pitching your idea and understanding your ip position workshop - 14 feb 2014
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Presentation from the Pitching your idea and understanding your IP Position workshop event that took place on 14 February 2014TRANSCRIPT
Connecting people, creating opportunities
Pitching your idea and understanding your IP Position workshop
Marks & Clerk LLP, Manchester
14th February 201410:00 – 16:00
Connecting people, creating opportunities
Pitching session
10:30: Welcome – Sam Winder, Business Growth Hub
10:35: Know your audience – David Smith, AXM Venture Capital Ltd
10:50: Expert Training Session: Pitching to the Panel – John Owens, Instruct
11:50: Sam Winder, Business Growth Hub
11:55: Pitches
Connecting people, creating opportunities
Intellectual Property Session
13:05: Sam Winder, Business Growth Hub
13:30: Expert session: Understanding the value of your IP: Jorandi Daneel, Trademark attorney, Marks & Clerk Mike Williams, Software specialist patent attorney, Marks & Clerks
14:30: Interactive session
15:00: Close
Connecting people, creating opportunities
Welcome
Sam Winder
Business Growth Hub
Launchpad 14 February 2014
North West Fund 4 Digital & Creative
The Team - AXM Venture Capital
The Team has significant experience in investing and managing digital, media and creative investments.
Investment Managers
Fred Mendelsohn
David Smith
JoanneEvans
Investment Committee
John Handley
Simon Levene
Ian Livingstone
Shawn Luetchens
Rupert Wingate-Saul
NWF4D&C invests in digital, media and creative businesses in the North West region
Example sub-sectors:
• Online Publishing• Advertising and Marketing Services • Music Distribution • Video Content• Gaming • Software and IT Services • Social Media • Social Commerce • Apps Development• Consumer Data Analytics• Convergent Technologies • Hardware • Telecoms
We are one of the most active tech investors in the UK
• To date we have invested £7m in 25 companies though a series of initial and follow-on investments
"Of the venture capital investors making [technology] investments, the busiest have been… the North West Fund” – Financial Times
Our initial investments range from £50,000 to £1.5m
Know your audience
• Trade or financial investor, angel or institutional, debt or equity, specialist or generalist, debt or equity
• Anticipate their respective questions• Have questions of your own – about respective level of non-financial
support, for example, or costs and timeframes• Need to understand :
• Their level of understanding of your proposition; pitch at a sympathetic but not patronising level
• Their process and what they want out of your initial pitch• What attributes are they looking for – risk / return balance, income or capital
gain, length of investment and exit….and what can you realistically flex to suit their needs
• Confusingly, investors all work in their own specific ways!
• Provides high growth businesses with finance
• In return for an equity stake
VC finance
Founders equity
Founders equity
VC equity
Returns come in the long-term, usually from the sale of the company
Venture Capital
Venture Capitalists look for…
Strong management
team
Strong commercial
model
Potential exit identified
A business plan which meets these criteria will attract an investor’s attention
“It’s more than just the money…”
Leverage additional finance
Enabling further rounds
Refining and developing the business model
Business expertise
Introductions
Endorsement and credibility
Discipline, corporate governance and
process
Portfolio
The North West Fund 4 Digital & Creative
Connecting people, creating opportunities
Expert Training Session: Pitching to the Panel
John Owens
Instruct
Connecting people, creating opportunities
Sam Winder
Business Growth Hub
Connecting people, creating opportunities
Pitches
Connecting people, creating opportunities
Lunch
Connecting people, creating opportunities
Sam Winder
Business Growth Hub
Branding due diligence
by Jorandi Daneel
• Any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings
Trade Marks
numeralsshapes
sounds
packagingwords
letters
moving images
designssmells
Exceptions
• Devoid of distinctive character• Descriptive• Generic• Certain shapes• Contrary to public policy / accepted principles of morality• Deceptive• Use prohibited by law• Protective emblems
Trade Mark Searches – why should you make this a priority?
• Reduce risk of Infringement• Freedom to use• Save costs on filing programs• Avoid unnecessary oppositions
• Building a brand without carrying out a trade mark search could result in considerable loss of revenue further down the line
Identical
Comprehensive
Common law/ unregistered rights
Company names
Domain names
Goods and/or services
Confusing similarity
• Risk that the public might believe that the goods come from the same or economically linked undertakings
• Includes association• Global comparison of all relevant factors• Visual, phonetic, conceptual similarities• Similarity between goods / services
Unfair advantage or damage to distinctive character or repute of trade mark
• "Ride on the coat-tails"• Registered trade mark with reputation• Regardless of similarity between goods / services• Dilution of distinctive character (“blurring”)• Misappropriation of attractive powers and prestige• Damage to reputation (“tarnishment”)
"Be a real spec saver at ASDA"
Types of Filings
• UK application• CTM – All 28 countries of EU• International – Madrid Protocol
• Currently 91 countries• Includes Australia, China, European Union, India,
Japan, New Zealand, Russian Federation. UK and US
Typical Filing Strategy of an Early Stage Business
0 m 6 m
UK availability
search
UK application
Further searches - territories
File International/
other nationals
Priority deadline
Registration
4 m
Points to consider
• Priority claim• Are trademarks registered in all territories and business classes?• Do you have ownership of the IP rights on your logo design?• Are trademarks properly protected?• Are trademark rights sold, shared or licensed?
Once registered, protected 10 years and renewable thereafter for unlimited 10 year periods provided you paid the renewal fee.
Enforcement
Trade Mark Infringement
• Only registered trade mark can be infringed• Acts done without consent of proprietor• Use of identical mark in relation to identical goods and/or services• Use of similar mark in relation to similar goods and/or services where there
exists a likelihood of confusion / association• Use of identical or similar mark in relation to goods / services where use is
without due cause and takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark
In the course of trade
Enforcement of trade marks
Passing-off
Customs
Remedies
• Injunction • Damages• Account of profits • Delivery up• Disclosure
Investor Readiness
Have you registered your trade
mark?
Have you carried out freedom to
operate searches?
Do you understand the risks?
In all territories and business
classes?
Do you own the IP rights of your logo?
Do you know that you may be infringing on
another brand?
YES
NO YES
Speak to a trade mark attorney!
YES
NO
Questions?
Marks & Clerk LLP
T +44 (0)161 233 5800E [email protected]
Copyright Marks & Clerk LLP 2014
Patent Due Diligence
Mike WilliamsSoftware Patent Attorney
Canada
UK
Singapore
MalaysiaHong Kong
China
Australia
FranceLuxembourg
Your Local Partner in a Global Network
UK Offices:
Manchester Birmingham London Cambridge Oxford Aberdeen Edinburgh Glasgow
Our UK Services
• Patentability Assessment/ Searching
• Patent, Design, Trade mark filing & prosecution
• Copyright & Domain Names
• Assignments & Licensing
• Commercial Freedom to Operate/ IP Due Diligence
• Contentious IP Issues
• Litigation & Dispute Resolution
• Commercial Matters
• Valuation Services
• Design Services
What is a Patent?
• A territorial bargain – disclose invention in return for a monopoly for a limited period
• Maximum duration of 20 years (most countries) from filing• Defines a negative right – the basic rule
• It’s a right to stop others from using your invention• Not a right to use your invention
• Each patent provides protection in respect of one country only:
• National patents, e.g. UK, US, JP, CN• There are no international patents, only international patent
applications• There is no EU patent (yet) but there is a European patent system
where a single patent application becomes a bundle of national patents on grant
Territorial Scope
What is Patentable?
• Products, Devices, Machines, Methods and Processes• From the simple to the highly complex• Must be:
• Novel • Inventive• Capable of industrial application
• Must not be excluded from patentability
The general European/UK position
• The law provides a list of “things” excluded from patent protection, including:
- Computer programs
- Business methods
- Mathematical methods
- Methods of performing mental acts
- Methods of playing games
- Presentations of information
Only excluded as such
Are computer/software implemented inventions patentable?
• Programs having real world effect
- Process Control- Image Processing- Security/Compression- Improvements in computer performance- Improved compilers- Operating system features- Improved design processes for making physical things
In many cases, yes!
What determines patentability? (Europe)
A technical solution to a technical problem
1. Compare the invention with the closest prior art
2. Identify the differences
3. Is there a technical problem solved by the invention?
• Not just a business/administrative problem?
4. Is the invention a technical solution?
• Not just circumventing the problem?
A non-patentable Example …
COMVIK – No technical problem
• Technology – dual identity SIM cards
• Difference between the claimed invention and existing technologyi. SIM is allocated a number of identities
ii. the identities can be selectively activated
iii. the selective activation is used for distributing the costs among the identities
• Problem: how to eliminate inconveniences caused by distributing costs (solved by ii. and iii.)
• “Distributing costs is a financial and administrative concept which does not require the exercise of any technical skills or competence”
• Therefore not a technical problem.
• Solving actual technical problem was mere implementation - obvious from existing technology
A patentable example …
VICOM - Image Processing
TechnologyAn image processing method which applies a mathematical method to a digital image, so as to produce a sharpened digital image
Why is it patentable?The mathematical method is applied to image pixels rather than abstract numbers.
What is inventive is the application of a “technical process” in the form of the mathematical method.
SYMBIAN - Improvement in computer performance
TechnologyA dynamic link library (DLL) with a link-by-ordinal part and a link-by-name part. Individually known but not known in combination.
Why is it patentable?It solves the technical problem of providing the speed of link-by-ordinal without the problem of system instability.
Provides a real world technical solution because it makes the computer a better computer generally.
• Not only for a single application
The US Position
• Has been more lenient
• Anything under the sun that is made by man…
• Business methods are generally patentable
• No “technical” requirement
• But recently more limiting – prohibition on patents for inventions which are too abstract
• “Machine or transformation” test – tied to specific machine or data undergoes some transformation
Other countries
A. Almost anything is patentable (Canada?)
B. Patentable if it is implemented in technology e.g. USA, Japan (Australia?)
C. Patentable if it involves a technical contribution e.g. European countries, (India?)
D. Not patentable e.g. Pakistan, Thailand, (India?)
• Countries fall into four categories regarding protecting software and business methods:
The Patenting Process
Patent Application Timeline: UK
0 m 24 m 36 m 48 m
File National Patent
Application
Application in Order for
Grant
Request Examination
(can be requested
earlier
Examination
12 m
Request Prior Art Search
(can be requested
earlier)
18m
Patent Application is Published
18 m
International Treaties
• Patent Co Operation Treaty (PCT)
• One PCT patent application is equivalent to applications in > 100 countries
• Can also file a EP application through PCT
• Can file in English, delaying costs of translations for up to 30 months from priority
• 148 member states
PCT Timeline
0 m 18 m
UK filing date
Publication of PCT
application
12 m
PCT filing date
PCT application claims priority from
UK application
National/ regional phase entry
30 mPCT matures into national applications
Member states
Non member states
PCT Member States
Value of Patents
• Competitive defence
• Offensive strategy
• Licensing opportunity
• Bargaining chip – e.g. cross licensing
• Identifiable asset
• Marketing tool
Investor Readiness
Points to consider
• Level of risk
Internal investigation of existing IP portfolio
• Freedom to operate searches
• Which technologies are essential for achieving your business objectives?• Of these which are going to infringe 3rd party rights?
• Territories important to business
• Clarification of ownership
A Summary
Is your technology patentable
Do you have NDAs in place?
Have you considered keeping your innovations as a trade
secret?
Can you protect the design?
Have you carried out patent due diligence?
Do you have a territories strategy in
place based on business
aims and budget?
Have you considered one PCT
application?Do you have NDAs in place?
YES
NO
Speak to a patent attorney!
Questions?
Marks & Clerk LLP
T: +44 (0)161 233 5800E: [email protected]
Copyright Marks & Clerk LLP 2014
Connecting people, creating opportunities
Interactive Session
Connecting people, creating opportunities
Contact us to find out more!
@bizgrowthhub
Business Growth Hub
Phone: 0161 359 3050
Email: [email protected]