibility to defend your IP and to take action if someone’s used it without permission.
IP Insurance
• Before The Event Legal Expenses Insurance (BTE LEI)
• - Affordable
• - Access to Enforcement
• - Deterrent
• - Links to related issues (online or loss of revenue)
• - Protects cash flow
List of insurers:
http://www.cipa.org.uk/need-advice/insurance-for-intellectual-property/
or
http://www.itma.org.uk/membership/resources/publications/ip_litigation_insurance
More info:
https://www.gov.uk/guidance/intellectual-property-insurance
Registered Design
Copyright: labels & artwork
® Registered Trade Mark
‘TM’ unregistered
Patents: several dozen!
Bringing it all together
