developing an ip strategy

Jane LambertBarrister

Batley Business Park, Thursday, 11 Oct 2007

How IP can help these three young entrepreneurs

Developing an IP Strategy

Options for legal protection:

• Law of confidence

• Design Rights

• Patents

• Trade Marks

• Passing off and unfair competition

Advantages:• Arises automatically• Costs nothing to

acquire• Potentially unlimited

term of protection• No need to publish

invention • Worldwide reach

Disadvantages• Protection ceases

when secret is in public domain

• Vulnerable to reverse engineering and industry-wide progress

• Not easy to enforce

Law of Confidence

Advantages:

• Unregistered rights arise automatically and cost nothing to acquire

• Registered designs easy to acquire in EU

• Grace period for registration in Europe

• Easy to enforce registered designs

Disadvantages

• Protect appearance but not technology

• Need to prove copying in the case of unregistered rights

• Registered rights vulnerable to challenge

• Not so easy to enforce unregistered ones

Design Rights

Advantages:• Confer monopoly of a

product or process for up to 20 years

• Harmonization of patent law throughout Europe and to some extent the world

• Relatively easy to enforce

Disadvantages• Difficult to acquire

and expensive to maintain and enforce

• Duty to disclose invention to the world

• Vulnerable to revocation and circumvention

Patents

Advantages:• Confers potentially

unlimited monopoly of a sign capable of distinguishing one supplier’s goods or services from all others’

• Harmonization of trade marks law throughout Europe and to some extent the world

• Relatively easy to enforce

Disadvantages• Protects only brands

and not designs or technology

• Limited to the country or countries of registration

• Vulnerable to revocation and invalidity

Trade Marks

Advantages:• Comes into being

automatically when circumstances arise

• Protects signs that cannot be registered as trade marks

• Worldwide reach

Disadvantages• Protects only

established businesses

• Difficult and sometimes expensive to enforce

Passing off or Unfair Competition

Options for Legal Protection

• Trade Mark Registration

• Design Registration

• Unregistered design rights

• Copyright

• Passing off

• Trade marks for brand

• Artistic copyright and perhaps design registration for website design

• Confidentiality for source code, customer data, know-how, show-how

• Database right for databases

• Literary copyright for programs

Developing an IP Strategy

• Patents cost money

• Most patents never worked

• Few patents cover their costs

• Even fewer make money for their owners

• Pointless unless they can be enforced by legal action

So why bother?

• Looks good on the CV?• Peer group pressure?• Condition of public funding?• Condition for securing investment?• Need the monopoly to secure a return on

investment?Only the last is a good reason for

incurring the expense of applying for and maintaining a patent

• Intellectual assets such as brands, designs, inventions and creative works should exist for business – not the other way round

• Such assets confer competitive advantage• Intellectual property entrenches that

advantage• Intellectual property is worthless unless it

can be enforced by legal action• Resources are not unlimitedNeed to prioritize

• What are the company’s competitive advantages?

• What are the main threats to those advantages?

• What legal protection is available for those competitive advantages?

• How can such protection be enforced?

• Criminal liability for piracy and counterfeiting

• Collecting societies for certain types of copyright, rights in performances and other rights

• Civil litigation

• IP protection should be tailored to company’s needs and resources

• Main markets should be covered first

• Main risks in each market should be addressed

• Insurance should be taken out to fund enforcement

• Patent protection in Europe, Japan, USA, China and Korea in that order for Brenda

• Community trade marks and design registration for Harry

• No registered right protection would be cost effective for Wally

IP Insurance should be sought for all of them

Developing an IP Strategy

• Legislation - consolidated patents, designs, trade marks, copyright statutes UK-IPO website

• Legislation - consolidated patents, designs, trade marks rules and other secondary legislation UK-IPO website

• Legislation – European Patent Convention protocols, and implementing regulations EPO website

• Legislation - Community Trade Marks and Designs Regulations OHIM website

• Case Law – transcripts of judgments of European Court of Justice and all UK and Irish courts BAILII website

• Case Law – transcripts of decisions of UK-IPO hearing officers UK-IPO website

• Case Law – transcripts of decisions of EPO boards of appeal EPO website

• Case Law – transcripts of decisions of OHIM boards of appeal OHIM website

• Treaties and Conventions – Paris, Berne, Rome, PCT and Madrid Protocols WIPO website

• Treaties and Conventions – TRIPs and other WTO agreements WTO website

• Domain Names – UDRP and other legal instruments ICANN website

• Domain Names – transcripts of gTLD decisions WIPO website

• Domain Names – DRS Policy and transcripts of .uk ccTLD decisions Nominet website

• Prior Art: esp@cenet – searchable patents database accessible through UK-IPO website

• Trade Marks: searchable database of UK, Community and international registrations UK-IPO website

• Designs: searchable database of UK registrations UK-IPO website

• Designs: searchable database of Community designs OHIM website

• Searches: Patent Libraries at Leeds, Sheffield and Manchester Central Libraries

• Trade Mark and Design Searches: UK – IPO (£80 + VAT for trade marks and c£350 + VAT for designs)

• Individual Patent and Trade Mark Agents: fees vary from firm to firm and search to search

• Inventors Clubs: Leeds, Sheffield, Manchester and Liverpool Central Libraries

• Patent Clinics: Leeds, Sheffield, Manchester and Liverpool Central Libraries

• IP Clinics: Bradford, Halifax and Huddersfield at Velocity, Gumption, Elsie Whitely and Media Centres nipc®

Developing an IP Strategy

Horses for Courses

• Patent Counsel: advice on difficult points of law, complex drafting and representation before Patents Court, Patents County Court, IP Lists of Chancery Division and Leeds, Manchester, Liverpool, Newcastle, Birmingham, Bristol, Cardiff and Central London County Courts, UK-IPO, EPO, arbitrators, mediators and other tribunals

• Patent Agents: applications for patents, trade marks, designs, general advice on IP and technology law, drafting and representation before hearing officers in routine cases

• Trade Mark Agents: applications for trade marks and designs, general advice on IP and technology law, drafting and representation before hearing officers in routine cases

• IP Solicitors: Manage clients’ legal affairs including conducting litigation, negotiating and drafting licence agreements, assignments and other instruments and representation before judges in chambers, masters, district judges and in some cases trial judges and appellate tribunals

• Each profession has its own strengths and limitations as do individual members of those professions

• Bmedi@ panel of professional advisors

Media Centre, 7 Northumberland Street, Huddersfield, HD1 1RL

T 0870 990 5081 F 0870 990 5082 E jane.lambert@nipclaw.com